Trademark Services
A trademark in India is a visual symbol that can be a word, signature, name, device, label, numeral, or a combination of colors, used by a business on its goods or services to distinguish them from those of other businesses. It essentially acts as a brand identifier, helping consumers recognize the origin and quality of products or services.
In India, trademarks are primarily protected under the Trademarks Act, 1999, and also under the common law remedy of “passing off.”
What Can Be a Trademark?
- Words or Names: “Nike,” “Tata,” “Reliance.”
- Logos or Devices: The Apple logo, the Mercedes-Benz star.
- Slogans or Phrases: “Just Do It.”
- Letters or Numerals: “3M.”
- Shapes of Goods or their Packaging: The distinctive Coca-Cola bottle.
- Colors or Combinations of Colors: Often used in conjunction with other elements.
- Sound Marks: When graphically represented (e.g., a unique jingle).
- Smell Marks: Though less common, can be registered if graphically represented.
Functions of a Trademark
Identifies Origin
It tells consumers who made or provided the goods/services.
Guarantees Quality
Over time, consumers associate a trademark with a certain level of quality.
Advertises Goods/Services
It helps in marketing and brand building.
Creates an Image
It helps establish goodwill and trust in the brand.
Benefits of Trademark Registration in India
Registering your trademark offers significant advantages:
Exclusive Usage Rights
You gain the sole right to use the trademark in relation to the goods or services for which it’s registered.
Legal Protection
It provides a legal basis to take action against others who use an identical or deceptively similar mark without your authorization (trademark infringement).
Use of ® Symbol
Once registered, you can use the ® symbol next to your trademark, serving as a public notice of your ownership and legal rights.
Brand Recognition and Goodwill
A registered trademark helps build and protect your brand’s reputation and goodwill in the market.
Market Differentiation
It clearly distinguishes your products/services from competitors.
Business Asset
A registered trademark is an intangible asset that can be sold, licensed, franchised, or used as collateral.
Validity for 10 Years
Registration is valid for 10 years and can be renewed indefinitely for subsequent 10-year periods.
Basis for Global Registration
An Indian trademark registration can serve as a basis for applying for international trademark protection.
How to Register a Trademark in India (Simplified Process)
The registration process is handled by the Office of the Controller General of Patents, Designs, and Trademarks (CGPDTM), under the Ministry of Commerce and Industry.
Trademark Search (Crucial First Step)
- Objective: To check if your chosen mark (name, logo, slogan) or a similar one is already registered or is pending registration in the relevant class(es) of goods/services.
- How to do it: You can conduct a public search on the Intellectual Property India website or use paid services from legal professionals. It’s highly recommended to get a professional search done to minimize rejection risks.
- Classification: Trademarks are categorized into 45 classes (1-34 for goods, 35-45 for services) as per the Nice Classification. You must identify the correct class(es) for your goods/services.
Filing the Trademark Application (Form TM-A)
- Applicant: Any person, individual, company, LLP, HUF, trust, etc., claiming to be the proprietor of the trademark, can apply.
- Mode: Applications can be filed online (e-filing, recommended) or offline at the regional offices (Mumbai, Kolkata, Ahmedabad, Delhi, and Chennai).
- Details Required: The application requires the trademark itself (a soft copy of the logo if applicable), the class(es) of goods/services, applicant’s name and address, details of use (if already in use, date of first use), and power of attorney if filed through an agent/attorney (Form TM-48).
- Fees: Vary based on the applicant type (individual/startup/small enterprise vs. other entities) and the number of classes.
Examination
- After filing, a Trademark Examiner reviews the application for compliance with the Trademarks Act, 1999.
- They check for distinctiveness, prohibited marks, and similarity to existing marks.
- If objections are raised (e.g., lack of distinctiveness, similarity), an examination report is issued. You’ll need to file a response to the examination report within a stipulated time (usually 30 days), addressing the objections.
Publication in Trademark Journal
- If the examiner is satisfied (after the initial examination or after your response to objections), the trademark is published in the official Trademark Journal.
- Purpose: This is to allow third parties who believe their existing rights might be infringed to oppose the registration.
- Opposition Period: The opposition period is four months from the date of publication in the Journal.
Opposition Proceedings (if any)
- If an opposition is filed, the Registrar serves a copy to the applicant.
- The applicant must file a counter-statement within two months.
- Evidence may be filed by both parties, followed by a hearing.
- The Registrar then decides whether to allow the trademark registration or reject it.
Registration Certificate
- If there is no opposition, or if an opposition is resolved in your favor, the Registrar proceeds to issue the Trademark Registration Certificate.
- Upon receiving this, you can use the ® symbol next to your trademark.
Important Considerations
Distinctiveness
Your trademark should be distinctive. Invented words or unique designs are generally stronger than common words, surnames, or geographical names.
Prior Use
Even if unregistered, prior use of a mark can provide common law rights (through a “passing off” action) against later users attempting to pass off their goods as yours. However, statutory protection (infringement action) is only available for registered marks.
Get Help From Our Experts
Get help form our trademark experts for complexities of trademark law, conducting searches, drafting responses to objections, and handling oppositions.
Trademark Infringement and Remedies
Infringement
Occurs when an unauthorized person uses a mark that is identical or deceptively similar to a registered trademark, causing confusion among consumers.
Remedies
- Civil Remedies: Injunctions (temporary or permanent stop to the infringing activity), damages (compensation for losses), account of profits (profits made by the infringer), destruction of infringing goods.
- Criminal Remedies: Imprisonment (minimum 6 months, up to 3 years) and fines (minimum ₹50,000, up to ₹2 lakh) can also be awarded in certain cases of trademark counterfeiting.
Trademark Renewal
- A trademark registration is valid for 10 years from the date of application.
- It can be renewed indefinitely for subsequent periods of 10 years by filing Form TM-R and paying the prescribed fee.
- The Trademark Registry usually sends a notice six months prior to the expiry.
- There’s a grace period for renewal after expiry, but with additional fees. If not renewed, the mark may be removed from the register, though restoration is possible under certain conditions.
Get help from our trademark experts for Understanding and protecting your trademark is vital for building a strong brand identity and ensuring your business’s long-term success in the market.