HOW TO REGISTER YOUR TRADEMARK IN INDIA
In the fiercely competitive business landscape today, a product’s success hinges on its brand identity and unique elements that sets it apart from the crowd. Distinguishing features or unique elements, can be anything. It can be a logo, a jingle, a special design for packaging of your product. All these constitute as a trademark.
Whenever you are setting up or launching a new Start-up, a new Venture or an Enterprise securing a Trademark registration for it plays a pivotal step and in turn ensures exclusivity and recognizability of your product as well as your business.
Trademark filing comes with certain challenges and can even confuse seasoned individuals working in their trade. Whether you are a dynamic Start-up, or a well-established business or an entrepreneur, it is always advisable to seek assistance from either an Intellectual Property Lawyer or from a Trademark Agent. An Intellectual Property Lawyer recognizes the significance of protecting your brand’s identity and maintaining the distinctness of your products.
NOW, WHAT IS A TRADEMARK?
As per the Indian Trademark Act, 1999 Section 2 sub-clause (zb) “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours”.
In simple terms, a trademark is a mark that is capable of distinguishing your products or services from those of the competitors in the market.
DO YOU NEED TO REGISTER YOUR TRADEMARK?
A registered mark is essential for safeguarding your rights to utilize the mark in connection with your products and/or services. It provides an authority to you to pursue legal actions against infringements or any unauthorised usage of your Trademark. A successfully registered Trademark is valid for ten (10) years from the date of filing and an opportunity for indefinite subsequent renewal with same validity.
WHICH TYPE OF TRADEMARK REGISTRATIONS SHOULD YOU CHOOSE FOR YOUR BUSINESS/BRAND :-
- Word Mark:- Includes one or more words, letters, numbers, brand-name, slogan or tagline written in standard characters. If you want to register only letters, words or combination of words or numerals without any artistic and pictorial representation can register it under word mark category. Word mark provides an advantage to your business as once it is registered, it can be used in any design, style or font. Popular examples of a word mark are Microsoft, IBM
- Device Mark:- Includes logos, label, sticker or any figure. If the marks contains colours, only that same combination of colours would be considered to be protected under Trademark Registration protection. The most iconic example of this mark can be the APPLE logo
- Sound Mark:- These are marks that are acquired by unique sound. Under this mark, sound is used to distinguish uniqueness for the products and goods or services. Popular example is Netflix’s “Badummm” sound
- Collective Mark:- This mark entitled individuals/entities protect and represent goods and services collectively. They conveys specific characteristics of products or services associated with a particular group. One such example is the CA mark used by institute of Chartered Accountants.
- Shape Mark:- Goods that have a distinctive shape can be registered as marks distinguishing from the competition. However, the distinctive shape should not result from the nature of goods themselves, it should have been obtained through technical result. Popular example is the Glass bottle of Coca Cola.
- Pattern Mark:- Pattern marks are used for products featuring unique patterns/designs capable of distinguishing themselves through their elements or features and must stand out as distinctly recognizable. Popular examples are Gucci and Louis Vuitton.
WHO SHOULD APPLY FOR TRADEMARK REGISTRATION?
- Individuals
- Proprietorship Firms
- Partnership Firms
- Limited Liability Partnerships (LLPs)
- Joint Owners of a Company
- Indian/Foreign Companies
- Trusts
- Societies
DOCUMENTS REQUIRED FOR ONLINE TRADEMARK REGISTRATION IN INDIA
INDIVIDUALS & SOLE PROPRIETORSHIP
Whether you are an Indian National or a Foreign National you can register a trademark in India. The Office of Controller General of Patent, Designs & Trademarks does not require forming a legal entity or business entity to register a trademark in India. The documents required to register a trademark in the name of either a proprietorship or an individual are the same as under:
- Copy of the logo. [In case you do not have a logo, the trademark application can be filed for the word you wish the public to identify your business with]. It is advisable to get your Logo preferably in black & white, as it provides protection in all the variations of single colour format without affecting the overall trademark protection (completely Optional). Using a colour logo may limit the scope of protection to the specific colours used in the logo.
- A Signed Power of Attorney (Form-48). This is an authorisation from the applicant to a Trademark Attorney for filing the trademark application on his/her behalf.
- Identity Proof of the individual or Proprietor.
- Address Proof of the individual or Proprietor.
PARTNERSHIP / LLP / COMPANY
In the case of a partnership firm or LLP, the entrepreneur would have to submit the following:
- Copy of Logo (Optional as above for Proprietor/Individual)
- Signed Power of Attorney (Form-48).
- Udyog Aadhar Registration Certificate (Optional- benefits in 50% reduction of Government Fee charged by The Office of Controller General of Patent, Designs & Trademarks.)
- Incorporation Certificate or Partnership Deed.
- Identity Proof of Signatory.
- Address Proof of Signatory.
PROCESS FOR REGISTERING YOUR TRADEMARK
CHECKING TRADEMARK CLASSIFICATION
A Trademark can be filed under a total of 45 established categories also referred to as NICE Classification System. The Nice Classification System divides the 45 categories into different classes of goods and services, in which classes 1 to 34 represent the goods and the remaining 11 classes represent the services rendered/provided by the businesses. These classifications determine the scope of protection and use of a Trademark and acts as a foundation for the trademark registration process.
PRIOR SEARCH FOR YOUR TRADEMARK
It is always advisable to have a comprehensive trademark search before venturing into the process for trademark registration, as this search can save a business several lakhs of Rupees in case the mark is or is likely to infringe on someone else’s Trademark. A comprehensive search not only minimizes the risk of objections which might arise during examination by the Registrar, but also aids businesses in making informed decisions about the viability of their chosen mark, as well as how unique the mark actually is.
APPLICATION FILING
Once the Prior search for the Trademark has been done, the next step is the trademark registration process. The application can be submitted online to the relevant intellectual property office, requesting approval of the mark. Here is a list of documents required to file a Trademark Application. To ensure a smooth progression through the trademark registration it is imperative that the Trademark Application is filled with precision and accuracy.
TRADEMARK EXAMINATION
Once the Trademark Application has been filed with The Office of Controller General of Patent, Designs & Trademarks, the office appoints an examiner who meticulously reviews the proposed trademark to assess its uniqueness and availability. The objective of such a review is to ensure that your mark meets the criteria for distinctiveness, non-descriptiveness, and adheres to other legal formalities. If the examiner finds anything objectionable in your application, he’ll prepare an examination report, specifying objections that the examiner needs you to either rectify or provide an explanation or clarification before allowing the trademark to be processed ahead for registration.
REPLYING TO OBJECTIONS
This is possibly the most crucial stage of the Registration process and it is imperative to address all the objections raised during the examination to take the trademark registration process further. The applicant has to file his reply to the objections within 30 days from the date on which they were raised by the examiner. If the reply filed by you, satisfies the examiner, he will allow your application to be processed to the next stage. If he is unsatisfied, he may mark your application for a show cause hearing to further seek clarification and resolve the issue.
TRADEMARK ADVERTISEMENT AND PUBLICATION
Once the objections are cleared, the approved trademark application moves to the publication stage. Your mark will be published in the trademark journal, which is an accessible document to the public, inviting any potential third-party oppositions. Such Third-party oppositions may be raised on the grounds of similarity of the mark with other marks.
THIRD-PARTY OPPOSITION
If your application receives a Third-Party Objection, The Office of Controller General of Patent, Designs & Trademarks, would serve the notice of opposition to you and would provide you 60 days to reply to such notice of opposition. During this period you may approach the Opponent for potential negotiations or settlements regarding the mark, or can reply back to the notice of opposition by filing the same with the The Office of Controller General of Patent, Designs & Trademarks addressing the concerns raised by opposing parties. After a successful resolution of the oppositions, the The Office of Controller General of Patent, Designs & Trademarks, will consider proceeding with the application and granting a certificate of Registration.
TRADEMARK CERTIFICATION
Once all objections are cleared the applicant is granted a Trademark Certificate. This official document serves as a tangible proof of the exclusive rights conferred upon him to use his mark. The Trademark remains valid for 10 years from the date of application and the Trademark remains protected against unauthorised use and plagiarism, throughout this period.
TRADEMARK RENEWAL (OPTIONAL)
Trademark remains valid for 10 years from the date of application and thus is not perpetual, and in order for a trademark owner to maintain his rights and to effectively protect his business goodwill he must proactively renew his trademark(s) to maintain this rights. Failure to renew before the expiry may result in the loss of its protection. There is no restriction on the number of times a trademark can be renewed.
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