Trademark related Frequently Asked Questions

There are innumerable questions that may be arising when you want to register your Trademark. 

Here is a list of a few of the most Frequently Asked Questions (FAQs):

What is a Trademark?

Trademark (symbolizing a mark for providing certain goods or services) means a mark capable of being represented graphically, and which is capable of distinguishing the goods or services of one person from those of another. Essentially it is anything that helps the consumer identify the brand to that particular product or service.

A “Mark” includes a device (logo), brand, heading, label, ticket, name, signature, word, tagline, letter, numerals, shape of goods, packaging, sound, new colour, or a combination of colors or any combination thereof.

Is it mandatory to register the Trademark?

No, Trademark registration is not mandatory in India. Registration of a Trademark is optional at the discretion of the proprietor of such mark. However, registering a Trademark offers the owner of the mark a wide range of benefits and advantages, including claiming priority over the mark if infringed by another for same or similar goods or services. Registration of a Trademark is done by the Trademark Registry acting as per the provisions and rules of the Trademarks Act, 1999 and the Trademarks Rules of 2002, and all amendments made thereto.

Who can apply for a Trademark? Where should the Trademark application be filed?

An application can be made for registration of a Trademark on a ‘used’ or ‘proposed to be used’ basis by any person claiming to be the proprietor of the Trademark. In the case of a prior usage of the mark, the concerned person is required to submit a user affidavit along with evidence to support his claim of usage from a particular date. In India, for the facilitation of the registration of the Trademarks, the Trademark Registry operates from five locations i.e. Delhi, Mumbai, Ahmadabad, Kolkata, and Chennai which oversee applications from specific regions assigned to them. In the case of Indian applicants, jurisdiction is decided based on the principal place of business of the applicant and in the case of foreign applicants, jurisdiction is based on where an applicant’s agent or attorney is situated.

What are some of the required documents for Trademark registration?

The needed documents are given below;

– soft copy in case of the Logo / device mark in JPG format with dimension 8cm x 8cm

In the case the applicant is a HUF or an individual -

– ID proof.

– Address proof.

– Citizenship.

– Business registration document (if any).

In the case of LLP/company -

– Shops establishment license.

– LLP/ Company’s address proof.

– Certificate of incorporation.

- In  case the applicant is a start-up and desires to apply as such, the Startup Recognition Certificate issued by Department of Promotion of Industry and Trade, and in case applicant is a small enterprise recognized by the Ministry of Micro, Small and Medium Enterprises, then its UDYOG AADHAAR registration shall be required.

In the case of the partnership firm -

– The partnership deed.

Besides the cases mentioned above, there are no specific documents to be submitted. Various forms for different types of applications have to be submitted for the registration of Trademarks.

However, in case the Trademark application is being made through a registered agent, a Power of Attorney in form TM-48 is also required in all the cases, and it should be stamped on an INR 500 stamp paper.

What benefits do I get on registering the Trademark?

The registration of a Trademark confers upon the owner the exclusive right to use the Trademark in relation to the goods or services in respect of which the mark is registered and to indicate by using the symbols ™ and ® and seek relief of infringement in appropriate courts in the country. However, where two or more persons have registered identical or nearly similar marks due to special circumstances, such exclusive right does not operate against each other.

Where should I apply for my Trademark registration?

The applications for the Trademark registration can be submitted personally at the Front Office Counter of the respective office or can be sent by post. These can also be filed online through the e-filing gateway available at the official website.

How much fees will I have to pay for Trademark registration?

The government fees for Trademark registrations are as under:

·   Where the applicant is an Individual/Startup/Small Enterprise, the fees for E-Filing would be Rs. 4500 whereas for the physical filing fees would be Rs.5000.

·   In all other cases, fees for E-Filing would be Rs. 9000 and for physical filing fees would be Rs. 10000

For the E-filing of application, the applicant needs to apply with all requisite details on the https://ipindia.gov.in/ website.

How much time does it take to register the Trademark?

Trademark registration is a fairly simple process. However, it is a judicial process and therefore can take some time. Trademark Registration usually takes between 8-15 months to obtain registration in a straightforward case i.e, without any objections or oppositions.

What is the registration process?

i.   Identify the classes – the classes are determined based on the goods or services to be provided where the Trademark shall be used. There are 45 classes provided under the Fourth Schedule of the Trademarks Rules, 2002. Classes 1-34 are for goods and 35-45 are for services.

ii.  Trademark search - Trademark search helps to know if there are similar Trademarks already registered in the particular class/classes the Trademark is intended to be registered, and it gives you a fair picture of where your Trademark stands; it also gives you a forewarning of the possibility of Trademark litigation either by the Registry or by proprietor of the existing mark.

iii. Trademark application - After it is confirmed that the chosen brand name or logo is not applied for or Registered with the Trademark Registry India, you can opt for applying for registering the same. The first step is to file a Trademark application form at the Trademark Office, India. The filing is mostly done online along with the relevant documentation such as Power of Attorney, user affidavit (if needed), certificate of incorporation, startup recognition certificate, and the requisite fees. Once the application is filed, an official receipt is immediately issued for future reference.

iv. Trademark examination - After a Trademark application is filed, it is examined by the examiner for any discrepancies. The examination might take around 1-2 months. The examiner might accept the Trademark absolutely, conditionally, or object. If accepted unconditionally, the Trademark gets published in the Trademark Journal. If not accepted unconditionally, the conditions to be fulfilled or the objections would be mentioned in the examination report, and a month would be given to fulfill the requirements or respond to the objections. Once such a response is accepted, the Trademark is published in the Trademark Journal. If the response is not accepted, one can request a hearing. If in the hearing, the examiner feels that the Trademark should be allowed registration, it proceeds for publication in the Trademark Journal.

v.  Accepted: Once the applicant satisfies the Registry about the reasons why the mark should be accepted and registered, and that the grounds for raising objections are not applicable or maintainable, the Registry will proceed to accept the mark, and the same will be reflected in the status of the mark.

vi. Advertised – After the Trademark is accepted, it is advertised in the journal in a few weeks, in the following three cases (i) there are no objections raised, (ii) the response to the examination report has been accepted, and (iii) the applicant is able to clear the application in the hearing. In all these cases, the Trademark will be published in the Trademark journal. Trademark journal publishes all such Trademarks every week which is about to get registered. The is a 4 month period provided to the public from date of publication in trademark journal to raise any opposition to registration of the advertised marks.

vii. Opposition - Any party can raise opposition against the registration of a Trademark within 4 months of publication of the Trademark in the journal. It is not necessary that the opposing party has a similar registered or applied for mark existing with the Registry. In case of no opposition, the Trademark will be processed further for registration.

vii. Counter statement - If the applicant receives a third party opposition within 4 months, then he has to file a reply. The reply must be filed within 2 months from the receipt of notice of opposition. If it is not filed, then the Registry will consider the mark to have been abandoned by the Applicant and shall update its records accordingly. .

ix. Hearing - The last stage of opposition is the hearing before the Trademarks’ Registry. Here both sides will be allowed to argue and put forth their statements. After hearing both sides, the concerned officer will pass the necessary order. If the order is in the favor of the applicant and not the opposing party, then the Trademark will get registered, otherwise if the officer is not satisfied with the arguments and evidence of the applicant, he may reject and refuse to register the mark.

x. Registration - The applicant will receive the Trademark certificate under the following circumstances:

· If no opposition is raised within the prescribed 4 months of publishing a Trademark in the journal.

· In case of opposition – when an officer passes the order of hearing in favor of the applicant.   

In both cases, the applicant will be granted the Trademark registration certificate in 1-2 months which ends the Trademark registration process. 

What are the situations where the application can be rejected by the Registry?

A Trademark application can be rejected based on certain grounds such as –

i. Generic words - Common used words or terms that are usually found in dictionaries cannot be Trademarked.

ii. Descriptive words or terms - If the mark contains any descriptive words or terms that are commonly used to identify a product. For example, if the Trademark is for the word SWEET for marketing products like chocolate or candy, it will be rejected as it will be unfair to other people.

iii. Similar to a registered mark - If it is found by the examiner that the mark being applied for is similar to an already registered Trademark, he can reject the application.

iv. Offensive or confusing terms - A Trademark cannot contain an offensive term or design, as such a mark will be against the public morality and public order. A confusing mark or a deceptive mark may be any mark that can lead the consumer to believe falsely about the origin, producer, quality, material, etc. of the product. 

v. Official designs or words - If the mark contains any official words, terms, designs, or pictures, it will be rejected for registration by the examiner as it is against public welfare. It can falsely convince the consumer that it is condoned by an official body. 

Is the Trademark liable for removal on the ground of non-use?

Yes, a registered Trademark can be removed based on non-use. Except as excused in clause 3 of section 47 of Trademarks Act, 1999, a Trademark may be removed on the ground of non-use if:

· That the Trademark was registered without any bona fide intention and was not used till date three months before the date of the application for removal; or

· Trademark was not used for a continuous period of five years from the date of registration of Trademark and application was made after three months from the expiry of five years.

What is the difference between the ® and TM symbols?

The TM symbol can be used by any person or business to indicate that a particular word, phrase, or logo when the application for registration is pending before the Trademark Registry and the Trademark has not yet been registered.

The ® symbol indicates that Trademark has been registered for the product or service. It must only be used in the case of registered Trademarks and by the owner or licensee.

What is the period for the validity of the registration of a Trademark? Can a Trademark registration be renewed?

The registration of a Trademark is valid for 10 years. It can be renewed every 10 years, perpetually. In India, a renewal request is to be filed one year before the expiry of the last registration of the Trademark. The renewal fee for physical filling is Rs. 10,000 while for e-Filling is Rs. 9,000. Once removed, restoration of a Trademark can be requested in form TM-R along with prescribed fees and applicable renewal fees (physical filling: Rs. 10,000, e-Filling: Rs. 9000). TM-R can be filed within one year from the expiration of the last registration of the Trademark.

How can one check the status of their Trademark registration?

To check the Trademark status, the following steps need to be followed;

i.   Go to the IP INDIA website.

ii.  Choose national or IRDI number.

iii. Fill in the Trademark application number and Captcha.

iv. View the Trademark application information.

What is the way ahead in case the application is rejected?

If the registration is refused, the applicant has the final option of appealing to the Intellectual Property Appellate Board (hereinafter referred to as IPAB). An appeal to the IPAB must be e-filed within three months of the date of issuance of the refusal order by the Registrar. This time limit may be extended if the appellant files an application for condonation of delay and can show reasonable cause as to why he could only approach the IPAB after the time limit. Appeal to the IPAB has two different processes depending on the type of Trademark registration that was sought after by the applicant/appellant. The appeal must be filed in the prescribed manner following the Trademarks (Applications, Appeals, and Fees to the Intellectual Property Appellate Board) Rules.

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Disclaimer
The content of this article is for information purpose only and does not constitute advice or a legal opinion and are personal views of the author. It is based upon relevant law and/or facts available at that point of time and prepared with due accuracy & reliability. Readers are requested to check and refer to relevant provisions of statute, latest judicial pronouncements, circulars, clarifications etc before acting on the basis of the above write up. The possibility of other views on the subject matter cannot be ruled out. By the use of the said information, you agree that the Author / Treelife is not responsible or liable in any manner for the authenticity, accuracy, completeness, errors or any kind of omissions in this piece of information for any action taken thereof.