trademark registration

TRADEMARK REGISTRATION

A Trademark is a type of Intellectual Property that protects names and other marks associated with a particular product or company. A trademark can be a wordmark, logo, combination of letters and numerals, shape of goods, packaging, or combination of colors or any combination thereof which identifies products or services of a particular source from others.

A trademark owner can be an individual, firm, company, society, or any legal entity. A trademark may be located on a package, a label, on an Invoice, or on the product itself.

An applicant can write TM on the logo/wordmark after filing the trademark application. The symbol ® which indicates that the trademark is registered can be used after successful registration of the trademark.

It is common for a business owner to use multiple trademarks for their goods, alongside a shared mark that represents their enterprise, known as a house mark. This helps indicate that the goods originate from the same business, ensuring consistency and reinforcing the brand’s identity. A trademark is valid for 10 years, after that registration has to be renewed for another 10 years.

WHAT IS TRADEMARK ?

In today’s competitive business landscape, a unique brand identity is crucial for distinguishing oneself from competitors and establishing a loyal customer base. Trademark registration plays a vital role in protecting this identity by safeguarding brand names, logos, slogans, and other distinctive signs.

WHY YOU REQUIRE TRADEMARK REGISTRATION?

Trademark registration is the process of securing exclusive rights to use a trademark, which is a unique sign or symbol that identifies a business or product. Registration provides legal protection against unauthorized use, infringement, and counterfeiting.

IMPORATNCE OF TRADEMARK REGISTRATION

     Trademark registration is essential for:

1.Brand Protection: Safeguards brand identity and reputation.

2.Legal Protection: Provides exclusive rights to use the trademark.

3.Business Growth: Enhances credibility and trust among customers.

4.Distinguishes from Competitors: Sets your brand apart in a crowded market.

5.Asset Creation: A registered trademark is a valuable intellectual property asset.

trademark registration

BENEFITS OF TRADEMARK REGISTRATION

1.Exclusive Rights: Legal protection against unauthorized use.

2.Nationwide Protection: Protection across India.

3.Deterrent Effect: Discourages others from using similar marks.

4.Brand Value: Enhances brand value and reputation.

5.Global Recognition: Facilitates international trademark registration.

trademark registration

HOW TO REGISTER A TRADEMARK

The application for registration of trademark must be made in the prescribed manner and filed along with the fee for trademark registration. Trademark application can be filed at one of the five Trademark Registrar Office having jurisdiction over the State or online. Registration for trademark in India is governed by the Trademarks Act, 1999 and the Trade Marks Rule 2017.

WHO CAN APPLY FOR A TRADEMARK

Individual, Single Firm, Partnership Firm, LLP, Company, Trust, NGO, Society, Hindu Undivided Family, government & semi government organizations.

CLASSIFICATION OF GOODS & SERVICES

The International Classification of Goods and Services, also known as the Nice Classification, is a system used to categorize goods and services for trademark registration purposes. It consists of 45 classes:

Goods (1-34)

1.Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry

2.Paints, varnishes, lacquers

3.Soaps, cosmetics, toiletries

4.Industrial oils and greases, wax; Lubricants; Dust absorbing,Fuels and illuminants; Candles and wicks for lighting,

5.Pharmaceutical, fungicides, herbicides; veterinary and sanitary preparations; food for babies; disinfectants; dietetic,

6.Common metals and their alloys, ores; Metal materials for building and construction; Transportable buildings of metal; Non-electric cables and wires of common metal; Small items of metal hardware; Metal containers for storage or transport; Safes,

7.Machinery, tools

8.Hand tools, cutlery

9.Electrical, electronic apparatus

10.Medical, surgical instruments

11. Heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes,

12.Vehicles

13.Firearms; Ammunition and projectiles; Explosives; Fireworks,

14.Jewelry, watches

15.Musical instruments, parts

16.Paper, cardboard, printing

17.Rubber, plastics

18.Leather, hides, furs

19.Non-metallic building materials

20.Furniture, mirrors

21.Housewares, utensils,Cookware and tableware,except forks,knives and spoons;

22.Ropes, nets, tents

23.Yarns, threads

24.Textiles, fabrics

25.Clothing, footwear

26.Lace, embroidery

27.Carpets, rugs

28.Toys, games,Sports equipment

29.Meat, fish, Jellies, jams, compotes; Eggs; Milk, cheese, butter, yogurt and other milk products; Oils and fats for food,

30.Coffee, tea, cocoa, sugar, rice, mustard; vinegar; spices; bread, pastry and confectionery, baking powder

31.Raw and unprocessed agricultural, aquacultural, horticultural and forestry products; Raw and unprocessed grains and seeds; Fresh fruits and vegetables, fresh herbs; Natural plants and flowers; Bulbs, seedlings and seeds for planting; Live animals; Foodstuffs and beverages for animals; Malt,

32.deals with beverages,Beers, mineral waters

33.Wines, spirits

34.Tobacco products (raw materials)

Services (35-45)

35.Advertising, business management

36.Insurance, financial services

37.Construction, repair services

38.Telecommunications

39.Transportation, storage

40.Treatment of materials

41.Cover education and entertainment services

42.Computer, scientific services

43.Hotel, restaurant services

44.Medical, beauty services

45.Personal, social services

This classification system helps trademark offices and applicants to:

– Identify the relevant class for a trademark application.

– Determine the scope of protection for a registered trademark.

– Conduct thorough searches for similar trademarks.

TRADEMARK REGISTRATION PROCEDURE

STEPS INVOLVED IN TRADEMARK REGISTRATION

1.TRADEMARK SEARCH

The first step in the trademark registration process is the trademark search which is required to ensure that your mark is not similar/deceptively similar to any other mark to avoid conflicts in future.

2.TRADEMARK FILING

After successful search, trademark is filed in the form TM-A, with attached documents like TM-48, Affidavit, Invoice, MSME certificate etc. either offline or online. Online trademark registration for brand name and logo is quick and effective. In case of an online filing, acknowledgement receipt with application number is instantly generated on the government portal. After receiving acknowledgement, one is eligible to use TM symbol beside the brand name.

3.FORMILITIES CHECK PASS

If the basic requirements of the trademark application are complied with like filing of TM-A, power of Attorney, user document, Affidavit, proper fees, translation and transliteration of the mark etc. the status reflects “Formalities check pass”, otherwise the status shows “Formalities check fail”. If status is “check fail”, all the objections to be complied within the prescribed period to keep the application alive.

4.VIENNA CODIFICATION

This stage of application for device mark only. The moment a logo/device/artistic work is filed, same is send to Vienna codification process to be conducted by Trademark Registry. The main purpose of such an exercise is to prevent duplication of the logo/device etc.

5.MARK FOR EXAM

In this stage, trademark application is assigned to the examiner, who either issue examination report or accept the application. If the application is accepted, the same is published in the Journal for objection.

An examination report of a trademark is issued by an Examiner on the following grounds:

Mark is objectionable under Section 9 of the Trademark Act (absolute ground)

Mark is objectionable under Section 11 of the Trademark Act (relative ground)

Whether any condition, limitation or restriction is required to be imposed.

Whenever an examination report is issued, appropriate reply to be submitted within one month to keep the application alive.

6.OBJECTED

In this stage, application is kept waiting for hearing. Application which reply are submitted generally show the status “Objected”. The applicant is required to submit Affidavit, user documents etc. before the hearing.

At the time of hearing, hearing officer will hear the arguments of applicant/attorney/agent and pass necessary orders accordingly.

7.ACCEPTED & ADVERTISED

If the hearing officer accept the trademark application, the status will reflect “Accepted”. After acceptance, the trademark is published in the Trademark Journal published weekly and contains the details of all trademark that has been accepted by the department. The waiting period of a trademark in the Journal is 120 days. During this period, third party can raise objection against a trademark by filing an opposition within the Journal period.

8.REFUSED

If the hearing officer for any reason, do not accept the application, it is refused and status will reflect “Refused”. There is scope for review of the refusal order before the Registrar of Trademarks if sufficient grounds exist.

9.OPPOSED

In case, after the advertisement of the trademark in the Journal, a third party files an opposition to the registration of the trademark within the 4 months from the date of advertisement then the trademark status in the Indian trademark registry website will show as ‘Opposed’.

A third party usually files an opposition when there is a similar trademark published in the journal or if the trademark is alleged to be deceptively similar.

The trademark status changes from “Accepted & Advertised” to “Opposed”, after a notice of opposition is filed by an opponent (third party). The notice is served on the applicant which states the ground of opposition on which the opponent rely.

After receiving the notice, applicant is required to file counter statement within 2 months from the date of receipt of the notice of opposition. If no reply is submitted within 2 months by the applicant, the status changes from “Opposed” to “Abandoned”.

10.WITHDRAWN

The status of a trademark application is reflected as “Withdrawn”, when the applicant voluntarily files an application before the Registrar of Trademarks to withdraw the trademark.

11.REMOVED

The status of a trademark is reflected as “Removed”, when the Trademark is permanently removed the trademark registry. The removal can be for various reasons like non –renewal of the trademark, non-use of trademark, trademark remaining wrongly in the registry etc.

12.REGISTERED

When there is no objections or opposition against a trademark within the stipulated period of Journal publication, the trademark is registered, granting the owner the exclusive rights to use the mark with symbol ® with the specified goods or services.

13.RENEWAL

Trademark registration is valid for 10 years and can be renewed indefinitely. It is safe to renew the trademark before expiry to avoid penalty.

CONCLUSION

Trademark registration is a vital aspect of brand protection and business growth. By understanding the importance, benefits, and registration process, businesses can secure their brand identity and reap the rewards of exclusive rights. Remember to conduct thorough searches, file applications promptly, and maintain registration to ensure continued protection.

Feel free to reach out to us at Agarwal Consultancy Services for all your trademark registration-related queries and assistance!