Trademark registration

Trademark

The Trademark Registry was established in India in 1940 and presently administers the Trademarks Act of 1999 and the rules thereunder.

The term trademark refers to a recognizable insignia, phrase, word, or symbol that denotes a specific product and legally differentiates it from all other products of its kind. A trademark exclusively identifies a product as belonging to a specific company and recognizes the company's ownership of the brand. Trademarks are generally considered a form of intellectual property (IP) and may or may not be registered.

For a business, its trademark is among its most valuable assets. The company's trademark protects its distinctive sign or indicator. This can be in the form of symbol, logo, word, phrase, name, sound, design, or an image that symbolizes the brand value, goodwill associated with the business or its product and services.

Trademark registration has its own advantages of gaining exclusive legal rights to your trademark and accords better protection of your brand. Therefore, it is the first step in establishing your own brand name. It is a marketing tool that increases financing of the business. A trademark is not always a brand, but the brand is always a trademark. Sometimes there is a confusion between trademark and brand. The brand name can be simply a symbol or logo, but the trademark is a distinguishing sign or indicator in a business organization as it has a wider implication than brands. People are more influenced by the distinctive trademark that reflects the quality of the product.

Trademark registrations in India

In India, trademarks are registered under the federal registration system with the support of five regional offices: Ahmedabad, Chennai, Delhi, Kolkata, and Mumbai. The Trademarks Act of 1999 provides trademark rules for the registration, regulation, and protection of trademarks in India. Statutory protection of trademark is administered by the Controller General of Patents, Designs and Trademarks, a government agency that reports to the Department of Industrial Policy and Promotion (DIPP), under the Ministry of Commerce and Industry. DIPP recently revamped old trademark rules for registering trademarks in India.

Trademark rules

With effect from 6 March 2017, the new trademark rules came into existence. The intention was to simplify the whole trademark registration process and make it hassle-free and quick. Some of the features of the new rules are:

• sound marks and 3D marks are made registrable
• e-filing is promoted
• provisions pertaining to the well-known mark
• separate fees structure for an individual/startup/small enterprise and others
• expedited processing of application; hearing via video conferencing; and the number of forms has been cut down to 8.

Registration of trademark

Any person claiming to be the owner of the trademark or supposed to use the trademark in the future may apply in writing to the appropriate registrar for registration of the trademark in a prescribed manner. The application must contain the name of the goods, mark and services, class of goods and the services in which it falls, name and address of the applicant and duration of use of the mark. Here the person means any person, association of firms, partnership firm, a company, trust, state government or the central government.

Trademark registration procedure:

Step 1: Choosing a trademark

Remember to choose a unique and distinctive mark that will represent your company. The other important point is identifying to which class you belong. Currently, there are 45 classes of goods and services under which the trademark can be registered. Classes 1 to 34 are for goods and classes 35 to 45 are for service.

Step 2: Trademark search

• Many entrepreneurs do not comprehend the importance of a trademark search. Having a unique brand name in mind is not a good enough reason to avoid a trademark search
• Therefore, a trademark search helps you to know if there are similar trademarks available, and it gives you a fair picture of where your trademark stands; sometimes, it also gives you a forewarning of the possibility of trademark litigation
• It helps you identify a completely original trademark you may refer to the national trademark database online

Step 3: Filing a trademark application in India

• After you are sure that your chosen brand name or logo is not listed in the Trademark Registry India, you can opt for registering it
• The first step is to file a trademark application online along with the prescribed fees. Proprietor/Applicant, Agent, or an Attorney can do registration
• The Indian trademark offices are located at Chennai, Delhi, Mumbai, Kolkata. Nowadays, filing is mostly done online
• Once the application is filed, an official receipt is immediately issued for future reference. Further, you can see the trademark status of your application instantly online

Step 4: Trademark examination

• Once the mark is registered, the Trademarks Registry sends the "Official Examination Report" asking for clarifications, if any, in accordance with the Trademarks Act
• The examiner examines it 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 is 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's time would be given to fulfil the requirements or response to the objections
• Once such a response is accepted, the trademark is published in the Trademark Journal, a government publication to call upon opposition from the general public, if any.
• 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.

Step 5: Trademark publication

• The step of publication is incorporated in the trademark registration procedure so that anyone who objects to the registering of the trademark has the opportunity to oppose.
•  If, after three months from publication, there is no opposition, the trademark proceeds for registration. In case there is opposition, there is a fair hearing, and the Registrar gives a decision.

Step 6: Registration certificate

• Once the application proceeds for trademark registration, following publication in Trademark Journal, a registration certificate under the seal of the trademark office is issued.
  
  The whole process takes about 18 to 24 months.

Step 7: Trademark renewal

• The trademark is valid for ten years starting from the date of issuance of the certificate. It can be renewed for another 10 years on the payment of the prescribed fees. Hence, your logo or brand name registration can be protected perpetually.

Key benefits of registration of trademarks

1. Discourages others from using confusingly similar marks in the first place by making the mark easy to find in a trademark availability search, thereby preventing problems before they even begin
2. Everybody through the trademark knows the reputable excellence of your goods and services which builds the trust and understanding among the clients in the market. It helps in making loyal and lasting clients who will dependably choose the same brand
3. Enlistment of a trademark makes an intellectual property for an organization. Enrolled trademark is a privilege made that can be sold, assigned, franchised or economically contracted. Additionally, the trademark is an invisible asset that gives the preferred benefit to the association
4. In case one needs to register the trademark in nations other than India, the trademark enrolled in India can be utilized as a premise of enrolment in another country. For any individual willing to extend outside India, the trademark enrolled in India can furnish a decent base alongside the established Goodwill in the country

Infringement of trademark

A registered trademark is infringed by a person who is not the registered proprietor or a person using by way of permitted use in the course of trade, a mark which is identical with or deceptively similar to the trademark in relation to goods or services in respect of which the trademark is registered. After infringement, the owner of the trademark can go for civil legal proceedings against the party who infringed the registered trademark. Trademark infringement means the unapproved use of a trademark on regarding products and benefits in a way that is going to cause confusion, difficulty to the trader or potentially benefits.

The registration of a trademark shall, if valid, give the exclusive right to the registered proprietor to the use of trademarks for the goods and services for which the trademark is registered, and to obtain relief in respect of the infringement of the trademark.