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What is a trademark? A mark that can be graphically represented in the form of a word, symbol, logo or name that can be used to identify a good or a service is a trademark. It can also be a combination of these and are used by the manufacturers or service providers to distinguish their products from those of its competitors.

Who can apply for a trademark? Any person, claiming to be the proprietor of a trademark used or proposed to be used by him, may apply for registration. The application should contain the trademark, the goods/services, name and address of applicant, the duration of use of the mark.

What is the function of a trademark? Under modern business condition a trademark performs four functions:

·         It identifies the goods or services and its origin.

·         It guarantees its unchanged quality

·         It advertises the goods or services

·         It creates an image for the goods or services.

How to select a good trademark? If it is a word it should be easy to speak, spell and remember. The best trademarks are invented words or coined words or unique geometrical designs. Geographical name, common personal name or surname is not allowed. It is advisable not to adopt laudatory word or words that describe the quality of goods (such as best, perfect, super etc.)

It is also advisable to conduct a market survey and a trademark search to ascertain if same/similar mark is used in market. Because it is less expensive to pay for a trademark search than contend a case of trademark infringement. A lawyer who deals with the trade mark law or an agent can assist you with the trademark search as well.

What are different types of trademarks that may be registered in India? ·         Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark.

·         An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods or services.

·         Letters or numerals or any combination thereof.

·         The right to proprietorship of a trademark may be acquired by either registration under the Act or by use in relation to particular goods or services.

·         Devices, including fancy devices or symbols

·         Monograms

·         Combination of colors or even a single color in combination with a word or device

·         Shape of goods or their packaging

·         Marks constituting a 3-dimensional sign.

·         Sound marks when represented in conventional notation or described in words by being graphically represented.

What are the benefits of registering a trademark? ·         The exclusive right to the use the trademark in relation to the goods or services in respect of which the mark is registered.

·         To seek the relief of infringement in appropriate courts in the country. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc.

·         Also, 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. In that situation one must certainly consult a Lawyer who has expertise in the said law.

·         The trademark would be an important asset for your business and contributes to the goodwill generated that can be sold, licensed or assigned according to your desire.

What are the documents required for registering a trademark? To register a trademark, you must submit three things to the Office of the Controller General of Patents. Design and Promotion of Industry and Internal Trade, Ministry of Commerce & Industry, Government of India in order to make an entry into the Trade Mark Journal, an official gazette of the Trade Marks Registry:-

·         A Power of Attorney in the name of your attorney or the authorized registered agent.

·         A completed application form along with an acknowledgement slip and an image of your trademark in a standard size of 9 x 5 cm.

·         A filing fee apart from the prescribed fee for the class of work as mentioned on the official website of the intellectual property India, has to be submitted.

What is the procedure of registration of a trademark? The registration of a trademark is a simple 5 steps process:

Step 1: Filling the Application There are three things necessary to fill the application for trademark:

·         A unique trademark, it could be a word, symbol, logo or name. An image of the same in a standard size of 9 x 5 cm.

·         Your identity proof and address proof and in case of a company that of the directors needs to be submitted.

·         If applicable, proof of claim of the proposed mark being used before in another country.

Step 2: Filing the Application There are two ways to file the registration – manual filing or e-filing:

·         In case of manual filing, the application must be submitted at any one of the offices of the Registrar of Trademarks located in Mumbai, Delhi, Kolkata, Chennai and Ahmedabad. After submission, an acknowledgement of the application and the receipt of payment will be received usually within 15-20 days.

·         In e-filing system, the acknowledgement of the application is issued immediately.

Once you receive the acknowledgement, you can start using the (TM) symbol next to your trademark.

Step 3: Examination of the Application After receiving the application, the Registrar checks whether the trademark complies with the law and does not conflict or dispute with other existing registered or pending brands. The examination of all applications is done centrally in the Head office of the Trade Marks Registry at Mumbai.

Step 4: Publication in the Register After examination, the logo or brand name is published in the Trade Mark Journal, an official gazette of the Trade Marks Registry, which is hosted weekly on the official website of intellectual property, India if no one raises an opposition within 3 months i.e. 90 days or in some cases 120 days, from the date of publication, the brand name proceeds to acceptance.

Step 5: Issuance of the Certificate If no one raises any opposition, within the stipulated 90 days period, the Registrar accepts the trademark application and issues a Certificate of Registration under the seal of Trademark Registry. You may now be allowed to use the registered trademark symbol (®) next to your brand name, once the certificate has been issued.

The whole process of registration of a trademark usually takes anything between 15-18 months. The trademark once accepted is valid for a period of 10 years from the date of issuance of the Certificate of Registration. After the end of 10 years, the trademark will need to be renewed.

What happens in case there is an opposition for the registration of trademark? Within four months from the date of publication any person can file an opposition in such cases the opposition proceeding is conducted at respective office of the Trade Marks Registry.

Under opposition proceedings, a copy of the notice of opposition is served to the applicant who is required to file a counter-statement within two months failing which the application is treated as abandoned. The copy of the a counter-statement is served to the opponent, who leads evidence in support of his case by way of affidavit, then the applicant leads evidence. After that the opponent files evidence by way of rebuttal. On completion of evidence, the matter is set down for a hearing and a Hearing officer decides the case.

The registrar’s decision is appealable to the Intellectual Property Appellate Board.

What is the Trade Mark Journal? The Trade Mark Journal, an official gazette of the Trade Marks Registry is currently maintained in electronic form contains inter alia the trademark the class and goods/ services in respect of which it is registered including particulars affecting the scope of registration of rights conferred; the address of the proprietors; particulars of trade or other description of the proprietor; the convention application date (if applicable); where a trademark has been registered with the consent of proprietor of an earlier mark or earlier rights, that fact.

Can any correction be made in the application or the Trade Mark Journal? Without substantially altering or affecting its identity, changes are permissible according to rules detailed in the Trade Marks Act, 1999. Any Lawyer who deals with the Trade Mark Law can assist you with the alteration process.

Can a registered trademark be removed from the Trade Mark Journal? Yes. It can be removed by making an application to the Registrar on prescribed form on the ground that the mark is wrongly remaining in the Journal. The Registrar can also suo moto issue notice for removal of a registered trademark.

What are the fees for major trademark transactions? 1. For filing new applications there are prescribed forms depending on the nature of application (Form TM-A)

·         • In case of Individual/Startup/ Small enterprise it is Rs.4500/-

·         • In all other cases it would be Rs.9000/-

2. To file a Notice of Opposition to oppose an application published in the Trade Marks Journal (FormTM-O), it would be Rs.3,000/- for each class covered.

3. For renewal of a registered trademark (Form TM-R) it would be Rs.10,000/-

4. Surcharge for belated renewal (Form TM-10) it would be Rs.5,000/-

5. For restoration of removed mark (Form TM-13) it would be Rs.5,000/-

6. For an application for rectification of a registered trademark (Form TM-26) it would be Rs.3,000/-

7. A Legal Certificate providing details of entries in the Register of Trademark (Form TM-46) would be Rs.500/-

8. Trademark search request and issuance of certificate (Form TM-C) would be Rs.10,000/-.

Kindly note that these fees are subject to change at the discretion of the Controller General of Patents Designs & Trademarks, Office of the Registrar of Trademarks as such these are the present fees.

By Shiv Mangal Sharma

Advocate Supreme Court