In India, law and provisions related to Trademarks are governed under The Trademarks Act, 1999, and the Trademarks Rules, 2002, as may be amended from time to time. Trademark basically means a mark that is capable of being graphically represented and could potentially distinguish goods and/or services of one person from those of others and it may include the shape of goods, packaging, colour combination etc. “Trademark” may include a device, name, signature, word, numeric value, the shape of goods, packaging or colours and combination of colours or any combination thereof. Further Section 7 of the Trademark Act, 1999, provides for the classification of goods and services in accordance with the International Classification for the purpose of registration of Trademarks. In order to comply with the said provision, the Trademark registry refers to NICE Classification which can be accessed here. It specifies goods under class 1-34 and services under class 35 to 45.
In order to get trademark protection, it is essential to register the trademark. It is not per se mandatory to register a trademark but strongly recommended because it prevents others from copying your mark and misrepresenting other products with your mark. Trademarks help customers to differentiate a brand from another, and recognize the brand and the brand value in a single glance like the logo of a tick sign for Nike or a jumping wildcat for Puma and so on. Trademark registration is perpetual in nature. Unlike patents, trademarks do not have an explicitly defined limitation period. Where a patent expires in 20 years, a trademark registration expires after 10 years of its registration but can be renewed again for another 10 years. This process can be done indefinitely i.e. as long as the trademark is renewed; it shall not expire and will continue to be under the protection of the Act.
1. Selecting a trademark
The first thing to remember in the process of trademark registration is selecting a unique and distinctive mark that will represent your product/company. The next step would be identifying the class that the mark would belong to. There are 45 classes of goods and services under which a trademark can be registered. Classes 1-34 pertain to goods and classes 35-45 are for services.
2. Trademark search
After selecting a trademark, it is pertinent to carry out a trademark search to check if the selected mark is similar to an already existing and registered trademark. Our Trademark Agent or Attorney conducts due diligence and availability searches at the Indian Trademark Registry to confirm if there are any similar trademarks already registered under that particular class (or a related class), thereby verifying whether the mark is registrable under the trademark law or not.
3. Filing trademark application
Based on the search report of the proposed trademark, our trademark attorney will draft a trademark application in furtherance of the registration process. If the client’s mark is not a clear mark or is similar/ identical to the existing mark, the mark being proposed for filing may need to be amended/ changed.
4. Application allotment
It takes about one or two working days for a trademark application allotment number to be provided. At this point, the applicant may affix a “TM” symbol next to the mark.
5. Vienna codification
Registrar of Trademarks applies the Vienna Classification to the mark based on its figurative elements.
6. Publication in tm journal
Trademarks whose registration is accepted by the registry are published in the trademarks journal which is published weekly by the Trademark Registry. This publication gives the public an opportunity to oppose the trademark registration within a period of 4 months. For more details on the Trademark Opposition, please visit the (Trademark Opposition Page).
7. Registration of trademark
Once your Trademark Application is filed/ registered with the Indian Trademark Office, trademark examiners examine and approve the trademark application. After the approval of the trademark, it is registered and the symbol can be used along with the mark, which implies that Trademark or Service Mark has been registered with the Indian Trademark Office.
- Trademark/Logo you wish to Register.
- Date of first use of the Trademark in India or confirmation that the Mark is ‘proposed to be used’
- Name, Address, Nationality, and Particulars of the Applicant (whether Individual, Society, Trust, Partnership Firm, or Company).
- Details of Goods or Services for which registration is required.
- Address for correspondence with Name, Phone Number, and Email id.
- Power of Authority.
1. Is the Trademark Registration mandatory?
No, registration of a trademark is not mandatory, but it is advised to get your mark registered since it serves as prima facie evidence of the proprietorship of a mark. Moreover, registration helps your cause while filing a trademark infringement suit against a defaulter.
2. Can I carry out Public Search on my own?
Yes, a public search could be conducted by anyone. To do so, visit the IP India website and go to the public search section of the Trademark. A new window shall appear in which the user can conduct a trademark search by filling in the required credentials. However, since there are a lot of technicalities involved which a normal user is not aware of, it is better to get a search report from a professional.
3. Is the Trademark liable for removal on the ground of non-use?
Yes, a trademark is liable to be removed on non-use of the same. In case of a trademark not being used for a period of 5 years from the date of its registration, it is liable to be removed on basis of non-use.
4. Once registered, for what period of time is a Trademark effective?
A trademark is effective for a period of 10 years from the date of its registration. However, post that, a trademark could be renewed for another 10 years by filing a renewal application. This process can be done for eternity.
5. What are the benefits of a registered Trademark?
A few exemplary benefits of a registered Trademark are given below:
- Provides Exclusive Right to the owner to use the mark in relation to his Goods and Services.
- Prevents and restricts others from using the same or similar mark.
- Provides remedies to the owner in case of infringement
6. What can be registered as a trademark in India?
Following marks can be registered under the Indian trademark law:
- Invented / Coined Words
- Combination of colors
- Shape of goods
- Sound Marks
7. Can a three dimensional trademark registered in India?
Yes, as per the Indian Trademark Law, 3-D marks or Three Dimensional marks can be registered in India.
8. Can Sound be registered as a trademark in India?
Yes, Sound Marks can be registered in India under the Trademark Rules, 2017 and it has to be submitted in the MP3 format not exceeding 30 seconds in length. Such sounds must be clear and audible, recorded in a proper sound medium, and should also have a graphical representation of its notations.
9. Can a Domain Name be registered as a Trademark or Service Mark in India?
Yes, Domain Names can be registered as Trademarks or Service Marks. However, the domain names should be source identifiers for the goods or services and not merely used to indicate the URL or address at which a web site may be found.
10. Is it possible to have a descriptive trademark registered in India?
It is not possible to register a Descriptive Trademark unless it has acquired distinctiveness or secondary meaning by virtue of long-standing use and the resulting recognition.
11. Whether foreign proprietors can apply for registration of Trademark in India?
Yes, foreign proprietors can apply for registration of Trademark in India. The Indian Trademark Law is TRIPS compliant and provides for the protection of well-known trademarks and recognizes trans-border reputation.
12. Is the use necessary for filing a trademark in India?
No, the use of mark prior to registration is not mandatory in India. Trademarks that are proposed to be used can also be registered in India.
13. How can we know whether similar marks have already been registered in respect of the same type of goods in India?
A trademark search can be conducted in India on the Indian Trademark Registry’s Website.
14. Does Indian Trademark law bestow protection to unregistered Trademark?
An action for Passing Off can be brought for misuse of an Unregistered Trademark.
15. How long does it take to get a trademark registered in India?
It takes around 6 months to 12 months for the mark to get registered in case no objection is raised against the application by the TM registry.
16. What is the term of registration under the Madrid Protocol / International Application?
The term of registration under the Madrid Protocol is 10 years from the date of application.
17. What are the languages in which an application under the Madrid Protocol / International Application can be filed?
An application under the Madrid Protocol / International Application can be filed in the following three languages:
18. What should be the size of a Trademark that is to be filed in an application under Madrid Protocol / International Application?
This size can vary from 3cm x 3cm to 8cm x 8cm.