Trademark Registration: A Practical Guide to Protect Your Brand Identity

Introduction to Trade Mark: A brief description about trade mark-

IP and IPR, short forms for Intellectual Property and the vested/contingent legal rights associated with it. These properties and the rights related to it have become the most important aspect of modern world’s creation and innovation. So, if we talk about its kind, there are mainly five kinds of intellectual property namely Trademark, Copyright, Patent, Trade secrets and Industrial designs. But if we further talk about its kinds, there are two additional kinds namely Geographical Indications and Circuit designs, cases related to which IP firms deal with nowadays. Now, as this blog’s title suggests, lets discuss in detail What is Trademark? What are the kinds of trademark? and legal frameworks that deals with trademark nationally and internationally.

Legal Definition of Trademark– Section 2(1) (z b) of The Trade Marks Act, 1999 provides for the definition of the word “Trade mark” which states that- a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.

Kinds of Trademark- There are various kinds of trademark, some important ones are listed below;

1. Work Mark
2. Device Mark
3. Service Mark
4. Collective Mark
5. Certification Mark etc.

Legal Frameworks related to Trademark- The Trademarks Act, 1999 and The Trademark Rules, 2017 deals with all the trademark related things in India and The Madrid Protocol, 1989 deals with all the trademark related things internationally.

What can be registered as a trade mark and Who can register their brand’s trade mark?

Section 2 (1) (m) of The Trade Marks Act, 1999 states what includes mark, are as follows; a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof; Hence, above given are the marks which can be registered.

Section 18 (1) of The Trade Marks Act, 1999 states that “Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, which can include Individuals, Startups, Companies, Partnerships, LLP’s and NGO’s, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark”.

Registering your trade mark: Why early registration is important?

People nowadays are rapidly producing their creative work, innovative products, artistic deeds, and what not! So, protecting their original work from being copied which can wrongly benefit other people, is no longer optional – it’s essential. Likewise, it is essential for your brand’s trade mark also. And for providing legal protection to your trademark, you must register it before the other ones do. Registering your trade mark can give you ample of benefits in the future, those are as stated below;

1. Registering your trade mark shall give you exclusive legal rights.
2. Legal registration of your trade mark shall provide protection against infringement.
3. Registration will enhance the credibility of your business, which can help your business generate more revenue.
4. Registration can help you create more assets and also increases the valuation of your business.
5. Registering your trade mark shall provide licensing and can provide you with more franchising opportunities to expand your business globally.

Trade Mark registration process: A step wise descriptive guide –

For a successful legal registration of your Trade Mark, as a proprietor you have to follow the process given below;

1. First and most important step in the registration of trade mark is “Conducting a Trademark search” to minimize the risk of availability of similar marks and future conflicts because of similarity of marks.
2. Second step in the registration of trade mark is to “Choose the correct class of trademark” according to the goods/services you are offering to the targeted consumers.

There are 45 classes of trade mark which is also known as NICE CLASSIFICATION (NCL), an international system established by the 1957 NICE AGREEMENT. So, from classes 1-34 is basically for goods and from classes 35-45 is basically for services, so select from these classes accordingly.

3. Third step in the registration of trade mark is to “File the Trade Mark Application” using the FORM TM-A which is being available on the official website of IP India and by providing the required documents, applicant’s authentic details and at last by submitting the required government fees.
4. Fourth step in the registration of trade mark is “Examination by the trade mark registry office”, it is done by the examiner of that particular registry office which has the territorial jurisdiction to examine your mark. After the examination, an examination report publishes which contains either an approval for registration or common grounds for objections which is usually based on the grounds given under section 9 and 11 of The Trade Marks Act, 1999.
5. Fifth step in the registration of trade mark is to “Reply” to the objections in case of refusal to registration by the examiner on the grounds given under section 9 and 11 of The Trade Marks Act, 1999. This Reply you have to give within 30 days after receiving the objection notice. After receiving the reply, the examiner conducts a hearing process.
6. Sixth step in the registration of trade mark is the “Publication of Trade Mark in the trademark journal” in which you will be given a unique four-digit number in the following format “1234-0”. After publication of the mark in the journal, if any third-party wants to oppose the registration of your mark, they have to file the opposition in the format FORM TM-O and according to the procedure given in Rule 42 of The Trade Mark Rules, 2017 within 4 months of the publication of the applicant’s mark in the trade mark journal.
7. Seventh and last step is the issuance of certificate which implies the successful legal registration of your trade mark.

Usual Reasons behind the rejection of your trade mark:

Section 9 of The Trade Marks Act, 1999 states the absolute grounds for refusal of registration of trademark which includes Non-distinctiveness, Descriptive in nature, become customary in trade, deceive public/creates confusion, hurtful to religious sentiments, scandalous/obscene in nature and prohibited under The Emblems and Names (Prevention of Improper Use) Act, 1950.

Section 11 of The Trade Marks Act, 1999 states the relative grounds for refusal of registration of trademark which includes its identity with the earlier trade mark or similarity with its goods/services, its similarity with the earlier trade mark or identity with its goods/services, by virtue of the law of passing-off and by virtue of the law of copyright.

A brief about trade mark opposition: What to do when your trade mark application is challenged by someone?

After publication of the trade mark in the trade mark journal, if any third-party file the notice of opposition within 4 months of the publication on the grounds given in section 11 of The Trade Marks Act, 1999 and according to the procedure given in Rule 42 of The Trade Mark Rules, 2017, the applicant has to take the following steps;

1. File a Counter-Statement to the Notice of opposition, according to the procedure given in Rule 44 of The Trade Mark Rules, 2017

And if the opponent provides Evidence in support of opposition according to the procedure given in Rule 45 of The Trade Mark Rules, 2017, the applicant has to take another step given below;

2. Provide Evidence in support of application according to the procedure given in Rule 46 of The Trade Mark Rules, 2017.

And if the applicant takes no action given under Rule 46 within the time mentioned therein, the application shall be deemed to have abandoned by the applicant.

What legal remedies available in case of trade mark infringement?

In case of Trade Mark infringement by any third party, there are the following remedies which can be available to the original proprietor, these are mentioned below;

1. Civil remedies– Injunction (temporary/permanent based upon court’s discretion), damages or Account of profits, Anton pillar order, Delivery up and destruction, John doe orders.
2. Criminal remedies– Imprisonment (up to three years), fine (up to 2 lakhs rupees), search and seizure by the police.
3. Administration and border remedies– Custom enforcement, rectification/opposition.
4. Alternative Dispute Resolution.
5. Special remedy provided by The Trade Marks Act, 1999-
   • section 135 of The Trade Marks Act, 1999.

For how much time your trade mark registration is valid? and What’s the renewal process?

Registration Validity- Once the applicant has successfully registered their trade mark, their mark is valid and has a legal protection for 10 years (in India) from the date of application. And after the expiry of first 10 years of legal protection, the applicant can renew the registration indefinitely after every 10 years.

Renewal Process- Section 25 of The Trade Marks Act,1999 talks about the renewal procedure of the trade mark’s registration which includes filing the renewal application in the format FORM TM-R online with the trade mark registry within 6 months before the expiry of the registration and if the applicant fails to file the renewal application in the said time period then they can file the renewal application within 6 months after the expiry of the registration but with a surcharge/late fee.

Consequences of Non-renewal- In case of non-renewal of the registration of the trade mark in the said time period, the applicant’s mark can be removed from the trade mark register by the registrar (if satisfied that it is just so to do)

When and how to register your trade mark internationally: International trade mark protection-

When your business starts to grow nationally and now you want to expand it globally, for making your brand a hit in foreign markets also, international protection is required so that your brand will not face any kind of setbacks globally and for it you have to register it internationally. So, now let’s talk about what is International Trade Mark registration and how it is done. International Trademark registration is the process of protecting your trademark globally by filing a single application which after a successful registration will protect your mark across 130+ countries. This process is done by Madrid Agreement and Protocol, signed in 1989 which is administered by The World Intellectual Property Organization (WIPO). This protocol requires manufacturers and individuals in India to file only one registration application for international registration of trade mark in various countries that are the member of this system. To be precise 132 countries.

Below given the step wise guide for international trademark registration;

1. First of all, Go for a trademark search.
2. File a National Application (it should be either accepted and registered or in a pending status).
3. Choose the countries where you want your trademark to be protected.
4. File the international application in the format FORM MM2 with the Indian trademark registry office. It will be further forwarded to WIPO.
5. WIPO will review and publish the application.
6. The application will be further reviewed by the chosen countries.
7. In case of objection raised by any chosen country, the applicant has to make a response within the specified time.
8. After that, each country will make their own decision to grant or refuse the protection.
9. After a successful registration, the status of the mark will be monitored in each country for 10 years and is renewable after expiry of every 10 years term.

Conclusion: Act Early for the legal protection of your brand’s mark 

At the end, while concluding my blog, as a law student myself, I would advise all the Business entities and individuals whoever is the sole proprietor of a trademark to register their mark and protect their mark from future setbacks and have an edge over the non-registered ones. Because it is not optional, IT IS ESSENTIAL

Author:– Anshika Singh, in case of any queries please contact/write back to us atsupport@ipandlegalfilings.com or   IP & Legal Filing.

  Endnotes:

1. The Trade Marks Act, 1999.
2. The Trade Mark Rules, 2017.
3. Fourth schedule of The Trade Mark Rules, 2002.
4. The Madrid Protocol for International Registration of Trade Mark, 1989.