Must Knows

Everything you need to know about trademark registration

[ecis2016.org] Trademarks allow buyers to instantly identify the brand and its value.

What is trademark?

A trademark is a distinctive indication used to differentiate a particular company’s products or services from those of others in the marketplace. They may take the form of graphics, photos, signs, or even sentiments and might be linked to your company or product. They are essential because they set your items apart from those of your competitors and give you an advantage.  Because of their status as intellectual property, trademarks are safeguarded against any attempts at unauthorised use. The Trademark Act of 1999 provides legal protection for trademarks and the rights associated with them.

It is essential that your trademark be registered to prevent others from duplicating it and using it to disparage your services. Trademarks allow buyers to instantly identify the brand and its value, such as Nike’s ‘swoosh’ or Puma’s leaping wildcat.

Trademark versus patent

In contrast to patents, trademarks don’t have a set time restriction. When compared to a patent, which is valid for a period of 20 years, a registered trademark is valid for a period of 10 years; however, in contrast to patents, trademarks may be renewed for an additional period of 10 years. As long as you maintain renewing your trademark, it will never expire and will be protected by the Trademark Act of 1999.

Registration of a trademark for a company name

If you have a trademark on the name of your firm, you are securing everything you’ve worked so hard to build, including your company’s brand, identity, and innovations. If you do not protect your brand, you run the risk of being sued for copyright violation by a bigger firm. 

The procedure for registering a brand as a trademark in India is realistically attainable as it is straightforward. You may register a trademark for any one of the following items or even a set of related things:

  • Graphics
  • Letter
  • Logo
  • Number
  • Phrase
  • Smell or a Combination of Colors
  • Sound Mark
  • Word

Trademark registry

Following the establishment of the trademark registry in 1940 came the Trademark Act, which was enacted into law in 1999. The trademark registry now serves as the Act’s operational or functional body. Every policy and guideline of Indian trademark law is implemented by the trademark registry as a working entity.

The Trademark Act governs the process of trademark registration, which is completed by the registry of trademarks. During this phase, a registry official checks to see whether the trademark being registered fits all of the requirements of the Act. The headquarters of the trademark registry is located in Mumbai, and it also has satellite offices in the cities of Delhi, Ahmedabad, Chennai, and Kolkata. 

Who can file a trademark application?

An applicant might come in the form of a person, a business, or a limited liability partnership (LLP). Any of these entities are eligible to file an application for the licensing of a specific trademark. The individual whose name is indicated as the applicant on the Trademark Application form will be designated as the proprietor of the trademark after the registration has been completed.

Registering a trademark

There are many actions that need to be taken in order to successfully register a trademark.

Selecting a trademark

Keep in mind that the mark you use to represent your business should be both original and distinctive. Another critical step is figuring out which official level you fall under. In the current system, trademarks may be registered for 45 different types of products and services. 1-34 is for commodities, whereas 35-45 is for services.

Mark analysis

When you have decided on a mark for your business, it is a good idea to run a search to see whether or not that mark is comparable to another mark that is already registered. By visiting the website of the Controller of Patents, Designs, and Trademark, you may accomplish this on your own or with the help of a professional.  

The alternative option entails obtaining legal services. Despite the fact that you will be required to pay for them, it is considered the safest choice. In the event that an objection is raised against your trademark, the total cost of legal services will be lower. Not only would they conduct the search on your behalf, but they will also provide assistance throughout the process.

Application submission 

There is no limit to how many classes or series trademarks you may apply for in a single filing. Form TM-A must be completed in this instance, which allows trademark registration beyond one specific type of goods or services. The cost of submitting this form falls into two categories:

Rs 9,000-10,000 bracket

If you do not qualify as a start-up business, a small business, or an individual, you will be placed in this category. If you want to digitally submit the form, the fee is Rs 9,000. However, the fee is Rs 10,000 if you choose to submit the application in person at the Department of Trade Marks.

Rs 4,500-5,000 bracket

This category includes those who are self-employed, run a small business, or are just getting started in the business. The cost of digitally submitting the form is 4,500 rupees, whereas the cost of physically submitting the form is 5,000 rupees.

When you are filling out the form, you need to be very careful not to make any errors since doing so might result in the application being delayed or even denied. You are required to provide all of the necessary information and also to upload a photo of the trademark that has a size of 9 centimetres by 5 centimetres. There is a possibility that you may be forced to attach five identical copies of the same thing. The whole file, along with two copies, needs to be produced when filing.

Depending on what is most convenient for you, you may either submit it online, by yourself, or via an agent. If the submission is completed physically, the validation of the submission might take up to 15–20 days. However, it will be done instantly if it is done online. 

Procedure for online trademark registration

Online search for a brand name

This is just a quick and effective method that any beginner may use to create a brand name that is intriguing, fashionable, and catchy, all at the same time. When most of the common names are already taken, it is absolutely a smart decision to pick up a unique name in order to differentiate yourself from the competition.  

As a result, you must do a fast check to verify that you are not choosing a brand name that has already been taken. The most appealing aspect of this scenario is the fact that you may generate a one-of-a-kind brand name by inventing or coining certain phrases using a combination of terms that are not exclusive to your industry. 

Putting up a trademark application

In order to complete online registration for a trademark, you are required to submit the application together with the supporting papers listed below:

  • Proof of company registration

Your registered business necessitates the submission of a company director’s identification and address verification. PAN or Aadhar card might be used as evidence of ownership for a single proprietorship firm. In contrast, in the context of corporations, the company’s address proof is needed.

  • The trademark’s soft copy
  • The proposed mark’s evidence of claim may be utilised in a different nation
  • The applicant must sign the power of attorney
  • Submitting an application for brand registration

In order to submit an application for registration, one of two methods is manual filing and the other is electronic filing (form TM-A). Your application for registration must be physically sent to the Trade Marks Registry Offices in Mumbai, Kolkata, Delhi, Ahmedabad, and Chennai if you wish to file manually. After that, you will have to wait at least fifteen to twenty days before you will get an acknowledgement of receipt of the payment. On the other hand, if you use an electronic filing method, you will be able to get an immediate digital receipt and acknowledgement of your submission on the official government website.

You are permitted to use the Trademark (TM) sign next to your brand name as soon as you have received acknowledgement of your trademark application! 

  • Analysing the trademark application procedure

After the application has been sent out, the Registrar of Trademarks will conduct an investigation to determine whether or not you have adhered to specific conditions and whether or not your brand name is in accordance with the law as it now stands. In addition, there must be no similarities or exact matches with any other brands that are already registered or that are in the process of being registered. Because of this, we strongly encourage you to go with a creative moniker for your company.

  • Publication of your brand in the Indian Trade Mark Journals

Your brand name will be published in the Indian trademark journal by the Registrar of Trademarks after the examination phase is done.  This is without a doubt the most essential component of trademark registration. There should not be any challenges lodged against the mark within three months of its publishing. The Registrar of Trademark will go on with the process of issuing a Trademark Registration Certificate when there is no resistance to the application.

  • Trademark opposition

If a third party objects within three months after the trademark is published in the trademarks journal, the Registrar of Trademarks will provide you with a copy of the notice of objection. You have a certain amount of time to file a counterstatement in response to the objection notice that was sent to you. The trademark registration will be regarded as discontinued and denied if the counter statement is not submitted within two months.

If no one objects during the next three months, you will be exempt from this phase, and your trademark registration will be approved without delay. 

  • Consideration of trademark opposition

As long as you file your counter-statement within two months after the foreign entity challenging trademark registration, you will get a copy from the Registrar of Trademarks.

It is necessary for both you and the objecting entity to provide evidence in favour of your claim. After you have presented your evidence, the Registrar will provide you and the other party with a chance to be heard. 

After listening to both of the parties and taking the evidence into consideration, the Registrar will issue an order about the inclusion or exclusion of the trademark registration. If your application for a trademark is accepted by the Registrar of Trademarks, then they will begin the procedure to grant registration.

  • Issuance of the certificate of trademark registration

Following 90 days, if no opposition is made, or if your trademark application is accepted after a hearing on trademark opposition, the Registrar will approve your application. After receiving your certificate, you may begin using the registered trademark sign next to your brand name right away. 

Status of submission

Obtaining an allocation number is as simple as waiting for the filing confirmation to arrive in the mail. Using this allocation number, you may keep tabs on the status of your application online. If there is no difficulty with the submission, you will find out in 18-24 months whether or not your application has been accepted or refused. The longer this takes, the more likely it is that there is an issue.

According to the submission date, your application is given higher importance. Even if your application isn’t granted, you may use the TM sign next to your trademark after you obtain your allocation number.

Registration

The registrar will provide you with a certificate of trademark registration if they have decided that your mark is acceptable. This will provide formal confirmation that the trademark you have been using has been authorized and is now recognized. After the application has been submitted, the licensing will be authorized for a period of ten years, beginning on that day. After such a period of time has passed, you will be able to renew the trademark. Renewal is something that may be done endlessly.

Expenses for trademark registration

Individual Registration Fees for Trademarks are Rs 5,499, whereas the Corporate Trademark Registration Fee is Rs 11,499.

8 most important facts about trademark registration

Your company’s trademark has the potential to be one of its most precious commodities. It is a means of recognition and makes a substantial contribution toward the overall development of the company’s reputation in the public spotlight. A trademark is a graphical representation of anything, such as a slogan, word, numerals, labelling, logo, colour scheme, etc. Customers are better able to recognise a certain brand or business with the assistance of this distinguishing symbol.

This office (the Registrar of Trademarks) is responsible for registering Indian trademark applications. It is a department under India’s Ministry for Industrial and Commercial Affairs. Trademark registration is a complicated process, so here are the top eight key points to consider: 

A visual illustration

There is a wide variety of content that may be included in a trademark application. The following are some categories: 

  • Word Patterns
  • Service Signs
  • Signs and Logos
  • Form of Commodities
  • Sequence Marks
  • Collaborative Branding
  • Authentication Symbol
  • Spatial Markers
  • Geometric Marks
  • Sound Effects
  • Colour Codes
  • Three-Dimensional Indicators

An intangible asset

It’s important to remember that your company has a well-known name and is a strong franchise. A trademark, which is a sort of intellectual asset, has several advantages for the organisation. Intangible assets like trademarks may be exchanged, syndicated, economically contracted, and transferred after they have been registered.

Other forms of legal protection against infringement

In the event that a trademark owner’s logo, business, or catchphrase is used without the trademark owner’s permission, the copyright holder has the authority to take action. Without authorization, any third party may be sued by the trademark owner for using their trademark without a licence.

Brand investigation

In the case of trademarks, a search is often carried out to determine whether or not a given trademark already exists. You have the option of doing the search using the database of the government’s Indian Trademark Registry or the website of a third-party service provider.

Category assignment

The items and services that may be found here are divided among 45 distinct industries. A category is used to denote each individual industry. At the date of submission, each individual logo or brand has to be registered in the category that is most applicable to it. There are 45 distinct classes, 34 of which are product classes, while the other 11 are service classes.

Non-compulsory, discretionary registration

A trademark may only be registered if the owner chooses to do so voluntarily. On the other hand, registration of a trademark provides unmistakable proof that the trademark in question rightfully belongs to the individual who went to the trouble of registering it. The entity that successfully registered the trademark will emerge victorious in any and all legal proceedings.

Longevity

Up to ten years after first registration, a trademark registration must be renewed.  On the other hand, the procedure for renewing a registered trademark may only be started during the last year before the trademark’s expiration date.  In the event that one does not comply, the trademark would be revoked. However, it is possible to re-establish the trademark even if it has been cancelled. This is referred to as “restoration.” 

Trademark Signifiers

Service Mark (SM) and Trademark (TM)

This indicates that the trademark isn’t yet authorised but that a proposal to do so is currently being processed by the relevant authorities. It’s there to serve as a deterrent to others who may try to encroach on the same. Because the authorities have not yet authorised the application, it has no particular legal importance.

R Signifier

You may use the R sign next to your newly registered trademark as soon as your trademark application has been approved. Signifying legal sanction for any violation denotes the trademark has been legitimately registered.

Displaying the R sign is not required. The proprietor of the trademark, on the other hand, is protected in such a manner that, in the event that someone rips off the tangible goods, the owner has the right to collect all of the earnings that were lost and may do so by prosecuting a third party for intellectual property infringement if necessary. 

C Signifier

The copyright that an owner has over an artistic activity is often denoted by the letter C, which is an abbreviation for “copyright.” These are the following: 

  • Artistry and Photography
  • Filmmaking
  • Scriptural Works
  • Software

The C sign is good for the rest of your life. The sign is put next to the name of the person who owns the copyright as well as the year that the work was first published in the nation that granted the copyright. 

Overall, there is still a lot to know about trademarks and trademark registration. The application procedure itself is complicated; thus, the candidate should do a thorough study of the matter. As a result, trademark registration offers several advantages, but only if it is handled with care. 

Advantages of Indian trademark registration

A trademark is a distinctive sign or indicator that is used in the recognition of a product or service. A trademark might take the form of a sign, a number, or even a particular colour arrangement. In accordance with the Trademarks Act, 1999, you have the ability to get a trademark registration.

However, it is important to remember that topographical names, related words, popular trade terms, and popular abbreviations cannot be authorized as trademarks. Besides being distinctive, a trademark must be simple to use, enable the sale of your goods, and help your customers recognise your brand. The owner of a trademark enjoys a myriad of benefits and privileges, including: 

Legal security

Once a trademark is registered, it is given the status of intellectual property and is thus safeguarded against any attempts at duplication. In addition, the licensing of a trademark grants the owner the exclusive authority to use the trademark in connection to the “Category” of products or services that the trademark symbolises. 

After you have submitted the application for a trademark, you will be able to use the symbol “TM” on any items that you sell. Only after successfully registering your trademark will you be able to use the sign “R.” in connection with your brand. 

Additionally, you are only permitted to use the TM mark for the products and services that are specifically outlined in the license application. If someone uses your trademarked name without your permission, you have the legal right to seek compensation for the violation in the country’s proper institutions.

Product specialisation

Registrations of trademarks are separate and different from the products or services that they signify. Your product will be able to be differentiated from the commodities of your rivals if you get a trademark for it. In addition, the fact that a registered trademark will be effective for the whole of the category of product or products that it represents is something that will assist in clearly distinguishing the services that you provide. Customers are able to easily distinguish between items that hold a variety of trademarks, which results in the development of a user base for your company.

Brand awareness

Customers tend to identify the effectiveness, authenticity, and other attributes of a product with the firm that manufactures that product. The logo, which is a registered trademark, is the primary means by which they recognize the product. Getting your products and services recognised as belonging to your brand is made easier by registering your trademark. In addition to this, it cultivates positive feelings for the brand. As a result, customers will remember your brand, and it will also accumulate market worth over time. The awareness of a brand is essential to attracting new clients while simultaneously keeping existing ones.

Development of an asset

The registration of a business’s trademark results in the creation of an asset for that company. For the purposes of both bookkeeping and payroll taxes, a trademark is regarded as an intangible asset. Trademarks are considered forms of copyrighted material and hold a value that is connected to the goods that they designate. Trademarks may be monetized in any number of ways, including by being sold, licensed, allocated, or otherwise delegated. You are able to record in the accounting records not only the valuation or cost connected with trademarks but also a claim for reimbursement for devaluation and a record of revenue from the same.

Valuation of the business and goodwill

The whole value of your company, as well as its reputation and net worth, will increase in the sector when you register trademarks for your items and link them with those trademarks. Your organization’s objective, the distinctive characteristics of your goods, and quality standards are all communicated via your trademark. Your company’s expansion will benefit from the use of trademarks. They are beneficial to retaining loyal consumers and protecting the credibility of the company.

Recognition as a trademark

A trademark that has been registered in India remains in effect for a period of 10 years beginning on the day when an application was submitted. However, the trademark may be renewed several times in the future. Trademark registration or permission is required in countries where you want to utilise your trademark or extend your company. You may use the registration of your trademark in India and your company in India as a foundation for registering your trademarks elsewhere.

Continuous growth

A trademark serves as a link between a company’s goods and its consumers. You can build a consumer base if you provide items that are efficient or distinctive. Maintaining and growing your clientele is much easier when you have a trademark. Trademark protection grants you ten years of exclusive usage rights and preserves your company’s earnings. A client base may be used by introducing new items and increasing a company’s operations.

Madrid Protocol: What is it?

The Madrid Protocol is a multilateral agreement that was established in order to streamline the procedure of registering international trademarks. The procedure allows participants to submit a specific application in their native language, which may then be sent to more than 90 nations that are members of the organisation.

There are several advantages to registering under the Madrid Protocol:

  • The date of renewal is standard for all trademarks.
  • The IB will review any changes to the marks before they are implemented; as a result, records are kept, which makes audits much simpler.
  • The costs are much lower in comparison.

Process of registering a trademark under the Madrid Protocol

  • Application

Registration or application with the Indian Trademark Registry is required in order to file under the Madrid Protocol with a trademark. Trademark officials in India are responsible for verifying that the information provided in an overseas application is identical to that provided in an initial application or registration.

  • WIPO investigation

Immediately upon the approval of the request, the WIPO will carry out the necessary formal assessment in order to validate whether or not the application satisfies the prerequisites set out by the statute. Any anomalies that are discovered need to have the appropriate corrections made to them within three months of their disclosure. The application will be considered “abandoned” if the problem is not fixed within the allotted amount of time.

  • Publication from the World Intellectual Property Organization

If all of the procedures up to this stage have been appropriately completed, then the application will be placed into the Worldwide Register and announced in the WIPO Gazette of International Marks. The World Intellectual Property Organization will provide a credential of a registered trademark to the applicant. In addition, the World Intellectual Property Organization will inform all of the other copyright authorities of the information that the candidate has opted to prolong the coverage of a certain mark’s trademark rights.

  • Auditing by the office of trademarks of the specified country

The application is subjected to further scrutiny by the Trademark Registry of the Specified Nation to determine whether or not it complies with the legal requirements of that particular region. Within a time frame of twelve to eighteen months, the decision of whether or not to accept the request will be communicated to the WIPO. The WIPO, in turn, will tell the candidate about the verdict reached by the trademark registry of the Assigned Country.

  • Promotion and certification

After then, an advertisement for the mark will be placed in the Indian Trademarks Gazette, where it will be available for objection from third parties for a period of four months. The Indian Trademarks Registry will provide authorization for the trademark if there is no resistance after a four-month period.

Source: https://ecis2016.org/.
Copyright belongs to: ecis2016.org

Debora Berti

Università degli Studi di Firenze, IT

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