A visual symbol like a word signature, name, device, label, numerals or combination of colours used by owner of the trademark for goods or services or other articles of commerce to distinguish it from other similar goods or services originating from different businesses. A trademark can be a word, symbol, logo, brand name, wrapper, packaging labels, tagline or a combination of these and are used by manufacturers or service providers to identify their own products and/or services. It is used to distinguish the owners’ products or services from those of its competitors. A trademark is an asset that can be protected under the Indian law. To protect a trademark from being copied by others, the inventor of the word or symbol must apply for trademark registration.
A trademark application can be filed by any person or legal entity in India. The mark does not necessarily have to be used before applying for registration although a prior used mark improves the chances of registration. Foreign nationals and foreign entities can also file trademark applications in India and secure registration without additional requirements.
Registering a trademark provides legal protection against misuse of any kind including infringement or copy of a company’s name or logo, which is often a company’s most valuable asset. It grants the trademark owner exclusive nationwide ownership of the mark which can be legally upheld in the courts of law in any part of the country.
Registering a trademark grants the trademark owner the right to make the mark exclusive and incontestable and use it in a variety of mediums. This will be immensely useful to prove the validity of the mark and the registrants ownership in case of any infringement by a third party.
Products/ services are identified by their logo which helps create brand value over time. A strong brand is a huge pull for new customers and an anchor for existing customers. Registering a trademark early and using it will create goodwill and generate more business for the brand owner.
A registered trademark is an intangible asset for a company as it helps generate more business and helps attract and retain customers by account of brand recognition.
It also grants the business legal right to use a logo exclusively for 10 years with the choice to re-register.
Trademark search will help gauge the availability of a mark and to find if any other similar or identical mark exists. The client can proceed depending on the availability of the mark.
The World Intellectual Property Office (WIPO) has organised all goods & services under 45 classes. The first 35 classes denote products and the remaining 10 pertains to services.
Businesses can start using the ™ symbol alongside their brand as soon as the trademark registration application is filed. This symbol is NOT indicative of registration.
The ® mark can be used once the trademark application is approved & registration is complete. The entire process usually takes eight to ten months.
Trademark Registration Process
The process of trademark begins with a Trade mark Search. The government trademark search tool can be used to find identical or similar trademarks under the same class. Once the search is complete, you will proceed with the trademark application based on the details of identical or similar trademark applications already filed with the government.
Trademark application allotment
Once the trademark registration application is filed with the trademark registrar, a trademark application allotment number is provided within one or two working days. The application can then be tracked online through the online trademark search facility. On obtaining the allotment number, the owner of the trademark can affix the TM symbol next to the logo.
The Vienna codification established by the Vienna agreement (1973) is an international classification of the figurative elements of marks. Once the application is filed, the trademark registrar will apply the Vienna classification to the trademark based on the figurative elements of marks. While this work is in progress, the trademark application status usually reflects as “sent for Vienna codification”.
Once the Vienna codification is complete, the trademark registration application will be allotted to an officer in the trademark registrar office. The trademark officer would then review the trademark application for correctness and issue a trademark examination report. The officer will either accept the application and allow for journal publication or object the same.
If the trademark registration application is objected by the Trademark Officer, the trademark applicant has the right to appear before the officer and address the objections. If the officer is satisfied with the justifications of the trademark applicant, the trademark would be allowed for trademark journal publication. In case the officer is not satisfied with the justifications, the trademark applicant has the right to appeal the decision of the Trademark officer before the Intellectual Property Appellate Board.
Once the trademark registration application is accepted by the registrar, the proposed mark is published in the trademark journal. The trademark journal is published weekly and contains all the trademarks that have been accepted by the registrar. Once it is published, the public have an opportunity to object to a particular registration, if they believe their business will be damaged by that registration. If there are no objections filed within 90 days of that publication, the mark will typically be registered within 12 weeks’ time.
If the trademark registration application is opposed by a third-party, a hearing will be called for by the trademark hearing officer. Both the applicant and the opposing party have the chance to appear at the hearing and provide justifications for registration or rejection of the trademark application. Based on the hearings and the evidence presented, the hearing officer will determine if the application should be accepted or rejected. The decision of the hearing officer can also be challenged by escalating it to the Intellectual Property Appellate Board.
If there are no objections or oppositions to the application, the trademark manuscript and trademark registration certificate will be prepared. Once the trademark registration certificate is issued, the mark is considered to be a registered trademark of the owner, granting the owner exclusive use of the mark. The symbol can now be placed next to the logo.
Who can apply for trademark?
Any person which can be individual, company, proprietor or legal entity claiming to be owner of the trademark can apply. The application for trademark can be filed within few days and you can start using “TM” symbol. And the time required for trademark registry to complete formalities is 18 to 24 months. You may use the ® (Registered symbol) next to your trademark once your trademark is registered and registration certificate is issued. Once registered a trademark is valid for 10 years from the date of filing, which can be renewed time to time.
Trademarks in India are registered by the Controller General of Patents Designs and Trademarks, Ministry of Commerce and Industry, Government of India. Trademarks are registered under the Trademark Act, 1999 and provide the trademark owner the right to sue for damages when infringements of trademarks occur.
However, any trademark, which is identical or deceptively similar to an existing registered trademark or trademark for which application for registration has been made, cannot be registered. Also trademark that would likely cause deception or confusion or is offensive may not be registered.