Complete procedure for Trademark Registration in India

A trademark is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from another. This article discusses the procedure for trademark registration in India, along with the necessary documents and the type of trademarks that can be filed for to provide exclusivity to one’s business.

Thu Mar 31 2022 | Business Law | Comments (0)

Like

A trademark is a visual representation of a name, word, label, device or numeric characters utilized by a business to differentiate its goods and/ or services from other similar goods and/ or services deriving from a different business. A trademark works as an exclusive identity of the goods and/ or services that a person is offering/ selling from other such goods/ services.

A trademark, once registered, is an untouchable asset or intellectual property for a business and is used to safeguard the company's investment in the brand or ideogram.

A trademark are registered once it is distinct for the goods and services that are being provided. Tendered trademarks that are similar or identical to an already existing registered trademark cannot get registration. Besides this, trademarks that are deceptive, generic, offensive, similar, contains exclusively protected emblems, etc. cannot be registered either.

In India, trademarks are registered by the Controller General of Patents Designs and Trademarks, Ministry of Commerce and Industry, Government of India. Trademarks in India are registered under the Trademark Act,  2016 and it authorises the trademark owner the right to sue for damages when contraventions of trademarks occur.

Following the registration of the trademark, the symbol can be used by the owner and the said trademark registration will be valid for a fixed period of 10 years. However, the registered trademarks approaching their expiry can easily be renewed by applying for a trademark renewal application for an extended period of another 10 years.

Benefits of a Trademark registration

The greatest benefit to having a registered trademark is to be able to safeguard one’s brand as well as the business by instrumenting to the compassion of one’s business. In addition to this, having a strong brand can act as a direct link between the customer and the product by making sure they are reliable and associated to the business for a lasting period of time.

There are many other benefits, for instance,

  • A trademark registration gives credibility to the source of the good and service.
  • A registered trademark guarantees quality good and service
  • A registered trademark assists in the advertisement of goods as well as services.

Significance of a Trademark registration

As it is clear from above how advantageous it is to register a trademark while running a business, let us now understand the significance of the registration:

A TM provides exclusive identity

Ever since the market place has got crowded with numerous companies and brands, it has become close to impossible to differentiate among them. Therefore, the only demarcation between companies for exclusivity to attract customers to be able to stand out is by getting an exclusive trademark registered for one’s brand and consequently build the business’ prestige over it.

A TM is never- ending

As mentioned above, registration of trademarks come with a validity of 10 long years, which can further be renewed very easily after every 10 years before expiration and therefore, a trademark can last as long as the business is alive or even longer!

A TM works as a shield

For every entrepreneur, it is fundamental to make sure that his/ her brand is safeguarded against competition. Now, in case the trademark that the individual has been working to build already has a registered trademark by someone else, then not only does that individual lose business and goodwill in the market but also loses the privilege to prohibit others from using the same trademark. Therefore, shielding the trademark shall safeguard the trademark/ business, which further assists the individual by preventing others from using similar trademark.

A TM is economical

The cost of a trademark registration is only a one- time cost. Additionally, the time period and procedure of a trademark registration has also been reduced satisfactorily. A trademark registration now takes about 6 months to 1 year to process..

Moreover, once the trademark is registered, the same is valid for a time period of 10 years which can be easily renewed every 10 years before expiry of the trademark.

A TM is an asset

A registered trademark is an absolute asset for the business/ brand/ company which directly brings home goodwill. As a result, the desirability of a trademark thrives with the growth of the business. In fact, a registered trademark can be sold, transferred or purchased or even be utilized as a security to obtain a loan, which is similar to any of the other tangible assets.

Step by step procedure to register a trademark

The process to get a trademark registered involves filing of the trademark registration application, examination of the trademark, publication or advertisement of the trademark, opposition (objections) if raised/ found, registration of the trademark and renewal of the trademark after every 10 years.

The procedure to register a trademark is simple, however, it is recommended to employ/ get assistance from an expert trademark lawyer for the registration procedure to make it easier and dependable.

Step 1: To search for a trademark 

The applicant must be careful while choosing his/ her trademark. Since there are already tons of different types of trademarks available, once a trademark is chosen, it is essential to carry out a public search on the trademarks database which is available with the Trade Marks Registry, to ensure that the trademark is unique and that there is no other trademark which is either similar or identical to his/ her trademark.

The trademark search discloses all the types of trademarks that are already available in the market, either registered or unregistered. The search further tells whether the applied trademark has a competition for the same trademark.

Step 2: To file the trademark application

The application for registration of the trademark can either be filed in a single- class or a multi- class, totally depending on the goods and services the business pertains to.

The registration application form is Form TM- A, which can be either filed online through the official IP India website or physically at the Trade Marks Office depending on the jurisdiction of the trademark.

The application for trademark registration has to be supported with multiple documents, furnishing complete details of the trademark for which the registration is sought. Moreover, in case the applicant is claiming prior use in the trademark, then a user affidavit has to be filed, supporting the usage along with the evidence of its prior usage.

Step 3: Examination of the trademark application by the government authority

Post the filing of the trademark application, a mandatory examination report is issued by the Examiner after an extensive examination of the trademark application, in consonance with the guidelines of the Trade Marks Act, 2016.

The examination report by the authority may or may not disclose some objections which can either beabsolute, relative or procedural. This examination report by the Trademark Authority is issued within a period of 30 days of having filed the registration application.

A reply to the examination report is required to be filed within a period of 30 days after receiving the report, asserting the arguments and evidence against any objections to waive them off.

Step 4: Post- examination          

After the filing of the reply to the examination report, the Examiner (Trademark Authority) may appoint a hearing if the Examiner is not entirely satisfied by the reply filed, or in case the objections are not met. After the said hearing, the Examiner may accept the mark and subsequently forward the application for publication in the journal, or reject the said application if any objection still persists.

Step 5: Advertisement of the trademark        

Once the registration application has been accepted, the said trademark is advertised and also published in the Trade Marks Journal for a period of 4 months. The aim behind the publication and advertisement is to invite the general public to file an opposition against the registration of the mark.

The Trade Marks Journal is available on the official Registry website, which gets updated every Monday of the week.

Step 6: Opposition from the general public

Post the advertisement and publication of the trademark in the journal, any aggrieved person can file a notice to oppose against the registration of the advertised/ published trademark. This notice to oppose the trademark has to be filed vide Form TM- O within 4 months of the mark’s publication in the Trademark Journal. In case the applied for trademark is opposed/ objected, then the due process of law has to be followed, which includes filing the counter- statement application, evidence as well as hearing in order to get the trademark registered.

Step 7: Registration of the trademark

The final step towards the entire procedure is registration, where the application proceeds to registration after conquering the objection and/ or the opposition against the said registration of trademark.

Besides this, in case there has been no objection against the registration of the trademark during the advertisement/ publication period of 4 months, then the trademark is issued an auto- generated registration certificate within 1 week. Once the registration is complete, it is valid for a period of 10 years, after which it would be required to be renewed within a prescribed time period.

What are the different types of trademark units in India?

In India, trademarks can be registered in numerous types, for instance, logo, label, word mark as well as device mark. As a result, the decision to register the trademark as a word mark or a logo is a difficult decision to make.

Word Mark

This easiest of the other available trademarks, a word mark indicates the name of the brand, for instance, Jio or Britannia has trademarked only the word, which is known as a word mark.

A word mark self- registers the word. After a trademark gets registered as a word mark, the applicant has an absolute right to utilize and represent the word in any format or font which allows it broader protection, including exclusive rights to the word as a whole and describe it in numerous formats, irrespective of its style, for all the goods and services pertaining to the mark.

Logo

A logo, on the contrary, provides the trademark holder the rights in the combination of images, words and designs considered together. For instance, Nike, Adidas etc. Besides this, if the business logo is undisputedly recognized by the viewers/ customers, the applicant would want to file a trademark for that specific logo.

The shield provided to the words in a logo mark are restricted when compared with the standard word marks because the rights in a logo are only legitimate as a whole. So, if a person desires to register a distinct designed appearance or a union of stylized words and design, registering a trademark as a logo would be suitable.

Logo Composite Mark

Ordinarily, a brand name of a business comprises both of words as well as logos. For instance, Jack & Jones (a global apparel manufacturer)  has an intricate logo composite mark, which incorporates even the placement of its label on the rear of its jeans.The finest way to safeguard the intellectual property in such situations would be to file the trademark as a word mark as well as a logo. But, because filing several trademark applications is a costly phenomenon, it is always recommended to register the trademark as a word mark.

A distinct trademark application for word as well as logo must be filed to achieve the comprehensive shield. However, it may not be very cost- effective for start-up businesses. Therefore, it is recommended to register the trademark as a word mark, providing the applicant the next best  shield against any potential infringement.

Documents required for a trademark registration

A trademark registration is a significant procedure via which a brand/ business can safeguard itself from undesired use as well as infringement.

With time, the trademark registration procedure has been simplified by the Government of India to empower entrepreneurs to comfortably procure trademark registration for their brands within a couple of months. Below are the multiple documents required to obtain registration of trademark in India.

Note: In the course of the registration of the trademark application procedure, it is not mandatory to submit original documents. Scanned copies of the original documents suffice the requirement.

Documents required in individual & sole proprietorship

Any person (applicant)- whether an Indian National or a Foreign National, can very conveniently register a trademark in India. Thereis no necessity for a legal entity or a business entity to get a trademark registered.

Besides this, the documents needed to get a trademark registered in the name of a proprietorship are identical to that of an individual as under:

  • Copy of the proposed logo, ideally in black and white (which is optional). However, in case the logo is not provided, the trademark application can be filed for the word.
  • Duly signed Form- 48. This form is an authorisation from the applicant to a Trademark Attorney to file the trademark registration application on his/ her behalf.
  • Copy of the identity proof of the individual applicant or the proprietor which may include: passport, aadhaar card, PAN card, etc.
  • Copy of the address proof of the individual applicant or the proprietor which may include latest electricity bill, phone bill, etc.

Documents required in partnership / LLP / company - Small Enterprises or Start-ups

In India, the registration fee for trademarks ranges between Rs. 4500 to Rs. 9500.

For start-ups, small enterprises, individuals and proprietorships, the lower trademark registration fee of Rs. 4500 is applicable and for all other business entities, the trademark registration fee as set by the government is Rs. 9500.

Now, to fall under the category of a small enterprise, the individual applicant is required  to provide the  Udyog Aadhaar registration certificate. Also, in addition to the Udyog Aadhaar registration, the following mentioned details are required.

Partnership / Company / LLP

In the event of a partnership firm or an LLP, the entrepreneur/ applicant is required to submit the following documents:

  • Scanned copy of the logo (optional)
  • Duly signed Form- 48
  • Udyog Aadhaar Registration Certificate
  • Partnership Deed or the Incorporation Certificate
  • Copy of identity proof of signatory/ applicant
  • Copy of address proof of signatory/ applicant

Documents required for other applicants in a trademark registration

All other applicants, including companies that do not have Udyog Aadhaar registration, will have to submit the following documents to obtain trademark registration in India.

  • Scanned copy of the logo (optional)
  • Duly signed Form- 48
  • Partnership Deed or the Incorporation Certificate
  • Copy of identity proof of signatory/ applicant
  • Copy of address proof of signatory/ applicant

Other Latest Articles

GET IN TOUCH

Once you fill in the enquiry form below, our team will scan our database to find lawyers who have carried out work similar to your & for the right fit of location & seniority. It is very helpful if you give us as much information as is possible on a non-confidential basis. That helps us assess the matter & choose the correct professional who would fit your needs.