Trademark Registration

Overview of Trademark Registration in India

Trademark registration plays a crucial role in safeguarding the intellectual property of businesses. By registering, you secure brand protection and exclusive legal rights to your symbol, logo, or name. Prior to registration, conducting a thorough trademark search is advisable to prevent potential infringement issues. When submitting your application, you will need to select appropriate trademark classes and submit them to the trademark office. Seeking guidance from a trademark attorney can streamline the process. Upon successful registration, you gain the right to use the trademark symbol. It is imperative to adhere to renewal deadlines to maintain your rights. This entire process fortifies your brand identity and deters others from unauthorized duplication.

What Items Can Be Registered as Trademarks?

In India, a wide range of items can be registered as trademarks. These may encompass brand names, logos, words, slogans, sounds, smells, colors, or any distinctive sign. These trademarks are intended to differentiate your goods or services from those of others, thereby preserving your business identity and safeguarding it against unauthorized use.

The Importance of Trademark Registration

Trademark registration in India holds significant importance as it serves to safeguard your brand and prohibit others from utilizing similar signs. It grants you legal rights to your brand, enhances its value, and provides assurance to customers regarding the quality of your products or services. Additionally, trademark registration facilitates brand recognition and fosters trust-building among customers.

Trademark Classes Overview

Trademark registration involves categorizing goods and services into specific classes, of which there are 45 in total. It’s crucial to exercise caution when selecting these classes, as they determine the scope of your trademark protection for your business’s offerings. If your business spans multiple goods or services falling under different classes, it’s essential to apply for trademark registration under all relevant classes.

In India, some popular trademark classes include:

Class 9: Encompassing computer software and electronics.
Class 25: Covering clothing.
Class 35: Including business management and advertising.
Class 41: Involving education and entertainment.

Operating within these trademark classes may entail heightened competition for trademark registration. Nonetheless, the uniqueness of your mark is paramount regardless of the level of competition.

Types of Trademark Registrations in India

Under the Trademark Act of 1999, various types of trademark registrations are available in India, including:

Pattern Mark: Characterized by a distinct pattern capable of identifying products or services originating from a specific source, distinguishing them from others. An example is the iconic Louis Vuitton checkerboard pattern.

Label Trademark: Protects the label or packaging of a product and its trade dress, ensuring the safeguarding of the entire packaging or label unique to a business, serving as a recogniser or identifier of a brand. Coca-Cola is a notable brand that has trademarked its label.

3D Trademark: A non-conventional trademark utilizing the three-dimensional shape of a product or its container to achieve distinction in the marketplace. It must meet the requirements outlined in Section 2(1)(zb), including visual representability and distinguishability from other goods and services. Examples include the form of a Zippo lighter or the curve of a Coca-Cola bottle.

Slogan/Tagline: Creative and distinctive phrases that immediately remind consumers of the product. Trademarked slogans offer exclusive rights for brands to use them in their advertising campaigns. Nike’s “Just Do It” is a notable example of a slogan trademark.

Device Trademark: Visual elements used to create a unique and recognizable representation. These trademarks may incorporate artistic elements such as symbols and wordmarks, and can be a combination of both. The iconic symbol of PUMA serves as a classic example of a device trademark.

Trademark Objections Process

In certain instances, the trademark examiner may identify issues or concerns with the registration of a trademark. These issues can arise from various factors, such as inaccuracies in the online trademark application form, incorrect name or details, the use of deceptive or offensive terms, inadequate information on goods or services, or the presence of an identical or deceptively similar mark.

Upon raising an objection, the register status will indicate as “Objected.” Subsequently, it becomes imperative to file a meticulously prepared response following an analysis of the objection, accompanied by any necessary supporting documents and evidence. The objection response presents an opportunity to reinforce the claim over the mark and instill a sense of urgency.

If the response garners acceptance, the application proceeds for further processing, including brand registration and publication in the Trademark Journal. Conversely, if the response is not accepted or if additional clarifications are requested by the examiner, a trademark hearing may be scheduled, with notification provided through a formal notice.

Typically, this process spans 2-4 months from the initial objection. Upon completion, while approval is not guaranteed, the likelihood of it is considerably enhanced.

Trademark Opposition Process

Contrary to trademark objections, a trademark opposition constitutes a legal proceeding wherein one party seeks to prevent the granting of a trademark application. Typically initiated by third parties who perceive potential implications for their own trademarks, a trademark opposition is formally filed in writing, in the form of a notice, with the trademark examiner.

Upon receiving the opposition notice, if the examiner discerns any validity to the opposition, they are obligated to transmit the notice to the applicant. Subsequently, the applicant is required to submit a counter statement to the Registrar within a period of 2 months.

Should the Registrar find that the counter statement adequately addresses the opposition, they may opt to dismiss the opposition. Conversely, if the Registrar deems further evaluation necessary, they may convene a hearing wherein both parties present their respective cases. Following the hearing, the Registrar will render a decision regarding the validity of either the application or the opposition.

It’s noteworthy that this ruling is subject to appeal before the Intellectual Property Appellate Board within a timeframe of 3 months from its public announcement.

Required Documents for Online Trademark Registration in India:

Image of the trademark.
Power of Attorney (drafted by the applicant).
User affidavit (if the applicant is a prior user of the trademark).
TM-A form (drafted by the applicant).
Applicant’s identification proof along with address verification.

In addition to the documents mentioned above, the following preliminary details are necessary to initiate online trademark registration in India:

Applicant’s name: The name of the individual, business, or organization applying for trademark registration.
Business type: Specify the type of business entity, such as private limited company, partnership, MSME, startup, or sole proprietorship.
Business objectives: Provide an overview of the company’s nature of business and operations under the trademark.
Name of Brand/Logo/Slogan: Clearly state the name, logo, or slogan intended for trademark registration.
Registration address: Furnish the official address of the organization submitting the trademark application.
Prior user date: If the applicant has been using the brand name before the trademark application date, provide this information along with supporting documents to strengthen the case.

Trademark Symbols and Their Uses

There are three primary symbols used for trademarks, each serving a distinct purpose:

R Symbol: The “®” symbol signifies that the trademark is registered, providing the highest level of protection available. Once a trademark is registered and granted the “®” symbol, it is protected from unauthorized use, and others cannot copy it.

™ Symbol: The “™” symbol is used while awaiting the review of a trademark application by the Registrar. It indicates that the user is claiming rights to the mark, thereby potentially preventing others from using it. Furthermore, using the “™” symbol may grant common law trademark rights.

SM Symbol: The “SM” symbol denotes a service mark, signaling the assertion of rights in the mark, particularly in connection with services such as banking or legal services, rather than physical goods. Similar to the “™” symbol, having an “SM” symbol does not automatically ensure legal protection for the mark under trademark laws. Moreover, the registration status of a service mark does not impact the authorization to use the “SM” symbol.

Why Trademarkwala?

Comprehensive TM Directory Search: We conduct an exhaustive search of the trademark directory to ensure the availability of your desired trademark.
Expertly Prepared Authorization Letter: Our team prepares the necessary authorization letter, allowing us to file for trademark registration on your behalf, streamlining the process for you.
Guidance on Applicable Classes: Our experts offer guidance on selecting the appropriate trademark classes under which to apply, ensuring accurate classification of your goods or services.
Efficient Application Filing: We handle the entire process of filling and applying with the Registrar, ensuring all necessary documentation is submitted correctly and promptly.
Ongoing Updates: We keep you informed throughout the trademark registration process, providing regular updates until the process is complete, giving you peace of mind.
Dedicated Support: Our team provides top-notch support throughout the online trademark registration process, addressing all your queries and concerns promptly and efficiently.