Trademarks Filing

Overview:

Trademark Registration  is the legal protection offered to the original owners of the trademark, recognizing their exclusive ownership of the entity and use in the market. The idea behind a trademark is to promote its quality and create an association between the trademark or brand and its owner.

Trademark registration can be done for business names, brands, logos, tagline, sound, smell, and a lot more. All you have to do is to create something unique and distinguishable and get the mark registered. The protective cover for the trademarks is available only when the trademark is registered.

Registration of trademark:

Registration of trademarks is not mandatory in India. It is although advised or recommended to register the mark to ensure that you are able to avail the statutory benefits conferred upon the registered marks. To ensure legal protection and claim statutory rights, the marks have to be registered with the trademark registry.

Benefits of trademark registration:

Confers Exclusive Rights:

A registered trademark owner gets exclusive rights over the mark and that ensures that no one apart from the owner can use the registered mark or any mark which is deceptively similar to the registered mark. 

Builds trust and Goodwill: 

With registered trademark comes a huge loyal customer base as it attracts the customers to the brand and retains them. It builds trust and goodwill of the business and is definitely an asset to the business.

Differentiates Product from the competitors: 

Unique brands and trademarks distinguish your product from your competitor’s products. It acts as a differentiation factor for the products. It avoids confusion in the minds of the public with respect to brands, reputation and goodwill of the business.

Identify product quality: 

Having a trademark for the brand will directly imply that the product is of top most quality and that will help attract new customers.

Creation of Asset: Registration of Trademark 

creates an intangible asset i.e. Intellectual Property for an organization. Also, the Trademark is an intangible asset which gives the advantage to the organization.

Protection against infringement: 

You can sue anyone who tries to infringe your mark. It gives your mark legal protection from unauthorized usage or undue third party advantage.

Protection for 10 Years at low cost: 

Once registered you get the protection for 10 long years and you pay a minimum amount. It basically means less investment and more benefit. Also, it can be renewed before the expiry of 10 years and renewal fees are also very affordable. 

Global Trademark Registration:

If someone wants to register the trademark abroad, the trademark registered in India can be used as proof of registration.

Prerequisites for trademark application filing

Guide to select a good trademark or brand name for registration in India:

  • Easy to spell, pronounce and remember. 
  • Easy to grasp and communicate.
  • It should coined word to accord better protection
  • The mark should be arbitrary to the goods or services
  • The mark should not be related to the goods and services for which the registration is sought.
  • It should be original and not copied or taken from someone.
  • It should not be similar/same to the existing trademark.
  • The mark should not be prohibited under any statutory legislation.
  • The mark should not be deceptive or confusingly similar to the existing mark.
  • The mark should not be laudatory. 
  • It should not be obscene, derogatory, defamatory or should not hurt the religion or moral sentiments of the people.

Consider

Example

Avoid

Example

Coined terms

Infosys IT Solutions

Descriptive terms

Information System IT Solutions

Fanciful terms

KODAK

Generic terms

Quickprint

Arbitrary terms

Apple

Surnames

Jain Enterprise

Suggestive marks

Burger King

Deceptively confusing marks

Burger Queen

Animal or plant names

Jaguar

Letter acronyms  numbers

ABC Corporation

Terms referring to action or experience

 

Superlative or laudatory words

 

Who are eligible to file trademark application in India:

  • Any person or entity claiming to be the proprietor of the mark can file the trademark application for the brand.

  • The said trademark application can also be filed through trademark agent- individual lawyer or law firm registered with the Indian Trademark registry.

  • Foreign applicants (Individuals) can file for the trademark registration in India and their application will be given the same recognition as if the application was filed by the Indian application. Being a signatory to TRIPS, Indian Laws recognise and respect trans-bound reputation.

  • In case of foreign entity- the application can be filed through the trademark agent if the said foreign entity doesn’t have their principle place of business in India. In such cases, the appropriate jurisdiction will be based on the address of the attorney.

Categories of trademark that can be filed in India:

The following types of trademarks can be filed or registered as per the Indian Trademark Act, 1999 in India:

  • Word Marks
  • Device Marks
  • Letters
  • Slogans
  • Taglines
  • Numeric
  • Suffixes and Prefixes 
  • Shape of goods
  • Smell
  • Sound
  • Combination of colours
  • Labels
  • 3-d marks

Jurisdiction of trademark application filing:

A proprietor while filing an application for registration of trademark has to ensure that the application is filed with the appropriate trademark registry. At present, there are five trademark offices- Mumbai, Chennai, Delhi, Kolkata and Ahmedabad.

How to select the Jurisdiction:

States Jurisdiction
The states of Andhra Pradesh and Telangana, Kerala, Tamil Nadu, Karnataka and Union Territory of Pondicherry and Lakshadweep Island Chennai
The states of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Union Territory of Delhi and Chandigarh New Delhi
The states of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, Andaman & Nicobar Island Kolkata
The states of Gujarat and Rajasthan and Union Territory of Daman, Diu, Dadra and Nagar Haveli Ahmedabad
State of Maharashtra, Madhya Pradesh and Goa Mumbai
Foreign Entities

Principal place of Trademark Attorney

Note: The jurisdiction of a trademark application cannot be transferred. Once an application is filed with the Indian Trademark Registry, the jurisdiction as allotted as per the place of business of the applicant or the attorney shall remain the same for the lifetime.

Particulars to be mentioned in trademark application:

  • Details Of The Applicant
  • Nature of the applicant
  • Details Of The Mark
  • Class Of The Goods Or Services
  • Description Of The Mark
  • Details Of The Attorney
  • User Claim If Any
  • Date Of Filing Of The Application
  • Correspondence Of The Applicant
  • Language of the mark
  • Translations,if required
  • Address of service
  • Jurisdiction of the applicant
  • Conditions or disclaimer,if any
  • Associated trademark
  • Convention details, if any

Prior User Claims:

If prior use of the mark is to be claimed, then the applicant is required to file a statement of use in the form of an affidavit along with the documentary or supporting evidence of such use. It is not mandatory or compulsory to use the trademark in goods and services before filing the application. It is a discretionary benefit given to those applicants who have been using the mark.

Documents required for trademark application

  • Identity and Address Proof of the Applicant – Aadhaar or Pan Card
  • Incorporation Proof – Partnership Deed, Incorporation Certificate
  • Udhayam Aadhar registration
  • Passport- if the applicant is a Foreign National
  • In case of device mark - Soft Copy of the logo, preferably in black & white (Optional). In jpeg or png format
  • Translation of the word or device, if the mark is not in English Language
  • User Affidavit, if the applicant wishes to claim prior use
  • Power of Attorney

Categories of Eligible Applicants for Trademark Registration:

Any person or entity claiming to be the proprietor of the mark can file the trademark application for the brand. The said trademark application can also be filed through trademark agent- individual lawyer or law firm registered with the Indian Trademark registry. List of categories of Applicants are given below:

  • Sole Proprietorship
  • Limited Liability partnership
  • Public Limited Company
  • Private Limited Company
  • Partnership Firm
  • Individuals
  • Trust
  • Other Legal Entities

Comprehensive E-filing of the Trademark Application:

Understanding the difficulties of manual filing and adapting to the virtual world of services, the Indian trademark registry has introduced an online portal of comprehensive e-filing to enable online filing of trademark applications along with the added facilities of uploading the documents and digital signature.

All you need to access the e-filing portal is a login id and password, with a class 3 digital signature to sign all the required forms and documents. Making the filing process less cumbersome and encouraging more of online filing, the government has been smart enough to provide a 10% price reduction on fees compared to manual filing. This step has enabled India to combat digital technology and shows that India is now marching towards technology based services.

The Next Step:

After the application is filed with the appropriate registry, the application is examined for all the preliminary objections based on which examination report is issued by the registry. Upon receiving the examination report, the concerned objections have to be addressed in the reply to the examination report. The reply has to be filed within 30 days from the date of receiving the examination report.

If the given reply to the examination report is considered to be allowable and satisfactory, the mark is accepted and advertised in the journal. The third-party has the time limit of 4 months from the date of advertisement to raise oppositions. If no oppositions are raised, the trademark is registered and a registration certificate is issued.

It takes about 12-18 months to get a mark registered and the said registration is valid for 10 years from the date of registration, after which renewal application has to be filed.

Requirements to Register a Trademark Online

In order to register your trademark with us, please click the link below. You can also get in touch with us and our trademark expert will guide you through the process.

Click Here to Apply Trademark Online