INTRODUCTION

In recent years, the Procedure for Registration of Trade Marks in India has witnessed a profound transformation, primarily catalyzed by the introduction of the Trade Mark Rules, 2017. These regulatory changes have ushered in a new era of trademark prosecution, characterized by heightened stringency and streamlined processes, bringing notable benefits to both applicants and the Intellectual Property Office.

Foremost among these changes is the introduction of expedited examinations for trademark filings. This significant shift has drastically reduced the waiting period for applicants to receive examination reports, leading to quicker feedback and a more efficient trademark registration process. This, in turn, empowers businesses to safeguard their brands promptly, fostering an environment of innovation and healthy competition.

Another pivotal change is the increased emphasis on online filings. The Trade Mark Rules, 2017, have embraced the digital age by promoting and facilitating the use of online platforms for submitting trademark applications. This digital transition not only enhances convenience but also reduces the environmental footprint associated with paper-based filings. Furthermore, it enables applicants from around the world to easily engage in the trademark registration process.

The simplification of paperwork has been a welcomed change, thanks to the reduced and streamlined number of forms required for various trademark procedures. This has made the application process more user-friendly and less prone to errors, aligning seamlessly with the government’s broader Digital India initiative.

Additionally, the new rules have recognized email as a valid form of service and official communication. This acknowledgment has accelerated communication between trademark applicants and the Intellectual Property Office, reducing reliance on traditional postal services and bolstering the overall efficiency of the trademark registration system.

Furthermore, trademark applicants now bear greater responsibility for substantiating their user claims. They are mandated to provide evidence alongside a user affidavit, ensuring that trademark registrations are conferred to those who genuinely utilize their marks in commercial activities, thus thwarting opportunistic trademark squatting.

To expedite resolution further, the Trade Mark Rules, 2017, have imposed limitations on the number of adjournments permitted during proceedings, reinforcing the importance of timely dispute resolution. Opposition proceedings, in particular, no longer grant extensions, underscoring the commitment to resolving trademark conflicts promptly and effectively. Similarly, compliances have also been made extremely strict and time bound. Missing even a single compliance such as not filing Counterstatement to a Notice of Opposition, Evidence (either under Rule 45 or 46 of the TM Rules, 2017), replies to examinations, formalities reply/ compliance, etc. results in the abandonment of the proceedings against the person who missed the said compliance.

In conclusion, the evolution of the Procedure for Registration of Trade Marks in India, marked by the Trade Mark Rules, 2017, represents a pivotal step forward. The system is now better equipped to meet the needs of businesses, protect intellectual property rights, and foster an environment of efficiency and accountability.

Moving forward, this blog will provide a comprehensive guide on the fundamentals of trademark filing and registrations. This blog delves into the “How-tos?” relating to trademark filing and registration process in India. In today’s competitive business landscape, where brands are vying for recognition in every industry, trademarks play a pivotal role in establishing a unique identity and safeguarding intellectual property. Whether you’re an entrepreneur launching a new venture, a seasoned business owner looking to protect your brand, or simply someone curious about the intricacies of trademark law, this blog will unravel the essential aspects of trademark filing and registration in a clear and accessible manner. This blog will act as an effective tool to understand the vital steps and considerations that go into securing your trademark rights.

WHAT IS A TRADEMARK?

A trademark is a distinctive and legally-protected symbol, sign, word, or combination of words, symbols, or designs that identifies and distinguishes the source of goods or services of one entity from those of others. Trademarks serve as valuable assets for businesses by establishing brand recognition, trust, and reputation among consumers. They can take various forms, including:

This flowchart helps to have a comprehensive understanding of the different types of Trademarks which are registrable in India. The flowchart also briefly describes the meaning of these types of trademarks.
Types of Trademarks in India

Word Marks: Trademarks composed of words, letters, or numerals, such as brand names or slogans. Example: Nestle, Maruti, Dell.

Logo/Device Marks: Trademarks consisting of unique and recognizable graphical elements or symbols. Ex: The artistic work of half bitten apple as the logo of the Tech company Apple.inc.

Examples of Logo/Device Trade Marks

Combination Marks: Trademarks that incorporate both words and logos, creating a unified brand representation.

Shape of Goods Marks: Trademarks that protect the three-dimensional shape of a product or its packaging. Ex: The unique shape of a Pepsi glass bottle etc.

Example of Shape of Goods Trademark

Colour Marks: Trademarks that protect specific colours or colour combinations used in a distinctive manner. Example: Coca-Cola Red, Tiffany Blue, Cadbury Purple etc.

Certification Marks: Certification marks are used to certify the quality, origin, or other characteristics of goods or services, often administered by a certifying authority or organization.

Collective Marks: Collective Marks are used to distinguish a collection of people from someone else. These are often used by organizations or associations of professionals such as Chartered Accountants to distinguish their class from someone else.

Non-conventional Marks: Apart from the foregoing, there are certain other unconventional trademarks including but not limited to Sound Marks, Smell Marks, Hologram Mark, Motion Mark, Taste Marks, Trade Dress etc.

*While Service Marks are often considered as a different type of trademark which are exclusively used in relation to services, it is imperative to note that a Trade Mark and a Service mark is one and the same thing. A Trade Mark, by default includes all the service marks and no statute differentiates between a Trade Mark and a Service Mark.*

WHAT ARE THE BENEFITS OF TRADEMARK REGISTRATION?

Registering a trademark in India provides legal protection and exclusive rights to use the mark for your goods or services. It helps prevent others from using a similar mark, which can protect your brand and reputation. Registration of trademark will not only ensure the protection of one’s rights, but also hail several advantages namelyBenefits of Obtaining a Trade Mark Registration

• Brand Identification: Trademarks help consumers recognize and associate products or services with a specific company or source.
• Brand Protection: Trademarks provide legal protection against unauthorized use, imitation, or infringement by others, helping to safeguard a brand’s integrity and reputation.
• Marketing and Branding: Trademarks are powerful marketing tools that allow businesses to create strong and memorable brand identities.
• Consumer Trust: Familiar trademarks build trust and loyalty among consumers, as they often signify consistent quality and reliability.
• Asset Value: Trademarks can have significant financial value and can be bought, sold, licensed, or used as collateral for loans.

Other benefits of a registered trademark include increased brand promotion and visibility on third-party e-commerce websites like Amazon, Flipkart, etc. Since these sites tend to promote products with trademark registrations more than other marks, they also ensure that brands with registered trademarks appear at the top of search results. Furthermore, having a trademark registration ensures the swift, easy, and immediate listing of a brand’s goods on the websites of third-party intermediaries.

To obtain trademark protection, individuals or businesses chose to apply for trademark registration. Once registered, a trademark owner gains exclusive rights to use the mark in connection with their specified goods or services and can take legal action against others who infringe upon those rights. Trademarks can be renewed indefinitely as long as they continue to be used and maintained according to the legal requirements of the jurisdiction where they are registered.

FAQ’s:

For beginners, the process of trademark application may encounter several questions which have been answered hereinunder,

What is the difference between a wordmark and a logo trademark?
A wordmark consists of words, letters, or numbers, while a logo trademark includes a design element, graphic, or symbol. Both can be registered separately or together as a combined trademark.

How do I check if my desired trademark is available in India?
You can perform a trademark search on the official website of the Intellectual Property India (IPI) or hire a trademark attorney to conduct a comprehensive search. https://ipindia.gov.in. Visit the said link-Trade Marks-Related Links-Public Search.

Stepwise guide to conduct Trade Mark Search

How to I determine the appropriate class for my trademark?
To determine the appropriate trademark class for your product or service, you need to consider the nature of your business and the goods or services you offer. There are 45 trademark classes in India, divided into two main categories: Classes 1 to 34 cover goods, and Classes 35 to 45 cover services. You may search for the appropriate class of the goods covered by your trademark by conducting a search on https://euipo.europa.eu/ec2/.

What types of trademarks can be registered in India?
Trademarks for goods, services, collective marks, and certification marks can be registered in India. Sound marks and non-conventional trademarks are also registrable.

How long does it take to register a trademark in India?
The registration process can take around 12-18 months or longer, depending on factors such as the backlog at the Trademarks Registry and any objections or oppositions.

Who Can Apply for a Trademark?
Any person, corporation, or limited liability partnership (LLP) is eligible to be an applicant and can submit the trademark registration application. Any individual, company, or LLP mentioned as the applicant on the Trademark Registration form will be recognized as the rightful owner of the trademark upon successful registration.

Can foreign individuals or entities register trademarks in India?
Yes, foreign individuals and entities can register trademarks in India. India follows the principle of “national treatment,” which means that foreigners have the same rights as Indian nationals to register trademarks.

What is the difference between a trademark and a copyright in India?
A trademark is used to protect brands, logos, and symbols that distinguish goods and services, while copyright protects original literary, artistic, and creative works like books, music, and artwork.

What is the validity of a trademark registration in India?
A trademark registration in India is initially valid for ten years from the date of filing and can be renewed indefinitely in successive periods of ten years.

What is the trademark registration process in India?
The process includes filing an application, examination by the Trademarks Registry, publication in the Trademarks Journal, and a 4-month opposition period. If there are no objections or oppositions, the trademark is registered.

Do I need to hire a trademark attorney for registration?
While it’s not mandatory, it is highly recommended to consult with a trademark attorney or agent who can guide you through the process, conduct searches, and ensure your application is in compliance with the law.

What is the cost of trademark registration in India?
The cost varies depending on the type of trademark and the number of classes it falls under. Fees can range from a few thousand to several thousand rupees.

What are the documents required for filing of a trademark registration in India?
You’ll need to provide proof of identity and address for the applicant, such as a copy of a passport, driver’s license, or Aadhar card along with a valid power of attorney if the trademark is being filed by an authorized person on behalf of the applicant. If you’re claiming priority, you will be required to provide a user affidavit along with requisite documentary evidence substantiating the use of the concerned mark since the claimed date of use.

What happens if someone infringes on my registered trademark in India?
If someone uses a trademark that is identical or deceptively similar to your registered trademark, you can take legal action, including sending cease and desist letters or filing a trademark infringement lawsuit.

Can I register a trademark internationally from India?
Yes, you can seek international trademark protection through the Madrid Protocol by filing an application with the Indian Trademarks Office.

Can I transfer or license my registered trademark in India?
Yes, you can transfer or license your trademark to others. These transactions should be recorded with the Trademarks Registry to be legally effective.

Can I make changes to my registered trademark in India?
Yes, you can make changes such as altering the trademark or the list of goods/services covered, but these changes need to be approved by the Trademarks Registry.

Can I use the ™ and ® symbol with my trademark in India
You can use the ™ symbol to indicate your claim to the trademark even before it is officially registered. However, you cannot use the ® symbol until the trademark is registered.

What is the Madrid Protocol, and how does it relate to trademark registration in India?
The Madrid Protocol is an international treaty that allows trademark owners to seek protection in multiple countries with a single application. India is a member of the Madrid Protocol, so you can use this system to extend your trademark protection to other member countries.

Is it possible to register a trademark for a product that has not yet been launched in India?
Yes, you can apply for trademark registration for a product that has not been launched in India yet. It’s important to demonstrate a bona fide intention to use the trademark in commerce in the future.

Can I register a trademark for a domain name in India?
Yes, you can register a trademark for a domain name if it meets the necessary requirements for trademark registration, such as distinctiveness and non-conflict with existing trademarks.

Can I oppose the registration of a trademark if I believe it is similar to my own?
Yes, if you believe that a trademark application is similar to your own registered trademark or if it conflicts with your rights, you can file an opposition within the specified time frame to prevent its registration.

How to check the status of my trademark application?
To check the current status of your trademark application, you may visit https://ipindiaservices.gov.in/eregister/eregister.aspx.

It’s important to note that trademark laws and regulations may change over time, so it’s advisable to consult with a legal professional or the Indian Trademarks Office for the most up-to-date information and guidance on trademark registration in India.

What is the process of obtaining a Trademark Registration?
Trademark registration in India is essential for businesses to protect their brand identity and prevent others from using similar marks. A trademark is a unique symbol, word, logo, or combination thereof that distinguishes your goods or services from others in the market. Trademarks are granted registration under the Trade Marks Act, 1999. The process of trademark registration might seem daunting and complex, thus, this guide will provide you with a basic overview of the trademark filing and registration process in India and to help you better understand the intricacies of the said process.

TRADE MARK REGISTRATION PROCESS OVERVIEW

Process of Obtaining a Trademark Registration in India

1. TM Search Report: Initially, the applicant must conduct a comprehensive trademark search to ensure the uniqueness and distinctiveness of the proposed trademark. This step is vital to prevent potential litigation and save the applicant’s time. To perform this search, visit the official website for trademark registration in India https://ipindiaservices.gov.in.
2. Filing of Trademark Application: All necessary documents are submitted through the IP India Official Website. The applicant can now use the symbol TM alongside their logo or brand name. The application can be processed either online or offline.
3. Vienna Codification: The Registrar of Trademark applies the Vienna classification to the trademark, based on its figurative elements.
4. Formalities Check: After the completion of the foregoing steps, trademarks proceed to the stage of formality check wherein the trademark application along with the accompanying documents undergo a thorough screening process. If any procedural discrepancy is found, a formality check report is issued, which ought to be complied with within one month by removing the requisite discrepancies.
5. Trademark Examination: A Trademark Officer reviews the trademark application for its correctness and issues a trademark examination report if discrepancies found. The examination covers mainly a few aspects such as distinctiveness, descriptiveness, and similarity to prior trademarks. To be eligible for registration, the trademark must be distinctive, non-descriptive, and free of similarity to existing trademarks. If the application violates Section 9 or 11 of the Trademark Act, 1999, the Trademark Officer issues an Examination Report with objections and lists similar brands within the same class.
6. Reply to Examination Report: The applicant or their appointed agent must respond to the examiner’s objections within one month from receiving the Examination Report. Failure to respond within this timeframe may result in the abandonment of the application. If the trademark office finds the request compliant with all necessary provisions, the mark is accepted.
7. Show Cause Hearing: If the reply to the examination report is unsatisfactory, the applicant has the right to attend a hearing. During this hearing, the Examiner may accept, refuse, or conditionally accept the application. If the application is accepted with conditions, the applicant is given one month to fulfil these conditions. Only when the conditions are met, the trademark is published. The applicant can also appeal the decision.
8. Journal Publication: If the application is accepted, the proposed mark is published in the trademark journal for a 4-month period. During this time, the anyone can oppose the trademark application. If no opposition is received within the specified period, the trademark is considered registered.
9. Withdrawal of Acceptance: The registrar can withdraw acceptance of the application after hearing the applicant under Section 19 of the Trade Marks Act, 1999. This typically occurs before trademark registration.
10. Opposition: According to Section 21 of the Trademarks Act, 1999, any person has a 4-month window from the date of trademark advertisement in the TM Journal to file an opposition. Common grounds for opposition include:

• The trademark is similar or identical to an earlier or existing registered trademark.
• The trademark is devoid of distinctive character.
• The trademark is descriptive.
• The trademark registration application is made with bad faith.
• The trademark is customary in the current language and or in the established practices of a business.
• The trademark is likely to deceive the public or cause confusion.
• The trademark is contrary to the law or prevented by law.
• The trademark is prohibited under the Emblem and Names Act, 1950.
• The trademark contains matters that are likely to hurt any class or section of people’s religious feelings etc.

11. Counterstatement and Stages of Evidence: Following the notice of opposition, the next stage involves filing a counterstatement and presenting Evidence in support of Opposition under Rule 45(1), Evidence in Support of Application under rule 46(1), Further Evidence in Reply by the Opponent under Rule 47 along with any additional Evidence under rule 48 of the TM Rules, 2017.

12. Hearing with Third-Party (if any): After completing all evidence stages, a hearing is scheduled with the Trademark Hearing Officer to decide the maintainability of the opposition.

13. Trademark Registration: If there are no oppositions or if any oppositions are set aside, the Trademark Registration Certificate is issued, and the symbol ® can be used alongside the logo or brand name.

14. Renewal: Trademarks are initially valid for 10 years. After this period, they can be renewed. Common reasons for filing for rectification include non-usage for over 5 years, failure to renew, changes in the trademark, additions of new goods or services, discrepancies with Section 9 and Section 11 of the Indian Trade Marks Act of 1999, omissions, fraudulent registration, and market confusion etc.

In conclusion, following the above process ensures statutory protection for the trademark. While it’s not mandatory, it is highly recommended to consult with a trademark attorney or agent who can guide you through the process, conduct searches, and ensure your application is in compliance with the law.

Author
1. Swati Agrawal

Note: The aforesaid article is merely for informative purposes and does not constitute legal advice in any manner.

Link to J.P. Associate’s contact page: https://jpassociates.co.in/contact-us/

Link to Ipindia’s Page: https://www.ipindia.gov.in