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Trademark Registration

Step 1 - Conducting a Trademark Search
The first step is conducting a trademark search so as to ensure that the logo or name intended to be registered is not identical or similar to an existing logo or name. This is helpful in reducing or eliminating the chances of opposition at a later stage, once the application for registration is filed. No search is fool-proof – it is always possible that an entity whose name did not show in search results to successfully oppose an application on the ground that his brand name is similar. However, a well-conducted trademark search before filing the application helps in minimizing the chances of such opposition.
There are two kinds of search – online and offline. An online trademark search can be conducted for free on the website of the Trademarks Registry (TM Registry).[1] A search on the TM Registry will show results of any identical or phonetically similar trademarks that are registered (or in respect of which applications are pending). It will not show unregistered marks.
In addition to the search on the TM Registry, applicants it is advisable to conduct some general searches on the internet to find out if similar names are used in the market for their products/ services, before deciding which name they wish to register.
Some businesses engage a lawyer (who has experience of registering trademarks and conducting searches) to conduct a trademark search. A Power of Attorney must be executed in favour of the lawyer, authorizing him to conduct the trademark search. The business should ensure that the lawyer who is engaged understands the nature of the industry business and uses the correct key words for the searches.
Another way to conduct a search is by filing Form TM 54 at the Trademark Registry office with a fee of INR 500 for every trademark name to be searched.
Step 2 - Filing application for registration of trademark
Applicants: Any person (i.e. an individual, a partnership firm or a corporate entity such as a company, an LLP, etc.) which claims to be the owner of a trademark can apply for the registration of its mark for goods as well services. For early stage businesses, registering the trademark in the name of the business helps in distinguishing the property of the business from that of its owners.
Sometimes, founders register trademarks in their own names. This practice adds a commercial risk for the business – legally speaking, the use of the mark by the business is only permitted till the founder which owns the mark consents to it. This can be a problem if there are disputes amongst the founders, or if outsiders (e.g. investors) are sought in the business. If any trademarks of the business are registered under a founder’s name, investors typically require such a founder to execute an assignment agreement in favour of the company as a condition precedent to an investment. If a company has not been formed, the founding promoter(s) may jointly apply in their individual names for the trademark, which can be subsequently assigned in the company’s favour.

Major types of marks: A products company can apply for a trademark, while a service business will be eligible to apply for a service mark. Advertising, business management, business administration, office functions, insurance, financial affairs, education, telecommunication, transport, legal services, computer programming, etc. are service businesses.

In certain cases, marks used by a business may be very similar to each other, in terms of their essential characteristics. For example – Chicken McGrill or Chicken Mc Nuggets, Mc Chicken, etc. have very similar characteristics – they all have the unique expression ‘Mc’ applied to common English words such as ‘grill’, ‘chicken’ and ‘nuggets’. Although these marks are substantially similar to one another and would not have otherwise been capable of being registered independently, trademark law permits them to be registered as series marks. A single application can be filed for their registration, which makes the process more convenient.

How are the marks in a series different from one another?

Each mark in a series applies to a different product.

Application formats
The application (for trademarks and service marks) must be made in the prescribed format (Form TM 1) under the Trademarks Rules, in respect of the appropriate class to which the goods/ services pertain. Earlier, the 4th Schedule of Trademark Rules, 2002 listed out the different classes of goods and services for which trademark applications can be obtained.  Classes 35 to 42 are used for service marks. However, the Trademark Rules were amended in 2012 to provide that the classification of goods and services for the purpose of trademarks will be the same as the latest version of the Nice Classification (named after a place in France, pronounced ‘niece’), which is available on this link. This is a standardized classification system applicable internationally, as per the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, 1957.
The application must be filed by the applicant or his authorized agent (the agent must be a legal practitioner or registered trademark agent).
The simplest kind of application would be an application to register a trade mark for a specification of goods or services included in any one class, which is required to be made in Form TM-1. An application for trademark registration can also be made under more than one class head, if the goods/ services in respect of which trademark is applied for, are within the ambit of different classes in Form TM-51. The application for a series trademark must be made in Form TM-8.
The application must be filed with the appropriate office of the Trademark Registry (as of October 2012, there are five registry offices as per the official website of the Registrar of Trade Marks, listed in Annexure III). If an entity carries out business from multiple locations in India, the office which will have jurisdiction will be the principal place of the applicant’s business. If the principal place of business is outside India, the application can be filed in the Trademark Office having jurisdiction where the office of the attorney appointed to make the filing is located.

Application Fee: The application fee payable (as of October 2012) is INR 3500 per word or phrase per class. So, if a brand name and a tagline or slogan are both sought to be protected under two classes, the government fee payable would be 3500 X 4 = INR 14000.

In addition, a trademark agent or a lawyer typically charges between INR 1000 to INR 3000 per mark per class. For example, cost of filing for a word mark and a label or graphic mark (for one class) will be computed as follows - Government charges: 3500 X 2 = INR 7000, Lawyer’s charges: INR 1000 – 3000. The total cost of filing will be approximately INR 8000 to 11,000.

Step 3 - Examination of the application

After filing the application, the Trademarks Registry conducts a search in its database to check if a similar mark already exists in respect of similar products or services.
A trademark application goes through two main types of review. First, the Trademark Registry reviews the application to determine if it meets filing requirements – this is essentially a clerical process to check if the application is filed in three copies, that a graphical representation is supplied (in case of a pictorial mark) and that applicable filing fees have been paid, etc.
Next, the application is forwarded to a trademark examiner, who reviews the application to determine whether it complies with all applicable rules. This process involves exercise of some level of discretion by the examiner. The examiner conducts a search for conflicting marks, examines the written application, drawings and any other specimens.
If the examiner has no objections with the application, the application is published in accordance with Step 4.
In case he is of the opinion that a mark cannot be registered under Indian law, he issues an ‘Examination Report’ explaining substantive reasons or any technical or procedural problems with the application (within 3 months to 1 year of the receipt of the application).
The applicant can file a response within 1 month to an Examination Report. The applicant will also be given an opportunity for presenting his case in person before his application is rejected.
Step 4 - Publication of the application
Where the Registrar is satisfied with the reply, the application will proceed to be advertised in the Trademarks Journal, as soon as possible, and within a maximum period of 6 months from the acceptance of the application.
Step 5 – Opposition process
After the application is published any person who already has a similar brand name (irrespective of whether it is registered as a trademark) has an opportunity to oppose the application by filing a notice of opposition in Form TM-5.
If no opposition is received in 4 months, the trademark is granted registration. If an opposition has been received, an elaborate opposition process is required to be followed under Indian trademark law, which can take upto one and a half to two years. It involves numerous communications between the objector and the applicant. The process is described in detail in Annexure II.
If no objection is filed, or if the Registrar dismisses the objection, the Registrar issues a registration certificate to the applicant and makes an entry in the Trademarks Register.
  1. What can you do if a trademark application is rejected? The decision of the Trademark Registry granting or refusing a trademark, or accepting/ rejecting an opposition to the trademark is appealable within 90 days to the Intellectual Property Appellate Board.
  1. Indian trademark law allows filing of a trademark application in India on an ‘intent-to-use’ basis. However the registered proprietor of the trademark in India has to commence use of the mark within 5 years and 3 months of the date of registration. Otherwise the registered trademark is open to invalidation proceedings.
  1. Opposition process is important for businesses because it prevents other entities  from acquiring  a  trademark  in  respect  of  an  already  existing  brand  name.  An opposition can be filed even if the opposing entity has an unregistered brand name. However, a business which hasn’t registered its brand name will be required to provide much higher amount of evidence to establish that its brand is distinctive and is identified with its offering by the market. It is a useful legal tool to avoid risk of brand dilution for company managers, strategists and advisors.
  1. Validity: A trademark is valid for 10 years. It is renewable for a period of 10 years at a time, before the expiry of the trademark. However, note that a business must keep using the trademark, as non-use of trademark for 5 years continuously is a ground for cancellation of the trademark. Currently, renewal fees are INR 5000 per mark.
  1. Fast-track registration procedure
An applicant may apply for an expedited examination procedure for the scrutiny of his trademark application, after providing reasons as to why such procedure is necessary. Expedited scrutiny is not a right, but may be allowed depending on the satisfaction of the Registrar. The procedure requires payment of five times the normal application fee is to be paid for this purpose, which is refunded if the Registrar refuses expedited scrutiny.
  1. The symbol ® can only be used by the proprietor of a trademark. Using the symbol ® unless your mark has been registered in India is punishable with imprisonment of up to 3 years or with fine.

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