It is important to prevent other players in the market to ride free on your goodwill. This can be done by protecting your goodwill and reputation associated with the trademark of your business by getting it registered. It is important to understand the trademark as a concept and how it is important to protect the same, especially at the nascent stage of the business. This is why we have curated a list to assemble all the frequently asked questions on trademark law.
Table of Contents
Q1. What is the step-wise guide for Trade Mark Registration in India?
Ans. Following is the step-wise guide for Trademark Registration in India:
- Step 1: Trade Mark Search:
This step is of utmost importance before filing a trademark application, as it aids the owner in determining whether their trademark is unique and distinctive and whether there exists another trademark that closely resembles the owner’s mark. Merely having a unique brand name in mind does not guarantee that it is not already registered by another business, making the trademark search an essential and unavoidable process. This search can be conducted either through the Trademark Office or via the Online Portal. On the Online Portal, you can select a specific class and search the database accordingly.
- Step 2: Prerequisite Documents: The following are the documents required during Trademark Registration:
- Name of the Applicant whether company or firm name
- Name and DOB of Authorized Signatory
- Name of the Father of Authorized Signatory
- E-mail ID and Contact Number of Authorized Signatory
- Address of Registration
- The legal status of the entity whether proprietorship or firm or Pvt Ltd Co., or OPC or LLP.
- Name of the Trademark
- Image of the Logo
- The description of goods/services to be sold under the proposed Trademark.
- Date of the First Use of the Trademark.
- Step 3: Examination of Trade Mark Application: After the submission of the Trademark Application, the Examiner must submit an examination report which may or may not include any objections that can be absolute, relative or procedural.
- Step 4: Respond to the Examination Report: Within 30 days of receiving the examination report, you must file a reply to assert the arguments in favor of the application and address any objections that may have been raised. This period provides ample opportunity to address objections and resolve any concerns raised during the examination process. If the application is not yet accepted after fulfilling the conditions, then a hearing can be requested. If the examiner believes that the trademark should be registered then, it will be published.
- Step 5: Acceptance and Publication: After a thorough examination, the Trade Mark is published in the Indian Trade Mark journal. The purpose of this advertisement and publication is to invite objections from anyone who may oppose the registration of the Trade Mark, providing a fair opportunity for such opposition. In case of opposition, the applicant is required to present a case justifying why the registration should be granted to them. Upon receiving an opposition, a counter-statement must be filed within two months using Form TM-O.
- In the event of a refusal, the examiner declines to register the Trade Mark.
- If the Trade Mark Registrar approves the application without any objections, a Trade Mark Registration Certificate will be issued, bearing the Trade Mark Registry Seal.
Q2. What does TM signify?
Ans. TM is a symbol used to indicate that the trademark is unregistered, but the mark is being used to promote goods. It can be used for marks for which the registration process has not been initiated, asserting a claim of ownership for the mark.
Q3. What options are available when the Trade Mark Application gets rejected?
Ans. To understand the remedies for the refusal of the application, it is essential to know the grounds on which the Trade Mark Application was rejected. For this purpose, the applicant should request a copy of the grounds for refusal. Once the copy is received, within 30 days of the refusal notice, the applicant can file a review petition.
Section 127 (C) of the Trade Marks Act 1999 empowers the Registrar, on an application made in the prescribed manner, to review their own decision regarding the registration. This review application must be filed in form TM-M within one month from the date of the application or within an additional one month as allowed by the Registry. The review application should be accompanied by a statement setting out the grounds for the review.
The review of the decision is generally considered by the same officer who passed the initial decision. After giving the parties an opportunity for a hearing, the Registrar will then dispose of the review petition, either allowing the trademark to be advertised in the journal or maintaining the refusal.
If the applicant is still unsatisfied with the outcome, they can appeal to the Intellectual Property Division of the High Court.
Q4. What are the types of trademarks in India?
Ans. The types of trademarks in India are as follows:
- Any name that also includes the personal or surname of the individual or the predecessor of the business, which is not unusual for the trade to adopt as a trademark.
- All inventive words or any arbitrary dictionary word or words, that are not directly descriptive of the character or quality of the goods/services.
- Letters or numbers or any combination of the two.
- The right to proprietorship of a trademark can be acquired by either registration of the trademark or by using it for particular goods and services.
- Devices, fancy devices, and symbols.
- Combination of colors and even a single color in combination with a word or device.
- The shape of goods or their packaging
- Marks that constitute a three-dimensional sign
- Sound Marks, represented in a graphical notation
Q5. Can one get a logo, name, and tagline registered under only one application?
Ans. No, you cannot get a name, logo, or tagline registered under a single application, as the Registrar considers each element separately. Therefore, separate applications are required for each of them. For example, even Nike has its logo, name, and tagline registered under different applications.
Q6. How can one protect a logo as a trademark in India?
Ans. A brand name, logo, or trademark is considered intellectual property and plays a crucial role in distinguishing the goods and services of one brand from another. To protect a logo as a trademark in India, it should meet the criteria defined under Section 2 (zb) of the Indian Trade Marks Act, 1999. According to this definition, a trademark must be capable of being represented graphically and should have the ability to distinguish the goods or services of one entity from those of another. It may include various elements like the shape of goods, packaging, or even combinations of colors.
When a trademark is protected, it grants the owner the ability to prevent unauthorized use of their brand and take legal action in cases of trademark infringement. It is essential to understand that trademarks are not limited to brand names or slogans; they also provide protection to the logo itself, including its elements such as the name, fonts, colors, typography, shapes, etc., which may not be protected under copyright laws.
Protecting a logo, especially one with brand equity, is vital for safeguarding the market value of the product and preventing infringement. By obtaining trademark protection, one can establish a strong brand identity and ensure the logo’s uniqueness and exclusivity in the marketplace.
Q7. What are the benefits of Trademark Registration in India?
Ans. Trademark registration offers significant advantages to both businesses and individuals alike. For businesses, it serves as a powerful tool to establish a distinct identity and build a reputable image among clients, enabling the brand to grow and expand. A registered trademark provides legal protection, allowing businesses to safeguard their unique identity from unauthorized use by competitors or counterfeiters.
On the consumer side, trademark law plays a vital role as a consumer protection statute. It benefits individuals by helping them make informed choices and become better consumers. By recognizing and differentiating among various trademarks, consumers can reinforce positive buying experiences by selecting brands they trust and prefer. Moreover, trademarks also enable consumers to avoid bad buying experiences by identifying and steering clear of brands they may have had negative encounters with in the past.
In summary, trademark registration fosters trust, enhances brand recognition, and ultimately creates a positive buying experience for consumers, while simultaneously offering businesses a means to protect their brand’s reputation and exclusive rights.
Q8. Can one apply for Trade Mark Registration on their own while filling up Online Application?
Ans. As per Section 18 (1) of the Trade Marks Act 1999; any person claiming to be the owner of the specific Trade Mark may file the application themselves. The Application can be made to the Registrar of Trade Mark in writing or through online as well. In here, the meaning of the word “person” includes the following entities:
- Hindu Undivided Family (HUF)
- Government Bodies
- Body Corporates
- Two or more individuals
- Private Companies
- Statutory Bodies
- Other entities such as NRIs, Foreign Nationals, Foreign Companies etc.
Henceforth, individuals can register their Trade Marks themselves. Although, this process does not exactly end with the filing alone and the registration of Trade Mark is long as well as challenging process.
Q9. What is meant by “Sent to Vienna Codification” during the trademark registration process?
Ans. It is during the initial stages of the Trade Mark registration process that the status on the Trade Mark Registry website shows as “Send to Vienna Codification“. This is one of the first steps taken for any trademark that comprises any figurative element or logo. This codification is done to facilitate Trade Mark Code for an artwork or logo.
Q10. When can one use a ® symbol?
Ans. The ® symbol is used only when the mark is registered as a Trade Mark. This symbol can only be used only when a certificate of registration has been granted for the Trade Mark.
In conclusion, for comprehensive guidance on trademarks, including registration, maintenance, and robust protection in India and overseas, as well as assistance with other intellectual property matters, individuals can reach out to our firm using the contact information provided in the designated section. Our team of legal experts is readily available to offer their expertise and support in safeguarding and maximizing the value of intellectual property assets.
King Stubb & Kasiva,
Advocates & Attorneys