Transcript Trademark Registration in India

Procedure and Fees
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If it is a word mark, or if it is a mark containing at least in part a
word, then that word ought to be easy to speak, spell and
remember.
Invented words or coined words that cannot be found in a dictionary
as such form the best trade marks of all, since they can seldom be
used as a generic word for any purpose.
One should always be careful to avoid selection of a geographical
name precisely for the same reason.
It is in the best interest of a person not to select as marks
descriptive or generic names or names that describes quality of a
good such as best, perfect etc., or marks which have become
customary in the current language or in the established practices of
related trade.
The mark should not consist exclusively of the shape of goods which
results from the nature of the goods themselves, or the shape of
goods which necessary to obtain a technical result or the shape
which gives substantial value to the goods.
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The mark should not consist exclusively of the shape of goods which
results from the nature of the goods themselves, or the shape of
goods which necessary to obtain a technical result or the shape
which gives substantial value to the goods.
If the mark is of such a nature as to deceive the public or cause
confusion or contains any matter likely to hurt the religious
susceptibilities of any class of Indian citizens or any scandalous or
obscene matter, it may be refused registration.
An action that will always satisfy the combined tests of both
prudence and sound business sense will be to conduct a thorough
market survey and a search at the Trade Mark Office before seeking
to get a mark registered, so as to know whether similar mark or
marks have already been registered or filed for registration.
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Any name (including personal or surname of the applicant or
predecessor in business or the signature of the person),
which is not unusual for related trade to adopt as a mark.
An invented word or any arbitrary dictionary word or words,
not being directly descriptive of the character or quality of the
goods/service.
Letters or numerals or any combination thereof.
Devices, including fancy devices or symbols
Monograms
Combination of colors or even a single color in combination
with a word or device
Shape of goods or their packaging
Marks constituting a 3- dimensional sign.
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Sound marks when represented in conventional notation or
described in words by being graphically represented.
All of the aforesaid marks have to be sufficient for the
purpose of identification of and distinguishing the goods, in
relation to which they are being used, from other goods.
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As per the provisions of the Trade Marks Act 1999, following
are the types of trademarks that can be registered in India:
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Product trademarks associated with particular good(s).
Service trademarks associated with a particular kind of service
such as insurance, building construction etc.
The Fourth Schedule of Trade Mark Rules, 2002 provides a
comprehensive classification of the different types of
trademarks associated with different goods and services that
can be registered in India.
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Any person who claims to be the proprietor of a trademark used or
proposed to be used by him can apply for the registration of the
mark for goods as well services.
The application for registration has to be made in writing to the
Registrar of Trade Marks and it has to be filed in the office of the
Trade Mark Registry under whose jurisdiction the principal place of
the business of the applicant in India falls. In case the principal
place of business is outside India, then the application can be filed
in the office of the Trade Mark Registry, under whose jurisdiction the
place that has been mentioned in the ‘address for service’ section of
the application (usually office of the lawyer appointed by the person)
is located.
In case of a company about to be formed, anyone may apply for a
trademark registration in his name for subsequent assignment of
the registration in the company's favor.
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The right to use a mark can be exercised either by the registered
proprietor or a registered user or anybody else who has been duly
authorized by the registered proprietor or a registered user.
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The selected mark should be capable of being represented
graphically (that is in the paper form).
It should be capable of distinguishing the goods or services of one
undertaking in relation to which it is being used from those of
others.
It should be used or proposed to be used in relation to goods or
services for the purpose of indicating a connection in the course of
trade between the goods or services and some person having the
right to use the mark with or without revealing identity of that
person.
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Term of registration of a trademark is ten years, which may be
renewed for a further period of ten years on payment of prescribed
renewal fees.
However, non-usage of a registered trademark for a continuous
period of five years is a valid ground for cancellation of registration
of such trademark at the behest of any aggrieved party.
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Under Section 154 of the Trademark Act, 1999, India has declared
certain countries as convention countries (Paris Convention, 1883),
which affords to the citizens of those countries similar privileges as
granted to the Indian citizens. A person or company from a
convention country may, within six months of filing an application in
his home country, apply for registration of the trademark in India. If
such a trademark is accepted for registration, such foreign national
will be deemed to have registered his trademark in India, from the
same date on which he or she had filed the application in the home
country.
Where the applications have been made for the registration of
trademark in two or more convention countries, the period of six
months would be reckoned from the date on which the earlier or
earliest of those applications was made.
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Although the recovery of damages for infringement of a trademark
is possible only if the infringement takes place after the date of
filing application for registration with the concerned trademark
office in India, yet the deemed seniority in making application in
home country may entitle the applicant to initiate an action in India
for injunction, delivery of impugned labels and so on.
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No, 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 the challenge of invalidation
proceedings.
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The First Schedule of the Trademark Rule, 2002 prescribes different
procedural forms and necessary amounts of fees required for all
trademark-related transactions, of which some examples have been
given below:
◦ For filing new applications- There are prescribed forms depending on the
nature of application such as Form TM-1, TM-2, TM-3, TM-8, TM-51 etc.
◦ To file a Notice of Opposition to oppose an application published in the
Trade Marks Journal- (FormTM-5).
◦ For Renewal of a Regd. Trademark- (Form TM-12).
◦ Surcharge for belated renewal - (Form -10).
◦ Restoration of removed mark - (Form TM-13).
◦ Application for rectification of a registered trade mark - (Form TM-26).
◦ Legal Certificate - (Form TM-46).
◦ Official search request for trademark - (Form TM-54).
◦ Preliminary advice of the Registrar as to the registrability of a mark (Form TM-55).
◦ Copyright search request and issuance of certificate - (Form TM-60)
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Proprietorship concern: Full name and address of the proprietor and
true copy of identity and address proof.
Partnership concern: Full name and address of all partners and true
copy of related documents.
Company concern: full name and address of all directors and true
copy of related documents.
If one has claimed that the proposed mark is used since before
application in another country, then evidence for such claim has to
be provided.
Label of the proposed Trade Mark (Standard Label size 9cm x 5 cm)
has to be provided.
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The first step is conducting a trademark search so as to ensure that
the logo or name in respect of which you intend to register a
trademark is not identical to an existing logo or name. A
comprehensive search can be conducted through the Trademarks
Registry, although there are other sources (available free or on a
commercial basis, such as Trademark Registration Services) which
can also help you in getting started.
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Note that a trademark can be revoked even after it is granted, if
somebody successfully challenges it on the ground that it is
confusingly similar to an already registered trademark. Hence, it is
advisable to hire a trademark attorney with some experience for
conducting the search, in order to ensure that your business logo or
name is not confusingly similar to an already registered trademark.
This will minimize chances of your trademark being revoked
subsequently, after it has been granted.
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Trademarks Registry
Jurisdiction
Trade Marks Registry, Mumbai.
Intellectual Property Office, Antop
Hill PO, SM Road, Antop Hill,
Mumbai – 400 037
Maharashtra, Madhya Pradesh and
Goa.
Trade Marks Registry, Delhi. Delhi
Intellectual Property Office, Plot
No. 32, Sector 14, Dwarka, New
Delhi – 110 075
Jammu & Kashmir, Punjab,
Haryana, Uttar Pradesh, Himachal
Pradesh, Delhi and Chandigarh.
Trade Marks Registry, Kolkata.
Kolkata Intellectual Property Office,
CP – 2, Sector V, Salt Lake City,
Kolkata – 700 091
Arunachal Pradesh, Assam, Bihar,
Orissa, West Bengal, Manipur,
Mizoram, Meghalaya, Sikkim,
Tripura, Nagaland, Andaman &
Nicobar Islands.
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Trademark Registry
Trade Marks Registry, Chennai.
Intellectual Property Office, GST
Road, Guindy, Chennai – 600 032
Jurisdiction
Andhra Pradesh, Kerala, Tamil
Nadu, Karnataka, Pondicherry,
Lakshadweep.
Trade Marks Registry, Ahmedabad. Gujarat, Rajasthan, Daman, Diu,
Ahmedabad National Chambers,
Dadra and Nagar Haveli.
1st Floor, 15/27, Ashram Road,
Ahmedabad – 380 009
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The application must be made in respect of one or more of the
various categories of goods and services as classified under
Schedule IV of the Trade Marks Rules, 2002. If the application is in
respect of one class, the fee is INR 3500. It is also possible to make
an application for your product under more than one class heads.
However, if the application is in multiple classes, it is more
expensive, the fee being INR 3500 multiplied by the number of
Classes. Hence, one must identify the category/categories under
which you want to apply.
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The application must be in the prescribed format.
For example, 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. In case the goods or services fall within different
classes, a single application can be made, but it must be as specified
in Form TM-51.
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The application must be filed by the applicant or his agent. The
agent must be a legal practitioner or a person registered as a
trademarks agent.
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An applicant may apply for an expedited examination procedure for
the scrutiny of his trademark application, stating reasons as to why
such procedure is necessary. Expedited scrutiny is not a right, but
depends upon the satisfaction of the Registrar. Further, it is more
expensive, requiring payment of five times the normal application
fee is to be paid for this purpose. The fee is refunded if the
expedited scrutiny is refused by the Registrar.
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After the application has been filed, the Trademarks Registry shall
search whether an identical mark or a mark which is deceptively
similar to the mark applied for, already exists, in respect of the
same goods and services or similar goods and services.
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The trademark application shall be published in the Trade Marks
Journal within six months of its acceptance of by the Registrar.
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After this stage, there is an elaborate opposition process in place
under Indian trademark law, which is explained below. The
opposition process is important as it prevents others from acquiring
a trademark in respect of an already existing brand name. For
company managers, strategists and advisors, it is a useful legal tool
to avoid risk of brand dilution, and hence an aspect of legal liability
management. The detailed opposition procedure is at the end of this
post. In short, it is a lengthy and multiple step procedure involving
numerous exchanges between the objector and the applicant.
◦ If no objection is filed, or if the objection is dismissed by the
Registrar, he shall enter the trademark in the register and a
Registration Certificate shall be issued.
◦ The decision of the Trademark Registry is appealable to the
Intellectual Property Appellate Board.
◦ The trademark is valid for ten years, but may be renewed afterward.
(Renewal fees typically range between INR 2500 to INR 5000, except
for certification marks).
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The application may be opposed within three months of application
(which is extendable by a further period of up to one month) by
filing what is known as a notice of opposition, in a prescribed
format, and by paying a fee.
Upon receiving the notice of opposition the applicant may reply with
a counter-statement within two months of receipt (extendable by a
maximum period of one month).
The opponent is required to file evidence within two months of
receipt of the counterstatement (extendable by a maximum period
of one month). If he serves no evidence, his opposition will be
considered abandoned under the law.
If the applicant has filed evidence, the applicant has two months to
file evidence in support of his application (extendable by a
maximum period of one month).
The opponent now has one month the option to file his reply under
the (extendable by a maximum period of one month). After this
stage, no evidence is admissible, except by special permission of the
Registrar.
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The Registrar then gives notice of a hearing within three months of
completion of receiving evidence. The hearing should be after a
period of at least one month of the delivery of notice. Parties that
wish to attend are required to inform the Registrar of their intention.
There is a procedure for seeking an adjournment, in case a party is
unable to attend at the requisite date. This part needs to be carefully
complied with by both parties, especially the applicant, because if
the applicant has not specified his intention to attend the hearing,
and is not present at the adjourned date of hearing, his application
can be deemed to have been abandoned by the Registrar. Similarly,
if the opponent does not specify his intention to attend, and if he is
absent on the date of hearing, his objection may be considered
dismissed. The efforts of the affected party are in vain if the
Registrar dismisses the application or objection, without hearing
them.
Note: Each stage of filing requires a fee prescribed under the Trademarks
Rules to be paid, typically ranging from INR 500 to 2500.
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The exact cost involved in the registration of a trademark will
depend on the following variables:
◦ The number of trademarks one registers – (e.g., the name of the
brand, the company name, the business logo).
◦ The number of classes under which one registers each logo.
◦ The course taken by the opposition process (i.e. the existence of
opposition, number of opponents and the number of replies filed, the
number of one month extensions sought over the maximum period,
for each step of the opposition process).
◦ The amount of lawyer’s fees for the filing process and the trademark
search.
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Nevertheless, here's an approximate estimate If an application is for a single name or logo for goods or services
under one class only, then the application will cost around INR
10,000 as the fee component for application, if one files for a word
mark (that is, comprising of text) and a graphic mark under two
classes.
◦ INR 1000 for a counter-affidavit in reply to an opposition.
◦ INR 5000 to INR 15000 on the lawyer’s fees.
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In addition to this, the trademark search, that is, the first step which
is conducted before filing the application, will cost around INR 500.
Hence, the approximate total cost ought to range between INR
16500 to 26500.
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