Registration of Trademarks under Indian Laws: A Complete Guide

1. Introduction

A Trademark can be said to be a type of intellectual property. It may be a name, word, symbol or any combination which is acquired by any company or organization to highlight the difference between their product and the products of other companies. Trademark can be owned by any individual, business organization or any legal entity. Rules and regulations of trademarks are governed by The Trade Marks Act of 1999, The Trade Marks Rules of 2002, and The Trade Marks Amendment Act of 2010. 

2. Meaning of Trademark

Trademark is a graphical mark which represents and consists of numerals, words, symbols or combination of colors used for distinguishing goods and service belonging to one person from that of another person. Trademarks are also sometimes called as brand name or brand logos or trade name. Goods or services are sold in the market under the registered trade mark or the trade mark is attached to the said goods or services as a business identifier. For example, Xerox is the trade mark for a photocopying machines and apple is trade mark for apple computers.

Over the period of time trademarks have acquired considerable significance especially in the business world due to their inherent quality of being identifiers of business, products and services. Trademarks indicate source of origin and help in building a brand name and value to which the ordinary consumer associates with.

3. Types of Trademarks:

Under the Indian Trademark law the following are the types of trademarks that can be registered:

1. Product trademarks: These are those that are affixed to identify physical goods or products.
2. Service trademarks: These are used to identify the services of an organization, such as the trademark for a broadcasting service, food delivery service, retail outlets etc. They are used in advertising for services.
3. Certification trademarks: These are marks certifying that the goods or services in respect of which they are used, are of a particular origin, material, the method of manufacture, the quality or other specific features, which are certified by the proprietor of such certification trademark.
4. Collective trademarks: These trademarks are registered in the name of groups, associations or other organizations so that the members of the group in their commercial activities can indicate their membership in the group.

4. What can be registered as Trademark

• An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.
• Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark.
• The right to proprietorship of a trade mark may be acquired by either registration under the Legislation or by use in relation to particular goods or service.
• Letters or numerals or any combination thereof.
• Marks constituting a 3- dimensional sign.
• Shape of goods or their packaging
• Sound marks
• Devices, including fancy devices or symbols
• Monograms
• Combination of colors or even a single color in combination with a word or device

5. Registration of Trademark

Registration of trademarks is a very important thing for any organisation. Working hard to develop your product or service, then seeing another organization(s) using the same brand name or logo and robbing you of your hard earned brand reputation is not acceptable. As a result, registration of trademarks becomes really important for any firm, be it a profit motive organization or a non-profit organization. In this article we would see the various aspects of registration of trademarks in India, including process of registration of trademarks in India, conditions for registration of trademarks, and online registration of trademarks.

6. Who can apply for Registration of Trademarks

Any person who can show the authority over the trademark can apply for its registration of the mark for goods as well as services. 

1. Any person whose business lies under the Indian jurisdiction can apply for registration of a trademark. 
2. In case, the principal place of business is outside the jurisdiction of India, the lawyer associated with the proprietor present in India can file an application in the trademark office.
3. In the case of a company, anyone can apply the application but it should be in the company’s benefit.

7. Checklist for Trademarks in India

In India, a mark (for business, product or service identification) can be registered as a trade mark by any person who may wish to register the said mark as a trade mark. This mark is required to fulfill the following criteria as prescribed by the said Act to be categorized as a trade mark. The mark is required to be:

• Distinctive in character that is the mark is required to be distinctive and unique in character.
• Does not indicate any quality or describes the goods for which mark is being used.
• Does not contain any word that is commonly used and is part of normal day to day language.
• Is not similar to a well-known trade mark.
• Is not similar to a registered trade mark.
• Not causing confusion and deception in the minds of ordinary consumers regarding the source of origin.
• To contain any symbol or word that is prohibited under the Emblem and Names (Prevention of Improper Use) Act, 1950.
• The mark should not contain shape of goods or shape that is by virtue of the nature of goods or a shape that is necessary to obtain a technical result or adds substantial value to goods.

The mark if fulfills the above criteria, then it shall be registered as a trade mark.

8. Process of Registration of Trademark in India

1. Trademark Search:

The first and foremost step in the registration process of trademarks is obviously to conduct exhaustive research for similar trademarks, if any. Only having a unique idea in your mind regarding your trademark is not a good enough reason to not conduct trademark research, because a similar trademark may be present there for another business organization. Trademark search helps us to know if there are similar trademarks available and it gives a fair picture of where your trademark stands, sometimes. It also helps in avoiding trademark litigation and thus saves a lot of time and money spending.

2. Selection of trademark agent:

In India, trademark application can be filed by only the proprietors. If any proprietor is not present there, the right holder must file the application through an attorney or agent. Normally, the agent takes due care of all the responsibilities like searching, filing, preparing the documents, and prosecution of the trademark.

3. Filing Trademark Application in India:

The first step to file trademark application is to file a form of trademark application at the Trademark Office, India. Trademark offices are located at Delhi, Chennai, Mumbai, Kolkata in India. Nowadays, trademark application filing is mostly done online. Once the application is filed, an official receipt is immediately issued for future reference. Following conditions must be fulfilled for filing application for registration of trademark:

1. The name, address and nationality of the applicant. If the applicant is a partnership firm, the names of all the partners. Also mention whether any minor is a partner.
2. If the applicant is a company, the country or state of incorporation.
3. A list of goods and/or services for which registration is required.
4. Soft copy of the trademark to be registered.
5. If the mark contains or consists of non-English words, a translation of those words into English is required.
6. If the application is to claim priority from an earlier filed convention application, details of that application are also required (application number, filing date, country and goods/services). A certified priority document or its duly notarized copy is to be submitted. If the certificate is not in English, a certified/notarized English translation is also required. If it is not readily available, the application can be filed based on the basic application number, date of the application and country of the application. A copy of the priority document can be submitted within 1 month from the filing date of the application.
7. Date of first use of the trademark in India, if at all used.
8. Power of attorney simply signed by the applicant (no legalization or notarization is required). For Indian clients, power of attorney to be executed in 100 Rs. stamp paper and signed by the applicant. The power of attorney is not required at the time of lodging the application and can be submitted later with no additional cost.

4. Trademark Examination:

After a trademark application is filed, it is inspected by the examiner for any discrepancies. The examination of the trademark application may take around 12-18 months of time. The examiner might accept the trademark absolutely, conditionally or he may also object if some provisions do not comply. If the trademark is accepted unconditionally, then it gets published in the Trademark Journal. If not accepted unconditionally, the conditions must be fulfilled or the objections would be mentioned in the examination report and one month would be given to fulfill the conditions or response to the objections. Once such a response is accepted, the trademark gets published in the Trademark Journal. If the response is not accepted, one can request a hearing. If in the hearing, the examiner feels that the trademark should be allowed registration, it proceeds for publication in the Trademark Journal.

5. Trademark Publication:

This step of publication is incorporated in the trademark registration procedure so that anyone who objects to the registering of the trademark has the opportunity to oppose the same. If, after 3-4 months from publication there is no opposition, the trademark proceeds for registration. In case there is opposition; there is a fair hearing and decisions are given by the Registrar.

6. Registration Certificate:

Once the application gets approved for trademark registration, and subsequently gets published in Trademark Journal, a registration certificate under the seal of the Trademark office is issued to the proprietor.

References

1. blog.ipleaders.in 
2. www.lrswami.com
3. www.ipindia.nic.in
4. madaan.com
5. Wikipedia

Questions

1. What is a trademark?
2. What are the different types of the trademarks?
3. What is the procedure of registration of trademarks in India?
4. What all can be registered as trademarks?
5. What are the conditions which must be fulfilled in order to file application of trademark registration?