Individuals and companies alike start to believe that their company name or brand name is protected when they register their company as per local laws or Indian company law or obtain goods and services tax (GST) number. With this false belief, they fail to apply for trademark registration in India or abroad. Though it is not mandatory to protect the company name or brand name by way of trademark, registration of trademark allows the trademark owner to have an exclusive right to use the trademark and file infringement suits for violation of trademark owner’s rights. Unregistered trademarks provide limited scope for the trademark owner to search for remedies available in common law. Here, we compiled most frequently asked questions to help the trademark owner to understand the trademark registration process in India.
What is trademark?
A trademark protects the name of a business or company, a product and a service as well as slogans and the like. A trademark distinguishes the product or service offered by the company from those its competitors may provide. Customers recognize the brand name and their products associated with the trademark in a crowded market. Trademark prevents competitors from copying, or infringing on, someone else’s work. Over a period of time, the trademark of the company becomes synonymous with company’s offerings, quality and trust in the minds of customers and the general public alike.
What is trademark Registration in India?
Controller General of Patents Designs and Trademarks (CGPDTM), more specifically the Office of the Registrar of Trademarks registers the trademarks in India under Trademark Act, 1999. Trademarks provide the trademark owner the right to sue for damages when infringements of trademarks occur.
What is the procedure for trademark registration in India?
Before we explain the trademark registration process in India, it is important that the trademark owner understands what is trademark class.
In India and most other jurisdictions, the products for which trademarks are registered are categorized using 45 product classes of the International Classification of Goods and Services under the Nice Agreement. Classes 1 to 34 are used for goods and classes 35 to 45 are used for services. The trademark owner can file the trademark application in one or more relevant classes to protect the trademark in those categories.
Following is the list of steps involved in trademark registration process in India. We will explain each of the steps below.
- Apply for a Trademark registration
A trademark search helps to identify if there are any similar trademarks already registered or in pending stage before the trademark office in the applicable trademark class. If no other trademark is similar to the proposed trademark, then the trademark owner can file a trademark application for registering the trademark.
Apply for a Trademark registration:
Any person claiming to be the proprietor or owner of the trademark used or proposed to be used by him can apply for trademark registration in the relevant trademark class. A trademark application can be filed directly at the Trademark Office or through online mode. Applying for trademark online is an easy process and it is advisable for the trademark owner to utilize the online trademark filing facility.
Trademark examiner examines the trademark application approximately one month from the filing date of trademark application to check if it meets the requirements of the Trademarks Act, 1999. Generally, the trademark examiner examines the trademark application to check whether the trademark application meets the requirements provided under Section 9 & 11. Some of the important factors that the examiner examines are:
- Should be distinctive;
- Should not be descriptive;
- Should not be generic;
- Should not be deceptive;
- Should not contain scandalous or obscene matter;
- Should not be the shape of goods which results from the nature of the goods;
- Should not be identical with an earlier trademark i.e., either registered or pending for registration; and
- Should not be a well-known trademark.
If the trademark application meets all requirements of the Trademark Act, then the trademark registry will accept the trademark application for registration. If there are any objections under section 9 or 11, then the trademark registry will issue an examination report stating the reasons for objections. The trademark owner gets one (1) month time to respond to the examination report. If the trademark owner fails to respond to the examination report, then the trademark application is considered as abandoned and trademark owner loses the rights provided under Trademark Law.
After examination, if the trademark examiner accepts the trademark application, then the trademark application gets published or advertised in a Trademark Journal. The purpose of advertising the trademark application in the Trademark Journal is to provide an opportunity to a third party to raise an objection to the registration of the trademark application, if any.
After advertising the trademark application in the Trademark Journal, if any person who believes that a trademark should not be registered may oppose its registration within four (4) months from the date of advertisement. If no third party opposes the registration of trademark application, or if opposed becomes unsuccessful, then the trademark application proceeds for registration. Trademarks Registry of India will issue a trademark certificate in the name of the trademark owner.
Are there any government fees that the trademark owner has to pay? If yes, how much they have to pay to apply for trademark registration?
For an applicant (trademark owner) claiming to be an individual/Start-up/Small Enterprise, the fees for Electronic-Filing i.e., online trademark filing is INR 4500, whereas the fees for physical filing is INR 5000.
For an applicant who is not an individual/Start-up/Small Enterprise, Electronic-Filing i.e., online trademark filing is INR 9000 , whereas the fees for physical filing is INR 10000.
The fee for physical filing is 10% more than fee for online trademark filing as trademark registry encourages more trademark owners to file the trademark application via online mode.
How much time will it take to get trademark registered in India?
If the trademark registry accepts the application for trademark registration without any objection and no third party objects to the trademark registration, the fastest period a trademark owner can get a trademark registration certificate is about 6-7 months from the date of filing application for trademark registration. However, the period may vary. If the trademark application gets objected by trademark registry and/or by any third party, then the trademark registration gets delayed by several months.
Should the trademark owner wait until they get registration certificate to start using the trademark?
No. Immediately after filing the trademark application, trademark registry generates an application number. The trademark owner can start using TM next to the trademark to indicate that the trademark application is under process. After obtaining the trademark registration certificate, the trademark owner can use ® in place of TM to indicate that the trademark registration in India is completed and it is valid for 10 years.
Can trademark owner use the TM symbol next to LOGO or Trademark after they apply for trademark registration?
Yes. The trademark owner can use TM symbol immediately after applying for trademark registration in India. Please read this answer in conjunction with the answer to previous question for better clarity.
Is it mandatory to use trademark symbols TM or ® next to the trademark all the time?
It is not mandatory to use trademark symbols ™ or ® next to the trademark. However using one of the trademark symbols TM and ® signifies that someone claims ownership of the mark, which could make other businesses think twice about “copying” whole or part of trademark owner’s brand name or product name.
I have more questions, whom should I contact?
You can contact a trademark agent or trademark attorney. PatnTech is an Intellectual Property consulting firm and advices trademark owners in trademark registration process in India and other countries. You can write to PatnTech at email@example.com.
Author: Chandrasekhar Raju, Patent and Trademark Attorney
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