How to register a trademark in India?
This is one of the many questions I am often asked regarding trademarks whenever I discuss IP law with a group of young budding students, entrepreneurs or startup companies. There are several articles and blogs that answer this question in one way or the other but I hope that this post will be comprehensive enough to answer most of them.
A trademark is any
- word (PEPSI, COCO COLA, PEPSODENT),
- name (RAYMOND VEIL, CHRISTIAN LOUBOUTIN),
- surname (TATA, BATA, BAJAJ),
- signature (LOUIS PHILIPPE),
- letters (BMW, IBM, HDFC),
- numeral (555, 501),
- symbol (MERCEDES BENZ THREE POINTED STAR, ADDIDAS PYRAMID),
- device (AMUL GIRL, PILLSBURY BOY),
- color scheme (PIZZA HUT, DOMINOS),
- packaging (CADBURY’S),
- shape of goods (COCO COLA BOTTLE)
- or any combination thereof that identifies and distinguishes the source of the goods of one party from those of others.
When the mark is used in respect of services then the mark is also commonly referred to as Service Mark. Ex: DHL, HILTON, INFOSYS are service marks. However, since the distinction between goods and services are not always clear, the term trademark is often used to include service marks as well.
What is classification of goods and services or classes?
When you file an application for registration of a trademark you need to mention the list of goods/services for which you intend to use your trademark. India follows an international system of classification called the “Nice Classification” according to which the goods and services are categorized into 45 classes, with goods covered in classes 1 to 35 and services covered under classes 36 to 45.
If the trademark is AMUL the goods for which it is used are “cheeses” and the class will be “29″. Likewise if the trademark is EXPEDIA the services for which it is used are “Online reservations and information regarding travel etc” and the class will be 39.
If you do not know which class or classes your goods or services fall in, please use the Classification search tool euroclass or the list of goods/services as published by the Indian trademark office.
Search the records of the Indian Trademark Office – Online!
Prevention is better than cure. Before you file an application for or consider using your trademark, search the records of the Indian trademark office at http://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx to check if someone has already chosen the same or a similar trademark. You will have to search the exact class of goods and services for which you will be using your trademark. If you see any similar trademarks already on the records of the trademark office, it should raise a red flag! You will now have to carefully analyze each and every trademark and take a call on going forward with the same mark or possibly changing your trademark so that you don’t infringe another’s trademark rights.
Search using Google.
One of the best things that happened in this century– Punch in your trademark at www.google.com and viola! Magic! Merely because a trademark is not filed for registration with the trademark office, does not mean it is available for you to take. In a common law country like India, usage of a trademark gets importance over filing an application/obtaining registration for a trademark. Search using Google and see if anyone is using the trademark you want to adopt. If you see a similar mark do a bit of research to see how much they have used their mark, period of usage, goods or services for which is it used, has the mark gained any reputation etc. More importantly, compare the marks yourself and decide whether your trademark will infringe the rights of the other person. Your few minutes of research will save you from the risk of choosing deceptively similar marks, resulting in lengthy oppositions and infringement action costing time and money.
a. File an application with the trademark office.
Congratulations! You have cleared the first two hurdles. Give yourself a pat on the back for discovering that you are going to have exclusive rights on your trademark, and proceed with filing a trademark application. You can either file a paper application with the Indian Trademark Office (TMO) or file an application online at http://ipindia.nic.in. You will require a digital signature and an Axis/SBI bank account for filing the application online. The official fee is INR.3500 (approx USD 70) per mark/class.
If you are a foreign entity who wants to protect your trademark in India, consider claiming priority.
India is a member to the Paris Convention and signatory to the TRIPS agreement. Hence an application can be filed in India claiming priority from the application filed in a foreign country, provided the foreign application was filed not earlier than 6 months from the date of filing the application in India.
a. Name of the person/organization that will own the rights to the trademark (applicant);
b. Address of the applicant;
c. Nature of business of the applicant; (Ex:Manufacturers, Merchants, Traders, Service Providers)
f. Specification of goods or services;
g. Date of first use of your mark in India;
h.When priority is claimed:
(i) Priority date;
(ii) Priority application number;
a. Application form in duplicate;
b. Representation sheet in duplicate;
c. When priority is claimed:
(i) Certified copy of the priority application.
d. Official fee by way of cheque/demand draft or cash.
Trademark Offices and their Jurisdiction:
There are five trademark offices in India and in which office your application is to be filed depends on your registered office address. If you do not have an address in India then the trademark office is decided on the basis of the address of your legal counsel.
The jurisdiction of each trademark office is as follows:
Mumbai – State of Maharashtra, Madhya Pradesh and Goa
New Delhi – State of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Union Territory of Delhi and Chandigarh
Kolkatta – State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, Andamar & Nicobar Island.
Ahmedabad – State of Gujarat and Rajasthan and Union Territory of Damman, Diu, Dadra and Nagar Haveli
Chennai – State of Andhra Pradesh, Kerala, Tamil Nadu, Karnataka and Union Territory of Pondicherry and Lakshadweep Island.
Once the application is filed the trademark office issues a filing receipt and one copy of the representation sheet stamped with the application number and the filing date as proof of filing the application. You can thereafter see the status of your trademark application online at http://ipindiaservices.gov.in/eregister/viewdetails.aspx using the application number.
b. Examination of your trademark application.
In approximately seven to nine months the trademark office will send you the examination report either citing the objections consisting of absolute or relative grounds or both, or, in the absence of any objections allowing the application to be published in the upcoming trademarks journal for a third party to raise objections to the registration. The time to respond to the examination report is 30 days from the receipt of the same and this deadline cannot be extended. So it is important that you file a response with the trademark office within the deadline of 30 days.
The objections under absolute grounds are that
- your trademark is not distinctive; i.e.: your trademark is not capable of distinguishing the goods and or services of one person from those of others.
- your trademark is descriptive or devoid of any distinctive character; i.e.: your trademark directly refers to the goods or services for which the protection is sought. Ex: Trademark FAIRBEAUTY filed for cosmetics under class 03 cannot be registered.
- your trademark is a generic term or is customary to trade; Ex: APPLE for fruits, SOFTWARE for software services cannot be registered.
The objections under absolute grounds can be over come by stating that your trademark has acquired distinctiveness by extensive usage over a period of time and that the public in general, identifies your product or service by your trademark and that the public identifies only you in relation to your trademark and no one else. Documentary evidence is required to be filed in support of your claim along with your response.
The objections under relative grounds are: the existence of similar trademarks on the records of the trademark office.
The objections under relative grounds can be over come by stating that your trademark is different from the other cited marks in the examination report.
In what ways your trademark is different from the others needs to be explained in detail. Submission of documentary evidence of extensive usage of your trademark will also help you to strengthen your case.
c. Hearing before the examiner.
In about six months from filing your response to the examination report, the trademark office will either allow the application to be published in the upcoming trademarks journal for a third party to raise objections to the registration or fix a hearing by sending you a hearing notice with a date and time to meet the examiner and explain why your trademark should be allowed to proceed towards registration. This opportunity should be exploited to explain to the examiner, the evidences filed at the time of responding to the examination report in detail and to submit additional evidence. Subsequently the examiner will pass an order either allowing or refusing registration of your application. If it is a refusal, you can appeal against the order of the examiner before the Intellectual Property Appellate Board (IPAB) with 15 days of such refusal.
d. Publication of the application in the trademarks journal.
Within two to three weeks from the date of the examiner’s order to publish the trademark, the trademark application is published in the trademarks journal. You can download the trademark journal at http://ipindia.nic.in/tmr_new/tm_journal/index.htm and check if your mark has been advertised. After the expiry of four months from the date of publication of the trademarks journal in which your mark was published, check the status of your trademark application online at http://ipindiaservices.gov.in/eregister/viewdetails.aspx and if there are no objections to your trademark by way of oppositions filed by any other person, write a follow up letter to the trademark office requesting registration of your trademark and issuance of your trademark registration certificate.
In the event of any person raising an objection to your trademark application by way of an opposition, the trademark office will notify you of the objection along with the copy of the notice of opposition as filed by the other party. Opposition proceedings are complicated and we suggest that you consult your legal counsel.
e. Registration of your trademark and issuance of the registration certificate.
If no objections are received by way of oppositions to your trademark application within this four month period, the trademark office will grant registration to your trademark and issue the registration certificate. Once you receive the registration certificate peruse the contents of the certificate to ensure that there is no discrepancy in the data and in case of any, bring it to the attention of the examiner and have it rectified.
f. Renewal of your trademark registration.
Every trademark registration is valid for a period of ten years from the date of filing the application. An application for renewal of a trademark registration can be made six months prior to the expiry of the registration. The renewal fee is INR 5000 (approx USD 100) per mark/class. A trademark can be renewed every ten years and thereby protected indefinitely.
With an economy of a billion people, you should consider applying for a trademark registration at the nascent stage of your business to avoid time consuming and expensive litigation to protect your rights.
His clientele include both individuals and companies ranging from small start-ups to multi-national corporations in a wide variety of industries, including technology, consumer goods, pharmaceuticals and confectionery.
Mr.Selvam is also a visiting faculty at the Department of Journalism, Madras University where he teaches copyright and trademark law.
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