Guidelines for the Trademark Registration

Author: Preeti Khandelwal

International Institute of SDG’s and Public Policy Research

What is Trademark?

A trademark can be any word, phrase, symbol, design, or combination of these things that identifies your goods and services. The word trademark can refer to both trademarks and service marks. A trademark is use for goods while service marks is used for services.

Why is Trademark registration important?

• Identifies the source of your goods or services.
• Provides legal protection for your brand.
• Helps you guard against counterfeiting and fraud.
• It is an asset itself

Classification of Trademark

Trademark is classified into 45 different classes by International Services of Goods and Services. Each class represents the different set of goods and services. To avoid the discrepancies, it is essential to choose the right class of trademark while filing a trademark registration application. Trademark application can be filed in more than one class. Among 45 classes mentioned 34 classes come under Goods section and 11 come under service section. Some of the popular classes in India are:

• Class 9:  includes computer software and electronics
• Class 25:  includes clothing
• Class 35:   includes business management and advertising
• Class 41: includes education and entertainment

Documents required for Trademark Registration:

Partnership/LLP/Company: The entrepreneur would have to submit he following documents

• Signed form-48
• Udyog Aadhar Registration Certificate
• Incorporation Certificate or Partnership Deed
• Identity proof of Signatory
• Address proof of Signatory
• Copy of logo (optional)

Other Applicants: All the other companies who do not have Udyog Aadhar registration will have to submit the following documents:

• Signed form-48
• Incorporation certificate or partnership deed
• Identity proof of Signatory
• Address proof of Signatory
• Copy of logo (optional)

How to Register Trademarks?

It is important to apply for registration of trademark as soon as possible because in India the registration process is ‘first to file’ basis. It usually get 2 to 3 years to get registered if the trademark is not opposed by the third party. Trademark registrations are handled by Office of the Controller General of patents, Trademarks, industrial Design and Geographical Indications. The application must be filled as per the territorial jurisdiction. To register a trademark in India the following steps must be followed:

• Trademark Search: 

Before initiating the process for registration of trademark the entrepreneur or trademark professional must conduct trademark search of trademark database. It will provide information about similar or identical trademarks that has already filed.

• Trademark filing:

The application must be filed in the Form TM-A either online from IP India’s official website or physically at the trademark registry office according to jurisdiction. Application must contain following information:

• Logo or the trademark
• Name and address of the trademark owner
• Classification of trademark class
• Trademark used since date
• Description of goods or services

• Examination Process:

Once the application is filed , it will thoroughly examined by the Registrar and they will prepare an examination and send the copy of it to the applicant and within 30 days applicant has to send the reply with the proper description and evidences against the objection raised by trademark office as to why his application should be accepted and must be proceeded for further registration procedures. If the applicant fails to reply within 30 days the application will be rejected.

• Post examination procedures:

Once the reply has been submitted by an applicant to examination report, if the examiner is not completely satisfied with the reply and can arrange a hearing. After hearing if the examiner is satisfied then he can accept and forward it for publication in the trademark journal or he can refuse if any objection is still there.

• Publication of Trademark Application:

After the examination accepted the application, it will be published in Trademark journal for the period of 4 months as an advertisement so that third party can see it and if there is any objection they can file it against applicant.

• Notice of Opposition:

Within 4 months from the date of publication any aggrieved party can file an objection in the form TM-O if he thinks that the application is made in bad faith or there is already an existing trademark and this can discredit the reputation of an organisation associated with it. Applicant has to go through certain legal procedures and in some cases applicant has to go through hearing as well.

• Registration:

After the mark goes through all the legal processes related to opposition and it is cleared or if there is no opposition then the certificate of registration is generated and the applicant receive the certificate which needs a renewal every 10 years.

REFERENCES:

1.     Defintion:  upsto.gov

2.     Document required: www.indiafilings.com

3.     Procedure for registration: blog.ipleaders.in and legalserviceindia.com