- What is a Trademark?
Trademarks are special unique signs that are used to identify goods or services from a certain company. They can be designs, pictures, signs or even expressions. It is important because it differentiates a company’s products from the competitions. It can be associated with a company’s brand or product. Trademarks are classified as intellectual property and therefore is protected from infringement. Trademarks and its rights are protected by the Trademark Act, 1999.
Steps for Acquiring registration:
By trademarking a company’s name, the company’s brand and goodwill is protected along with its ideas, all of which involves great amount of hard work.
The first step is to coin a catchy word and design an attractive logo. Anything from the following can be combined or formed to form a trademark:
- Choosing a trademark:
A unique and distinctive mark is necessary to represent a company. Identification of class is a major step in filing a trademark. The respective classes of the business or service which the company is carrying on must be identified and filed accordingly. Currently, there are 45 classes of goods and services under which the trademark can be registered. Classes 1-34 are for goods and classes 35-45 are for service.
- Trademark Application Filing in India (Including fee):
There are two modes of filing a Mark-Physical Mode and Online Mode. The Trademark is filed by applying on TM-A with requisite details appended herein below with prescribed Fees of Rs. 4500 only. (The Fee stated here is to be applicable when choosing online mode).
The documents required for filing a mark are as follows:
- Complete name and address of the applicant;
- JPEG format of the trademark or logo;
- Affidavit of use (if applicable)
When the applicant is an Individual /Start up /Small enterprise, the amount payable shall be Rs.4500 for e-filing and Rs.5000 for physical filing. The Trademark Rules, 2017 define a “Startup” as follows:
- It is incorporated or registered in India, not prior to five (5) years,
- Has an annual turnover not exceeding INR 25 Crores (Rupees Twenty-Five Crores only) / USD 250 Million (Two Hundred and Fifty Million United States Dollars) (approximately) in any preceding financial year and
- Is working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property.
When the applicant is otherwise the amount payable shall be Rs.9000 for e-filing and Rs.10,000 for physical filing.
- Application allotment of Trademark:
Once the application has been acknowledged, an allotment number shall be provided. On obtaining an allotment number the trademark owner can place the TM besides the logo.
- Registration of Trademark:
To apply for registration of trademark, an individual must stick to the procedure laid down under Section 18 of the Trademark Act 1999. A device, design, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging and colour combination can be registered under the Trade Mark Act 1999, if it can be graphically represented and is capable of distinguishing the goods or services thereunder from those of others.
As per Section 9 of the Trademarks Act, the following cannot be registered:
- non-distinctive trademarks incapable of distinguishing the goods or services of one person from those of others;
- descriptive trademarks, which indicate the kind, quality, quantity, intended purpose, geographical origin or other characteristics of the goods or services applied for;
- trademarks that are customary in the current language and established practices of the trade;
- marks that may deceive the public or cause confusion;
- marks that may hurt the religious susceptibilities of any class or section of the citizens of India;
- marks consisting of scandalous or obscene matter;
- marks that are prohibited from use under the Emblems and Names (Prevention of Improper Use) Act 1950; and
- marks comprising shapes:
- resulting from the nature of the goods themselves;
- that are necessary to obtain a technical result; or
- that give substantial value to the goods.
Grounds for refusal of registration:
Section 13 and 14 of the Trademarks Act 1999 talks about the grounds for refusal of registration. Trademarks containing specific names cannot be registered. Trademarks which have a word that is commonly used of any single chemical element or chemical compound in relation to a chemical substance or preparation cannot be registered.
Trademarks which falsely suggest a connection with any living person can be declined registration by the Registrar unless the consent of such living person is obtained. Similarly, trademarks which falsely suggest a connection with any dead person within twenty years of submitting the application for registration can be declined by the Registrar unless the consent of legal representatives of such person is obtained.
Acceptance and Opposition:
After the registration of trademark has been accepted, the trademark will be published on the Trademarks Journal. The Trademark journal is published on a weekly basis. Any individual/company can oppose the registration of the trademark within four months from date of its publication. A notice of opposition is said to be filed in containing the following:
- Details of the trademark application against which opposition is being filed.
- Details of the earlier mark that the registering mark is infringing upon. It could be an already registered mark or a mark that is still undergoing its registration.
- Details of the filing party.
- Grounds upon which such opposition is based on.
If there are no objections raised within 90 days of that publication, the mark will be accepted for registration. A certificate of registration will be issued to the proprietor and the trademark is deemed to be a registered mark of the owner thereby granting exclusive use of the mark. The symbol ® can be positioned next to the logo or trademark.
- Renewal of Trademark
A registered trademark is valid up to 10 years in India. For continuous possession or maintaining the registration, the trademark must be renewed every 10 years by filing a renewal application in the Registry. A registered trademark will become susceptible to cancellation if it is not put to continuous usage for a period of 5 years from date of registration.
- Forms and Fees
|S.No.||On what payable||For physical Filing||For e-filing||Corresponding Form No.|
|1.||Application for registration of a trademark /collective Marks / Certification Mark / Series of trademark for specification of goods or services included in one or more than one classes||TM-A|
|Where the applicant is an Individual / Startup/Small Enterprise||5,000||4500|
|In all other cases (Note: Fee is for each class and for each mark )||10,000||9,000|
|2.||On a notice of opposition under section 21(1), 64, 66 or 73 or application for rectification of register under section 47 to 57, 68, 77 or application under rule 99, 103, 135,140 or On application under section 25 of Geographical Indication of Goods (Regulations and Protection) Act, 1999 to invalidate a trademark or counter statement related thereto. (Note: Fee is for each class opposed or counterstatement filed)||3,000||2,700||TM-O|
|3.||For renewal of registration of a trademark under section 25 for each class||10,000||9000||TM-R|
|Application for renewal with surcharge of registration of a Trademarks under section 25 (3) for each class||5,000 Plus renewal fee applicable under entry 3||4,500 Plus renewal fee applicable under entry 3|
|Application for renewal with surcharge/ restoration and renewal of a Trademarks under section 25 (3), 25 (4) for each class||10,000 Plus renewal fee applicable under entry 3||9,000 Plus renewal fee applicable under entry 3|
|4.||On application under section 45 to register a subsequent proprietor in case of assignment or transfer for each trademark||10,000||9,000||TM-P|
|On application for: Certificate of the Registrar under section 40(2), or For approval of the Registrar under section 41, or Direction of the Registrar for advertisement of Assignment without goodwill under section 42, or Add or alter a registered trademarkunder section 59(1) for each trademark, or Conversion of specification under Section 60 for each trademark.||3000||2700|
|On application for: Extension of time for applying for direction under section 42 for advertisement of assignment without goodwill, or Extension of time for registering a company as subsequent proprietor of trademarks under section 46(4),or Consent of Registrar to the assignment or transmission of a certification trademark under section 43, or Change a name and / or description of a registered proprietor or a registered user of a trademark under section 58 for each trademark.||2000||1800|
|On application for: Dissolution of association between trademark sunder section 16(5), or Change in address or address for service in India of Registered Proprietors under section 58 for each trademark, or Request for cancellation of an entry in the register or part thereof under section 58 for each trademark.||1000||900|
|5.||Application under section 49 to a registered user of a registered trademark in respect of goods or services Or On application under clause (a) of sub-section (1) of section 50 to vary the entry of a registered user of one trademark where the trademarks are covered by the same registered user in respect of each of them Or On application under clause (b), (c) or (d) of sub-section (1) of section 50 for cancellation of entry of a registered user of one trademark Or On notice under rule 95 (2) of intention to intervene in one proceeding for the variation or cancellation of entries of a registered user of a trademark (Note: applicable fee is for each mark)||5,000||4,500||TM-U|
|6.||Request for search and issue of certificate under rule 22(1)||10,000||9,000||TM-C|
|Request for an expedited search and issuance of certificate under rule 22 (3)||Not allowed||30,000|
|7.||On application for: Extension of time, or Certified copy, or Duplicate Registration Certificate, or inspection of document,or Particulars of advertisement to registrar, or seeking grounds of decision of Registrar, or Enter in the register and advertise a note of certificate of validity under rule 127, Amendment in trademark application, or Particulars of advertisement of a trademark to Registrar under rule 41.||1000||900||TM-M|
|On application for: Deposition of regulation of collective trademark under section 66 or alteration of regulation of certification trademark under section 74 (2), or Seeking Registrar preliminary advice, or For division of an application.||2,000||1800|
|On application for: Review of Registrar’s decision, or Petition (not otherwise charged) for obtaining Registrar’s order for any interlocutory matter in a contesting proceeding, or Any other matters not covered in other TM forms.||3,000||2,700|
|On request for an expedited certificate of the Registrar (other than a certificate under section 23(2) of the Act) or certified copies of the documents under proviso to rule 122 (Note: for entry in respect of each registered trademark or for each document)||5,000||4,500|
|On application under rule 34 for expedited process of an application for the registration of a trademark|
|Where the applicant is an Individual / Startup/Small Enterprise||Not allowed||20,000|
|In all other cases (Note: fee is for each class and for each mark)||Not allowed||20,000|
|Request to include a trademark in the list of well- known trademark(Note: applicable fee is for one mark only.)||Not allowed||1,00,000|
|8.||On application for registration of a person as a trademark agent under rule 147 & 149.||5,000||4,500||TM-G|
|For continuance of the name of a person in the Register of a trademark Agents under rule 150 for every Five year to be paid on or before 1st day of succeeding financial year.||10,000||9,000|
|On application for restoration of the name of a person to the Register of trademarks agents under rule 153 within 3 years from the date of removal of registration.||5,000 Plus continuation fee as mentioned in entry number 20||4,500 Plus continuation fee as mentioned in entry number 20|
|On application for an alteration of any entry in the Register of trademarks Agent under rule 154||1,000||900|
|Handling fee for certification and transmission of international application to International Bureau with MM2(E)||Not allowed||5,000|