Trademark Registration

Businesses in India are growing at a record rate. From 122721 new firms in 2020, the count increased by a whopping 26% in 2021 and reached 167076 new firms in 2022 with another 7.5% increase. With such a huge growth in the market, the chances of copying someone’s identity and taking undue advantage are also increased. Hence it must be the utmost priority of the firm to first secure its identity through trademark registration. It gives the sole right to use that mark to the registrant and legally prohibits the unauthorised use of that mark. In this article, we will be discussing the complete process to get your trademark registration.

Importance of Trademark Registration In India

A trade mark does not help you to run your business and make money but still is the first priority when you want to start a new business. It gives your business an identity, which will be recognised by your consumers throughout its life. It will create brand value over time and become an asset for your business. At the same time, It will prevent others from using your business name or graphical identity without your authorization to take undue advantage or if the case is different they can also ruin your reputation. They can harm your market image if using your name and provide bad products or services. So whenever you are creating a brand value for a name or identity make sure to get it registered. Otherwise, all your hard work may go in vain.

Who Can Register A Trade Mark in India?

The following parties can file the trademark application for the trademark registration-

• Individual
• Partnership Firm
• Body Corporate
• Limited Liability Partnership
• Society
• Trust
• Government Department
• Statutory Organisation
• Association of Persons
• Hindu Undivided Family

What Can Be Registered As A Trademark in India?

Anything that graphically represents your identity and distinguishes you from others can be registered as a trademark. It can include-

• Letters
• Numbers
• Colour
• Colour Combinations
• Graphical Designs
• Three-Dimensional Shape
• Sounds

There are various benefits of a trademark certificate. It prevents others from using your identity as well as gives you the sole right to its usage. The detailed benefits and rights it gives to the registrant are described below-

• You can not stop someone from using your mark if you don't have a trademark registration certificate. So trade mark registration is always advisable before you start your business. It gives you the right to sue anyone who tries to use it.
• Trademark Registration gives you an exclusive right of using this mark for your goods and services. Any other person cannot use this trade mark in any manner until authorised by you.
• Because any other person, business or organisation cannot use a trademark registered by you. It gives you exclusivity and your brand gets recognised with its trademark. It builds a market reputation for your business and helps it to grow.
• If you register a trade mark, you own all its right but if someone else registers it before you then you cannot choose the same trademark. So trademark registration gives you plenty of options to choose from if you make it a priority and act fast.
• A trademark certificate is a valid proof of identity for your business. It not only gives you the right to sue others but also gives you strong evidence to prove the legal ownership of your business.

Trademarks are divided into four categories. These categories are given below with their respective definitions-

• Standard Trade Mark
• Collective Mark
• Certification Mark
• Series Marks

Standard Trademark

Standard Trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours etc. This is usually owned by a single entity.

Collective Mark

A collective mark means a trademark distinguishing the goods or services of members of an association of persons. A good example of this kind of mark is the logo of the Delhi Bar Association. All people in the association can use the mark and hence it is called a collective mark.

Certification Mark

A certification trademark is a mark capable of distinguishing the goods or services with respect to their nature, composition, trust and origin. It is used on goods and services that are certified by the proprietor. A good example of this kind of mark is the ISI mark which is used on products that are compliant with Indian Standards as prescribed by BIS. This certification mark is used by the Bureau of Indian Standards.

Series Marks

A series mark is when the trademark is in the form of a series. In other words, the primary element of a mark might be used in several ways by the proprietor and instead of filing separate applications for each, it is possible to file them as a series. For example, McDonald has series marks incorporating the term “Mc” like Mc Chicken, Mc Café, Mc Donuts etc.

Requirements or Conditions for Trade Mark Certificate Application in India

You have to make sure and fulfil the following requirements before you file a trademark application. If these conditions are not met then the application may be refused for the grant of the trade mark. These requirements/conditions are as follows-

• The mark should be distinctive in nature.
• It should not resemble existing trademarks.
• It should distinguish your product or services from that of others.
• It should not contain something that may help in trade to designate the kind, quality, quantity, purpose, value, origin or time of such product or service.
• It should not contain customary, bona fide and established practices of the trade.
• If the mark does not fulfil the conditions specified, it may still be registered if the brand is well-established, well-known and well-recognised for its work.
• It should not be deceitful which can cause confusion or be scandalous and obscene in nature.
• It should not be against the religious sentiments of any class.

The list is not exclusive to a specific type of applicant therefore you may need less or more documents depending on your nature. For example, if you are a sole proprietor then you do not need the incorporation certificate unlike the companies registered under the companies act. The documents required for the registration of a trade mark are as follows-

• Form TM-A
• Form TM-M
• Copy of the Mark
• Personal ID Proof
• Address Proof
• PAN Card
• GST Details
• Partnership Deed
• Incorporation Certificate (CIN)
• Udyog Aadhaar Certificate (MSME Registration)

Once you have all the necessary documents and details, you can move to the procedure of getting a trademark licence through the trademark application process. A trademark application can be filed in both online and offline modes. For online filing, you may visit the e-filing portal of Intellectual Property India while for offline method, you have to fill out the prescribed form TM-A. Although the filing is allowed in offline mode, the offline forms are also digitised and further process takes place online. Currently, ninety-eight per cent of trademark applications are being filed in online mode. The process of registration is as follows-

Step 1:- Research for Trademark Application Online

The first step in the registration process is research. You first have to find a name you want to get a trade mark for and design its graphical representation. At the same time, you also have to check whether the name is available or not. For this, you can check the journal at the online portal which is published and managed by Intellectual Property India. If the name is unique and not yet registered then you can move further in the process of trademark registration.

Step 2:- Class Selection for Trademark Registration

In the application form for the trademark, you need to fill in the class of your business for the purpose of registration. There are forty-five classes, out of which the first 35 are for the goods categories and the remaining 36 to 45 are for the service categories. According to the products and services of your business, you can choose an applicable class. For example, if the business is involved in clothing, footwear and headgear then class 25 will be applicable.

Step 3:- Filing of Application for Trademark License

The applicant can fill out the application form which is TM-A. It shall be submitted to the Registrar of Trademarks. Details in the application include the nature of the application (standard, collective, certificate or series marks), applicable fee, details and nature of the applicant (individual, partnership, body corporate etc.), agent details (if any), trademark details (with a full description and category), class of goods or services, and a statement regarding the use of the mark. Lastly the name and signature of the applicant after the declaration.

The proprietor can file an application themselves or hire services of a consultancy firm and consultants will help him with the registration. In this case, you need to use another form TM-M to authorise the consultant to file the application on your behalf. This other application will be called the Application form for the authorisation of the agent.

Step 4:- Publication of Trade Mark

After the application is submitted, the Registrar inspects the application and accordingly accepts or rejects it. If the application is found to be promising and no errors are identified, the Registrar publishes the trademark application in a journal. The reason for the publication is to ensure that nobody has an objection to this trademark. There may be someone who claims that the mark resembles his trademark. In such a case, he can proceed with the objection.

Step 5:- Objection to the Trademark Application Online

If someone has an objection to the published trademark, he can file an application for objection through the form TM-O within the time limit of four months. On receipt of the objection, the Registrar issues notice to the applicant and then the applicant has to file the counter-statement regarding the objection filed. After listening to both parties and analysing the evidence, the Registrar may decide whether to entertain the objection or reject it and grant the trademark.

Difference Between Trademark and Service Mark

You might have encountered the term service mark. This term is used when a trademark is registered for a service instead of a product. Businesses may be involved in the production and selling of a product or providing a service. So when the business that is involved in services instead of a product, applies for the registration of a trademark, that application is considered for the service mark. It has the same role, and benefits and provides the same rights to the registrant as a trademark. The mark ‘TM’ is used with the trademark and ‘SM’ is used for the service mark. The trademark for goods is classified from class 1 to class 34 while the service marks are classified from class 35 to 45.

The fees of trademark registration are levied with the filing of form TM-A. If the objection and counter-statement are involved in the process, the respective fee shall also be paid. For the application, the fee varies from 5000 to 10000 in the case of offline mode while in online mode, this fee varies from 4500 to 9000. If the applicant is filing the trade mark in multiple classes then those multiple classes can be written on the same application form but the fee has to be paid separately for each class. For example, if a company wants to get a trademark for providing medical services as well as for selling pharmaceutical preparations under the same mark then it has to file a trademark application in both class 5 and class 44. In this manner, the fee in offline mode will be 20000 (10000 for class 5 and 10000 for class 44).

Here is a quick table to demonstrate the fee for a trade mark application, objection and renewal-

Here is another list to demonstrate the fee for the application of objection, counter-statement, renewal and restoration-

The trademark is registered for a period of ten years. Before the expiry of this registration period, the Registrar sends a notice to the proprietor as a reminder of the renewal and warning of the removal. If the proprietor files an application of renewal (Form TM-R) before the expiry of the trademark registration and pays the applicable fee, the Registrar can renew it for another ten years. Even after the expiry of the registration, the proprietor can pay the surcharge along with the renewal fee and renew the trade mark registration within six months from the date of expiry.

The Registrar can remove the trademark from the register if the renewal application is not made within six months from the date of expiry. If it is removed after six months from such date, the proprietor can make an application for restoration (Form TM-R) not later than one year from the date of expiry. On receiving the application for restoration, the Registrar can restore the trademark and renew it for another ten years from the date of expiry of trademark registration.

We, at Corpseed, have a team having extensive knowledge relating to various horizons of Trademark Laws and Regulations. We perform desk-based research, documentation, and coordination to help clients in establishing their businesses and fulfilling the compliances as prescribed by the applicable rules.