The article give you brief on Trade mark meaning, requirement, meaning of registrable trademark, step wise process of registration of trade mark, time duration of registration, charges for registration and information and documents required for registration.
What is Trade Mark
Trade mark 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 shape of goods, their packaging and combination of colors act.
For getting a brand protected under the provisions of the trademark law one has to get one’s brand registered.
The registration procedure of a trademark in India used to take approximately five to seven years earlier but due to usage of newer technology and computerization by the trade-marks registry the delay in registration process is almost reduced to about 18 months.
Any person claiming to be the user of any mark and who is desirous of registering it shall apply in writing to the registrar in the prescribed form. However before making an application for registration of trademark it is necessary to conduct search at the trade marks registry whether any other similar mark is registered or is pending registration. It is always recommended to take legal advises from Practicing Professional.
Actually the search shall be carried out well before commencing the business using any trademark. Getting the search done beforehand would help avoiding circumstance where you invest in building your brand for considerable time period and find same or similar mark owned or registered by someone else.
A single application may be made for registration of trademark for different classes of goods in services and fee payable therefore shall be in respect of each such class of goods or services.
ESSENTIAL REQUIREMENT OF TRADE MARK
- It must be a mark i.e. a device, brand, heading, label, ticket, name, signature, word, letter or numeral shape of goods, packaging or combination of colors or any combination thereof.
- It must be capable of being represented graphically.
- It must be capable of distinguishing the goods from those of others.
- It must be used or proposed to be used.
- The use must be of a printed or other visual representation of the mark.
- The use must be for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person having the
- Right to use the mark.
What ARE REGISTRATABLE TRADEMARKS?
A trademark may be registered for ‘name per se’ and for ‘logo’ ‘label ‘or ‘device’. The 1999 Act also recognizes combination of colors, shapes and packing of the goods as eligible for being granted registration as a trademark. For example, the shape of the “bottle of Pepsi” may be eligible for bring registered as a trademark.
Even the mission statements, motto statements or other similar statements may be registered as a trademark if the same are applied to the product. However, a trade mark must qualify the following tests for being eligible for registration:
- It must be capable of distinguishing goods or services of one person from those of another. For example, ‘medicine’ in relation to healthcare business is not distinguishing mark.
- It should not consist exclusively of marks or indications used in general for referring to the characteristics of goods or services like kind, quantity, quality, intended values, and geographical origin act. ; For example ‘Darjeeling Tea,’ ‘Excellent’, ‘No.1’, etc.
- It should not consist exclusively of customary marks or indication in the current language or in the bona fide or established practices of the trade: for example typical types of letters and pictures generally used by Chinese restaurants.
- It should not be of the nature as to deceive the public or cause confusion. For example. ‘Mata’ in relation to footwear business as against ‘Bata’.
- It should not contain or comprise of any matter likely to hurt the religious susceptibilities of any class or section of the citizen of India. For example, ‘Ram’, ‘Allah’ etc. Depending upon the goods and services for which the same is used.
- It should not comprise or contain scandalous or obscene matter.
- Its use should not be prohibited under the Emblems and Names (Prohibition of Improper Use) Act, 1950; for example ‘Bharat’, ‘M.K.Gandhi’, etc.
- It should not consist exclusively of the goods resulting from the nature of the goods themselves. For example, a picture of mango cannot be considered as a registrable label in relation to mangoes.
- It should not consist exclusively of shape of the goods which is necessary to obtain technical results.
- It should not consist exclusively of shape that gives substantial value to the goods a designer watch having exclusive shape that gives it substantial value such a shape may be registered under the Designs Act, 1911 as a design and not as a trademark.
- Registration of a mark may be refused if its use in India is liable to be prevented under the law of copyright or under the common law of passing off protecting an unregistered trade-mark.
TRADEMARK REGISTRATION PROCEDURE
STEP 1: Decide Trademark Classifications:
Trademark classification is the process of defining the goods and services while registration of trademark. It is very important to state your goods and services under the exact category otherwise Registry will reject your application for registration. Trademark classification in India refers to 34 categories for goods and 8 for services. While filing an application for trademark registration, it is very essential to mark your goods and services under the correct category.
If it is not classified correctly then there may be a chance of rejecting your application. Moreover, these trademark classifications also do offer the fair means for protecting your trademark from getting misuse. During the process of effective trademark watch these trademark classification codes help one in rechecking the list of already registered marks in correspondent to upcoming applications for trademarks in order to protect any type of further conflicting
STEP 2: Trademark Search:
A Trademark search is the first step in the Trademark registration procedure. A search is to be conducted in order to determine the uniqueness of the mark, and its similarity to other, pre-existing marks. It is very much advisable to conduct a Trademark search before registering or using a Trademark. Without a search, there are chances for being sued for Trademark infringement, the rejection of the Trademark application, and a third-party challenging the Trademark application.
STEP 3: Filing of Trademark Registration Application:
The third step in the Trademark registration procedure is filing of Trademark registration application after getting the positive search report. After receiving of the acknowledgement the applicant can use the symbol TM alongwith the applied mark. If the application for the registration of Trademark filed through efiling system of Trademark registration than the acknowledgement of the application alongwith the government receipt generate immediately after the filing. Nowadays Acknowledgement of the receipt is sent through registered email id provided in the application.
STEP 4: Examination of Trademark Registration Application:
The fourth step in the Trademark registration procedure is issuance of examination report by the Trademark office. Upon receipt of Trademark registration application, the Registrar issues an examination report after examining the application. Applications are examined to ensure that they comply with the requirements of the law and that they do not conflict with marks which are already registered, or which are the subjects of earlier pending applications.
STEP 5: Publication of Mark in Trademark Journal:
The fifth step in the Trademark registration procedure is the publication of the mark in the Trademark journal. If the Registrar considers the mark as a distinctive mark or after the removal of the objections, if any, raised by the Registrar he may cause the application to be advertised in Trademark journal. If no opposition to the mark is filed within 90 days from the date of publication, or 120 days if request for extension of time is given to the opponent and opposition is refused, mark proceeds for the acceptance of Registration.
STEP 6: Trademark Registration:
The sixth step in the Trademark registration procedure is the issuance of Trademark registration certificate. After the application for Registration of Trademark is accepted by the Registrar, the Registrar shall issue to the applicant a Certificate of Registration under the seal of the Trademark Registry. After issuance of this certificate, applicant can use TM with ® which indicates it is a Registered Trademark.
If there is no objection and /or opposition raised, the process of Registration of Trademark usually takes 15 to 18 months.
Registrar of Trademarks has increased the fee from Rs.3500 to Rs.4000 for application in single class.
INFORMATION REQUIRED FOR MAKING APPLICATION AND REPRESENATION.
- LOGO / Trade Mark to be registered;
- Name, address, legal entity and Nationality of the applicant;
- Detailed information about the product / service;
- Trade Description such as: Manufacturing / Trading / Service;
- Name and designation of the person authorized to sign the application and other documents;
- If the proposed trade mark id already in use, date from which being used.