Trade Mark means (1) a mark capable of being represented graphically and (2) which is capable of distinguishing the goods or services of one person from those of others (that is, it must be distinctive). It may include a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, logos, colours, slogans, three-dimensional shapes and even sounds.
Advantages of Trademark and Registration
- Identifies the goods/services in respect of origin or owner.
- Advertises the goods/services through association and encourages future purchase.
- Assurance of quality of goods and services.
- Protection of hard earned goodwill and public trust.
- Exclusive right to use the mark in respect of goods and services.
- Protection against misuse or infringement by others.
Registration of Trademark
For the purpose of registration, a chosen mark should not be deceptively similar to an existing mark of another person. Marks which are only indicative of the kind, quality, quantity, purpose, value or geographical origin of the goods, or already common place in the trade due to their customary use, may not be registered. However, such restrictions shall not apply to marks which have become well-known and distinctive by virtue of continued use and popularity.
Who can Apply for Registration?
A person claiming to be the proprietor of the mark can apply for registration in respect of the certain category of goods and/or services. It is to be noted that registration is to be done only in relation to category/ies of goods or services, based on the international NICE classification of goods availablehere. In case one’s mark is to be used in respect of different categories, multiple applications in respect of each class is preferable as it increases possibility of registration during prosecution.
There are five Trademark Registry Offices in India – New Delhi, Mumbai, Kolkata, Chennai and Ahmedabad. The application is to be filed at the Trademark Office under whose jurisdiction the principal place of business of the Applicant is situate.
- NEW DELHI office covers Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Uttarakhand, Delhi and Chandigarh.
- MUMBAI office covers Maharashtra, Madhya Pradesh, Chhattisgarh and Goa.
- KOLKATA office covers Arunachal Pradesh, Assam, Bihar, Odisha, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim, Tripura, Jharkhand, Nagaland, and Andaman & Nicobar Islands.
- CHENNAI office covers Andhra Pradesh, Telangana, Kerala, Tamil Nadu, Karnataka, Pondicherry and Lakshadweep Islands.
- AHMEDABAD office covers Gujarat, Rajasthan, Daman and Diu, and Dadra & Nagar Haveli.
When the principal place of business is outside India, then application may be filed, along with power of attorney, in the Trademark office under whose jurisdiction the office of the lawyer appointed is located. In case a company is about to be formed, anyone may apply in his name for subsequent assignment in the company’s favour.
- Trademark Search: It is always suggested to conduct a trademark search for relevant classes before filing application in order to make sure no identical or similar trademark is already registered or for which an application has already been submitted.
- Filing of Application: has been discussed above.
- Examination of Application: by office of Registrar to ascertain whether it is distinctive, and does not conflict with existing registered or pending trademarks. Examination report is issued detailing objections (formalities, classification, similar marks, non-distinctive) from trademark office.
- Response to Examination Report: Reply to examination report addressing the objections raised needs to be filed within 1 month of receipt.
- Publication:of application after or before acceptance of the application in the Trademark Journal.
- Opposition by third party: After publication, any person may give notice of opposition to the registration within three months, extendable by one month. Trademark attorneys monitor the Journal to check if conflicting marks to their clients’ marks have been published.
- Hearing before Registrar: If the opposition has been decided in favour of the applicant, the Registrar shall register the Trademark.
- Registration of Trademark: On registration of the Trademark, the Registrar shall issue to the applicant a Trademark Registration Certificate.
Duration of Registration
The term of registration of trademark is 10 (Ten) years, but may be renewed upon payment of prescribed fee. An application for renewal of a trademark can be filed within six months from the expiry of last registration of trademark.