TRADEMARK REGISTRATION

What is Trademark ?

 

Trademark gives legal protection to logo, brand name, product name, word or punch line by which client recognize or differentiate the products or services of one company from another.

TRADEMARK REGISTRATION CAN BE DONE FOR THE FOLLOWING:

• Any word, title, symbol, heading, label, name, signature, numeral or any combination thereof.

• Any Slogan, Base or Punch Line, etc. which are used to highlight the products and services.

What are the Function of Trademark ?

  • It identifies the goods and services and its origin or owner.
  • It advertises the goods and services.
  • It creates an image for the goods and services.
  • It stimulates further purchase.
  • It serves as a badge of loyalty and affiliation.
  • It may enable a consumer to make a life style or fashion statement.

ADVANTAGES / BENEFITS OF TRADEMARK REGISTRATION

  • Trademark Registration benefit both businesses and consumers.
  • Trademarks allow businesses to build an identity and reputation with client, and grow or expand business.
  • They allow consumers to take an informed buying decision by searching out familiar brand names and avoid bad buying experiences by avoiding the brands they didn’t like.
  • Confers upon the owner the exclusive right to use the brand.
  • Protects hard earned goodwill in the business.
  • Protects your Name /Brand Name from being used in a same or similar fashion, by any other business firm, thus discourages others from cashing on your long built goodwill.
  • Gives your products a status of “Branded Goods”
  • To obtain legal relief in respect of infringement (misuse by others) of the trade mark.
  • Power to assign (transfer) the trade mark to others for consideration.

Reasons to Register a Trademark

1) Legal Protection :
Trademark registered brands get wide legal protection as compare to unregistered brands . All registered  trademarks are valid for a period of 10 years and can be renewed for a period of another 10 years easily by filing a trademark renewal application.

2) Unique Identity :
Trademark filing will help establish a unique identity and brand for your goods or services. Competitors will not be allowed to use your trademark for similar goods or services.

3) Creation of Asset :
Trademark filing creates an intellectual property, which is an intangible asset for an organization. Registered trademark is a right that can be sold,franchised or commercially contracted.

4) Trust or Goodwill :
Registered trademarks can be used to create a sense of trust, goodwill and quality in the minds of your client that is unique to your business.Registered trademarks show your client that you care about your brand.

5) Global Trademark Filing :
A trademark filing in India can be used as the basis for trademark filing in other countries if required. Foreigners and Foreign entities can also register a trademark in India if required.

Use of the ‘TM’, ‘SM’ and ® symbols

‘TM’Symbol : Generally, one who has filed an application (pending registration) can use the TM(Trademark) symbol with the mark to inform the public of his exclusive claim over the Brand. The claim may or may not be valid.

‘SM’Symbol : An  SM symbol indicates Service Mark, which is the same as a Trademark except that it identifies and distinguishes the source of a service rather than a product.

R’Symbol : The registration symbol ® may only be used when the mark is registered and the Certificate of Registration is issued by the Trademark Registrar. Out of all above symbols TM symbol is one of the most popular and widely used symbol to indicate the application or registration of Trademark.

What is Trademark Search ?

Before going ahead for trademark filing, Trademark (Here in after “TM”) search is the first process to begin with.

TM search will enable us to find if any, same or similar mark and/or logo already filed or registered with Indian trademark office or not.

After TM search, we will submit you the TM search report wherein we will anticipate the chances of your TM registration.

What is Trademark Class ?

Trademark 1-To-45 Classes List Click to Download

The trademark shall be filed under the specific class in which your company / firm is dealing.

Some time one trademark and the goods or services associated with it may falls under multiple classes, in that case, the application should be filed in all such classes.

The Class is researched by our expert team based on your goods and service description .

There are 1 to 45 classes in the trademark registration process .

Classes 1 to 34 define different Goods, whereas, classes 35 to 45 define different services.

It is suggestible to take expert lawyer’s advice to evaluate proper trademark class. To check the trademark classification click on https://euipo.europa.eu/ec2/

Procedure / Flow chart for Trademark Registration in India

Trademark Registration Process click to Download

• Trademark Classification & Search

• Documentation To file a trademark

• Filing application

• Examination of the trademark

• Response to examination report

• Show cause hearing

• Acceptance / Advertise before acceptance

• Publication for 4 months Opposition (If Any)

• Registration

• Renewal Every 10 year From date of Filing of application

• (renewal 5 to 6 Months prior to expiry of the trademark to avoid Late payment Charges).

TRADEMARK REGISTRATION PROCESS IN SHORT

• Trademark search

• Trademark filing

• Examination Report with objections if any

• Hearing if any

• Opposition if any

• Registration

• Renewal

FOR HOW LONG IS A TRADEMARK VALID ?

• A trademark is valid for a period of Ten Years at a time.

• The trademark owner reserves the right to file for renewal 5 to 6 Months prior to expiry of the trademark to avoid late payment Charges.

What is Date of first use ?

• In case, if you already started using the mark then actual date of first use shall be provided based on Invoices, Bills, Business proposals, Mail exchange of Proposals or Bills etc.

OR

• Mark may be filed as a “proposed to be used” if you want to use it in future.

Timeline

• Search – 1-2 Working days.

• Filing 1-2 working days. (you can start using ™ symbol next to your mark).

• Registration Approx 18 months (you can start using ® symbol next to you mark).

• Once the trademark application is filed one can use TM symbol next to his mark and after receiving registration certificate one can use ® symbol next to his mark.

CAN I SELL MY TRADEMARK ?

• A trademark helps you build your brand and your business.

• Once you create your brand, you can always assign or license your trademark for monetary benefit.

WHY IS TRADEMARK IMPORTANT FOR A STARTUP COMPANY?

• One of the most important concerns of a startup company is to establish its brand, its unique visibility in the existing market that differentiates itself from competitors.

• It becomes very important for companies to use a trademark,through which it can advertise and connect itself with its consumers.

Documents required for filing a Trade Mark Application in India

Client Information Sheet CLICK TO Download

• Trademark or logo Copy.

• Applicant details like name, address , nationality and so on… which we will send you the CIS (Client Information Sheet) on Mail Id.

• Goods or services to register.

• Power of attorney to be signed by the applicant i.e,. TM M. (Form of Authorization of Agent/Attorney) to authorize us to file trademark application.

• Date of first use of the trademark in India, if used by you prior to applying and his photo copy.

• Proof of date of first use bearing name or logo of trademark. (Bills/Invoice/Registration Certificate of any Government Authority or Department/ News paper advertisement etc.)

What is the Government / Statutory fee for Trademark ?

Government / Statutory fee for Trademark filing – Rs.4,500/- (per mark per class) for Individual / Start ups / Small Scale Industries.

OR

Rs.9,000/- ( Per Mark Per Class) for Others(Partnership Firm, LLP , Private Limited Company, Any Entity Other than Single Firm).

Can I Avail Discount in Statutory Fees for Partnership Firm, LLP , Private Limited Company.

• Yes

• For Example :

• For Individual / Start ups / Small Scale Industries – Rs 4500/- 

• For Registered Startup under Startup India Initiative and MSME –Rs 4500/-

• For all other applicants like companies/ Partnership Firm, LLP, Private Limited Company etc. – Rs 9000/-

• Certificate of Registration received under Start Up India Scheme.

• SME / SSI registration certificate for Small Scale Industries (MSME , SSI etc.)

Can I apply for trademark now and use it later ?

• Yes, Its called as Proposed to be used under trademarks act.

• It suggested to use your brand name as soon as possible.

RECTIFICATION & CANCELLATION

Any alteration in or removal of a registered trademark from the Register of Trademarks can be achieved by initiating rectification / cancellation proceedings. We represent our clients in rectification and cancellation proceedings before the Trademarks Registry as well as the Intellectual Property Appellate Board.

We are here to review and advise you on the chances of success in a rectification / cancellation actions filed against your registered mark or proposed to be filed by you against a registered mark. We are in adept at drafting rectification or cancellation pleadings and presenting oral arguments to secure an optimal outcome.

OPPOSITION

If a trademark application is subject to third-party opposition, we will analyze the merits of the opposition, advice on the pros and cons of entering into a settlement and, in cases where a settlement is not warranted, vigorously contest the opposition. As a proprietor of a trademark, it is prudent to be vigilant and prevent identical / closely similar marks from proceeding to registration. Our dynamic trademark watch service will ensure that clients are notified when an identical / closely similar mark is published in the Trademarks Journal – offering the opportunity to a client to oppose the mark and prevent it from proceeding to registration. We also advise on the chances of successfully opposing a published mark, any other action which may be initiated against the applicant and the pros and cons of entering into a settlement.

Whether it is drafting opposition pleadings, presenting oral arguments at opposition hearings or negotiating settlements in opposition matters – we are trained, experienced and competent to protect your legal and commercial interests.