What is a Trademark?
A Trademark is typically a name, word, phrase, logo, symbol, image or a combination of these to distinguish a company’s products and services from those of others. It is also used as a marketing tool to create awareness and recognition of products or services among customers.
A trademark is the intellectual property of its holder; and ownership of a trademark flows from the business usage of the trademark. Trademark Registration provides ultimate protection for Business Name, Brand Name, Taglines, Captions, Logo, Symbol or Emblem or a combination of these as Trademark.
There are Different Types of Trademarks such as Word Mark, Device Mark, Colour Mark, Shapes of Goods, Sound Mark and Three Dimension Mark.
Why Trademark to be registered?
A company/individual should register the trademark in order to possess the complete ownership of the mark and to protect the same from misuse by another person/business entity. If the trademark is not registered, the owner of the mark shall not be entitled to initiate any legal proceedings against anyone to prevent or to recover damages for the infringement of the trade mark.
Trademark Classification - 45 Classes
Under Trademark Registration process, goods and services are classified into 45 Classes of Trademark. It is very important to identify the class in which the goods/services fit into and file an application under the relevant class. If a trademark is used for goods and services under different classes, separate applications are required to be filed under each class to get protection of trademark for the respective goods and services.
Trademark Class Finder and Checking of the mark on Public Search on https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx
Our Trademark Class Finder Tool will help you to identify the class in which the Trademark for a particular product / service is to be registered and to check whether the proposed trademark / name is already registered by someone with the Trade Mark Registry.
- An application is to be made to the Registrar of Copyright in the prescribed Form.
- Separate applications should be made for registration of separate work.
- Pay required fee as per Copyright Rules.
- The applications should be signed by the applicant or the Power of Attorney holder of applicant. Power of Attorney should also be filed.
Trademark Registration Filing Fee
Trademark Registration Fee is payable separately for each application under each class.
If the trademark is used for different products and services, separate applications under multiple classes has to be filed for protecting name under different categories of products and services
| Category of Applicant | Normal Fee | Reduced Fee |
|---|---|---|
| Individual Applicant / Sole Proprietorship | 4500.00 | NA |
| Company / LLP / Partnership / Joint Application / Others / | 9000.00 | NA |
| Company / LLP / Partnership / Others with MSME Registration or Start-up India Registration | NA | 4500.00 |
Trademark Registration - Requirements
Classification of Trademark
Identify the TM Class for filing Trademark. Also confirm Name or Logo or Both to be filed.
Execution of TM-M( Power of Attorney in favour of the agent)
Online Filing of TM
Obtain Acknowledgement from TM Registry
Start using ™ along with Name
Examination by TM Registry
Objection from TM Registry (if any)
Opposition from any opponent (if any)
Registration of Trademark by TM Registry
Start using ® with absolute rights
Trademark Registration Process
Classification of Goods and Services
The entire range of goods and services is categorised into 45 classes under the trademark laws. The applicant needs to identify the correct and relevant class under which the trademark should be registered.
Filing of Trademark Application
Once the classification is complete, an application should be submitted to the Trademark Registry along with prescribed details such as the applicant’s name and permanent address,
Examination of the Application
TM registry will verify the application and if the trademark application meets the requirements. Once Formality Check is completed, TM Registry shall examine he trademark application.
Publication of Trademark
When the trademark is approved by the TM Registry, the details of Mark will be will be advertised in the Trademark Journal. If anyone has opposition to the registration of Marks can lodge Notice of Opposition to Trade Marks Registry on Form TM-O within four months from the date of the Journal with the prescribed fee.
Registration of Trademark
After completion of 4 months from the date of advertisement in journal, the TM registry shall issue a certificate of TM Registration to the applicant.
Documents Required
Name of Trademark
- Text of Trademark Name
- Jpeg Image of Trademark Design
- Brief description of Goods and Services
- Particulars of Usage of TM
Form-TM-M - Authorisation (Power of Attorney on a Rs. 100 /- stamp paper duly signed by the applicant)
- Agents Name and Address for Communication
- To be Signed by Applicant
- To be stamped
Documents Required
Name of Trademark
- Text of Trademark Name
- Jpeg Image of Trademark Design
- Brief description of Goods and Services
- Particulars of Usage of TM
Form-TM-M - Authorisation (Power of Attorney on a Rs. 100 /- stamp paper duly signed by the applicant)
- Agents Name and Address for Communication
- To be Signed by Applicant
- To be stamped
Trademark Objection
Trademark Objection is the second stage of Trademark Registration Process. All the Trademark applications will be examined by the Registrar of Trademarks.
Trademark Examination Report
After examination of the application, the registry makes an examination report of application and will decide whether the application can be accepted or not. if accepted, the registry moved forward to advertise the trademark. In case if the examination report contains any observations, the same will be communicated to the applicant/trademark agent for submitting a reply to the examination report.
Trademark examination report shall contain the reason for objection. The applicant is required to file his reply in 30 days from the examination report. Generally, this examination report will be communicated to the trademark agent for action.
Thereafter, the applicant will be directed to file a reply to the objection within 30 days of the examination report. If the reply to the examination report found satisfactory, the Registrar shall proceed to accept the application and will advertise the same on Trademark Journal.
Reasons for Objections
The following are the major reasons marking the application as objected by the Registrar if Trademark:
- If the trademark does not have distinctive character or not capable of distinguishing the goods or services.
- If the trademark applied for registration is similar to the marks already registered/applied.
Reasons for Objections - Explained
The grounds of refusal of TM application can be divided into two parts:
- If the trademark does not have distinctive character or not capable of distinguishing the goods or services.
- If the trademark applied for registration is similar to the marks already registered/applied.
A. Absolute grounds of refusal :
Section 9(1) to (3) of Trade Marks Act, 1999
Section 9(1) prohibits the registration of those trademarks:
- Which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
- Which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services; or
- Which consist exclusively of marks or indications which have become customary in the current language or in the bonafide and established practice of the trade.
Section 9(2) states that a mark shall not be registered as a trademark if —
- it is of such nature as to deceive the public or cause confusion;
- it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
- it comprises or contains scandalous or obscene matter;
- its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
Section 9(3) A mark shall not be registered as a trademark if it consists exclusively of—
- the shape of goods which results from the nature of the goods themselves; or
- the shape of goods which is necessary to obtain a technical result; or
- the shape which gives substantial value to the goods. Explanation.— For the purposes of this section, the nature of goods or services in relation to which the trademark is used or proposed to be used shall not be a ground for refusal of registration.
B. Relative grounds of refusal :
Section 11 of Trade Marks Act, 1999 lists the relative grounds for refusal of registration.
- Section 11 of the Act stipulates that where there exists a likelihood of confusion on the part of the public because of the identity with an earlier trademark or similarity of goods or services, the trademark shall not be registered.
In other words, where there is similar trademark exist in the Trademark register the trademark shall not be registered.
The term “earlier trade mark” means a registered trademark or an application which has a date of application earlier than the trademark in question.
Timelines for Filing Reply to Examination Report
The reply to Examination Report has to filed within 30 days of the examination report with supporting documents. Also, the reply to the trademark examination report should be drafted with legal expertise referring decided cases on similar matters and judgements by Tribunals / Courts / International references.
If the reply to the examination report is to be filed through a different trademark agent, a fresh Power of Attorney is also required.. Once the filing is done then need to draft objection reply for the same.
Consequences of non-filing of Reply
Timely filing of reply to trademark objection is a crucial step of Trademark Registration Process. If the reply to examination report is not filed within 30 days of notice / or by the extended time, the Trademark application shall be marked as abandoned by the Trademark Registry.
In case the application has been marked as abandoned, the applicant has to file a fresh application for the Trademark.
Trademark Objection Reply - Requirements
Reply with in 30 Days
Applicant has to file reply to the same within 30 days of the objection. In case the reply is not filed within 30 days of report, the application will be declared as abandoned.
How to file reply to Trademark Objection
Trademark Objection Response
When the registrar is of the opinion that the application is liable for objection, the status of the application is changed to OBJECTED. A copy of examination report will be communicated to the trademark agent mentioning the reason for the objection and the applicant has to file reply to the same within 30 days of the objection.
Analyse the examination report
First step is to analyse the examination report and to determine the reason for the objection raised.
Draft reply to Objection
Next step is to prepare an objection reply mentioning proper answer to the objection raised with supporting rule of law and judgments supporting the case, along with other supporting documents and evidence that validates the response.
Timelines for reply
The reply to objection has to filed within 30 days of the examination report with supporting documents.
If the Reply is accepted:
If the response is accepted, the application will be processed further for registration and advertisement in the Trademark Journal.
If it is not accepted,
If it is not accepted, the registry will mark the matter for hearing and date / time will be notified to the Trademark Agent.
Documents Required
A formal reply to the examination report is required to be submitted with sold clarifications and evidences as to why the the application is to be accepted. Following are the documents required.
- Power of Attorney
- Reply to Examination Report
- Documentary proof of Trademark in commercial use which includes invoices, letterheads and communications, visiting cards, screenshots of websites, brochures, financial statements and all other evidences where trademark is being used.
Trademark Objection
Opportunity for Detailed Submission
Applicant gets an opportunity of being heard and it eliminates the chances of Trademark being rejected straightway.
A perfect Reply adds chances for Acceptance
If the objection reply is filed perfectly then there are highest chances of getting the trademark registered.
