Simple steps involved in registration of Trademark in India

SIMPLE STEPS INVOLVED IN REGISTRATION OF TRADEMARK IN INDIA This blog helps you a lot to know about the simple steps involved in the registration of trademark and also the procedure for filing through online.

• Chiefly, trademark is identical sign, design or simple expression which helps to identify products or services of a particular company form those of other competitors. It is nothing but a name or symbol that a company uses on its goods or services and cannot be legally used by some other company. Trademark registration protects the rights of the owner over its products, sign and design etc. In thus blog, we will discuss briefly about the simple steps involved in the registration process.

SIMPLE BENEFITS OF TRADEMARK REGISTRATION • Trademark registration is used for the purpose of protecting a word, symbol, brand name or logo of a company or any business enterprises. A registered trademark is an intangible asset for a business and it helps to gain good name among the customers.

It also helps to protect the company’s investment through brand or symbol.

THE BENEFITS OF TRADEMARK REGISTRATION ARE: 1) Exclusive Rights – Trademark registration gives an exclusive right to the owner of the mark to use the mark in respect of the goods or services. A registration allows the owner to sue for infringement.

2) Security – A registered trademark can be guaranteed as security to obtain loan facilities.

3) Initiation of Legal Proceeding- Registered trademark gives simple legal rights to the owner to initiate legal proceedings against infringers those who infringe brand, logo, sign etc.

4) Deterrent – A registered trademark restricts or warns other traders or enterprises from using similar and identical trademarks 5) Right to use the symbol – Once the trademark is registered, then the symbol or simple word registered can only be used for the goods and services mentioned in the registration.

6) Foreign territories – A trademark which is registered can be used as a basis to obtain registration across globally, facilitating protection of the brand worldwide.

WHAT CANNOT BE REGISTERED AS TRADEMARK? Trade Marks Act, 1999 of sections 9 and 11 give the grounds for refusing a trademark.

Section 9 mentions the absolute grounds and section 11 mentions the relative grounds for refusal.

Devoid of distinctive Nature – The sign of an item or administration which isn’t of an unmistakable sort would not be a trademark. The enrolment of unmistakable trademarks is precluded under Section 9(1) (b) of the Trade Marks Act, 1999 except if they are particular.

Names or Surnames – Names or surnames cannot be registered as trademark in India if they do not possess a distinctive character. Also, if such names are used falsely, then they will not get the status of Trademark at any cost.

Numerical – Numbers cannot be utilized as a trademark. In specific cases, the courts in India have reasoned that numbers do not have a particular nature connected to them, consequently, not fitting the bill to be a trademark.

Geographical Location – Geographical locations cannot be used as trademarks or in logo or as a brand name. In Imperial Tobacco Company of India Ltd has listed that “the trademark “Shimla” where the name is composite in character. It is a notable hill station of India. Its geological implication is, subsequently, plain and clear.

Colour – The Trade Marks Act does not refuse the usage of colour. In any case, Indian Registry and Courts don’t incline toward utilizing hues as trademarks, for the reasons that the accessible stock will be drained and the courts will be heaped up with cases.

Sound – simple Melodic notes as melodic documentations are acknowledged as trademarks in India, yet clamors, for example, pooch woofing cannot be a trademark.

Smell – Smell cannot be registered as Trademark in India. It is difficult to distinguish between different smells.

TRADEMARKS VS. COPYRIGHTS The most frequently confused intellectual property rights are copyrights and trademarks. So if you are in the business of creating unique goods in the stream of commerce, it is very essential to know the difference.

Copyrights and trademarks protect distinct creations. Generally, Copyrights protect creative or intellectual works, and trademarks can be applied to names, phrases, and logos. Copyrights protect the rights of people who create literary, musical, artistic dramatic and certain other intellectual works like history tests, and other software code. Trademarks protect the use of a company’s name and its product names, its brand identity like logos and its slogans.

CAN I TRADEMARK A BUSINESS NAME? Steps for Trade marking a business name: • Check the name in the trademark, to make sure no one else in the state is using it.

• Then, if no one else use the name you want to use, then register your business name with your state. If you are forming a new business as a corporation, partnership or LLC, your business name is registered automatically as part of the business registration.

After all this, you might want to consider trademarking that name. Moreover, not all business names cannot be trademarked. There are some specific criteria for trademarking the business names.

IS THERE ANY NEED FOR ATTORNEY TO FILE A COPYRIGHT OR TRADEMARK APPLICATIONS? Both the Copyright and trademark registry have online services that allow you to register a copyright or trademark by yourself. But having an attorney help to you is advisable: • An attorney can do more research on the databases, make sure you are not using a trademark or copyrighting something someone else has first claim to.

• IP attorneys know how to go smooth through the process to get a trademark or copyright registered faster, and • An attorney with knowledge of your business and IP law can help you if you need to file a lawsuit against someone for violation of your copyright or trademark.

TRADEMARK VS. PATENT A patent is an intellectual property right relating to an invention, granted by the Patent and Trademark Office in exchange for public disclosure of the invention. Some of Patent able materials include machines, industrial processes, manufactured articles and chemical compositions. The duration of patent protection depends upon the type of patent approved: • Design Patents – 15 years from issuance for applications filed on or after May 13, 2015.

• Utility patents and plant patents – It is for 20 years from the date on the application for the patent was filed The requirements for trademark are not as strict as those required to qualify for a patent.

Trademarks offers the owner simple exclusive right to use certain images and phrases, and the right to prevent others from using a similar mark that would create confusion among consumers.

WHY IS TRADEMARK VS. PATENT IMPORTANT? It’s important to know about the trademark or a patent or both. It’s also important that a business owner understands the differences and applies for the correct one. Applying for a trademark when you are in the need of patent or vice versa, wastes time and money. Going through the process of filing an application for either takes a while, although a patent application takes longer.

FILING FOR A PATENT • Search for existing patents to make sure that your idea not exists already • Fill out the correct patent application like utility, design, or plant and file it with the USPTO. • If you are submitting a design patent, you should choose to hire an experienced design patent drafter.

The application requires a specific format and all views of the item from every angle.

• Track the status of your application through the USPTO website.

• Once you received the approval, you can add the patent number to your product, marketing materials, website, and any other medium.

SIMPLE REQUIREMENTS OF TRADEMARK REGISTRATION The following details are required for filing the Trademark Application form for trademark registration.

• 1. Name of the Applicant – whether individual/company/proprietorship firm/trust/partnership filing the application. In case of, joint applicants or partnership details of all the applicants • 2. Address of Applicant filing the application.

• 3. Nature of the entity filing the application • 4. Nature of products or services for which the trademark is used.

• 5. Nature of your business whether he is a Manufacturer/ Trader/ Service provider.

• 6. If the mark is already used, then the date since when the mark has been in used in India.

• 7. Date of the first commercial use of the mark across the world.

• 8. A copy of the mark/logo for which trademark is sought.

• 9. Form TM-48 duly signed by the Trademark Attorney.

STEPS INVOLVED TRADEMARK REGISTRATION PROCESS Below are the simple steps for E-filing of Trademark Registration Process in India: Register on trademark office portal The first and the foremost step to register on the trademark office portal. In post registration the user can login either using user ID or through digital signature.

Trademark search The initial process before registering for the trademark is to search whether the business name, brand name or logo is similar to already registered trademarks. The search can be performed at trademark search portals available in the website.

FILING OF TRADEMARK APPLICATION Once a trademark search is done, then the application for trademark registration should be filed with the Trademark Registrar. The application for registration of the trademark should done in the prescribed manner along with all the necessary documents and filed with the prescribed government fee for TM registration. Once if the application is filed, the applicant can start using TM mark over the trademark.

Once the TM application is filed and a receipt is generated the application is categorized as a new application, the trademark department reviews those application and otherwise, issues a clarification.

EXAMINATION OF TRADEMARK APPLICATION Examination of application is done by the examiners of TM and if the application is advertised in trademark journal. However the application may be processed as objected either under absolute grounds for refusal or through relative grounds for refusal as prescribed in The Trademarks Act, 1999 and an examination report is issued accordingly. The objection must be resolved within prescribed time period of its communication to the applicant.

SHOW CASE HEARING A hearing is scheduled by the examiner if he is not satisfied with the trademark objection reply that are filed. The notice will be issued to the address of the application in addition to uploading same to the portal. The applicant needs to appear in person or with the trademark attorney to put before the grounds of application and request to pass the application to next stage.

Publication of Mark in Trademark Journal The trademark is published in the Trade Marks Journal, after examination. Within four months of the publication of the trademark, the application will be processed by the Registry if there is no opposition raised by Third party. In case there is an opposition filed by the opponent, hearing process will be conducted by Registrar to make notice of sufficient grounds from both the parties to establish their claims. Considering the facts of the case and all the supporting documents, the Registrar makes decision in favour of either party to the case.

TRADEMARK REGISTRATION & CERTIFICATION Once the application proceeds for trademark registration, following publication in Trademark Journal, a registration certificate under the seal of the Trademark Office is issued. The details of the Registered Trademark can be entered into the Central Register of Trade Marks maintained by the Trade Marks Registry. Registered trademark symbol R can be used once the certificate is received by the applicant.

The whole process of online trademark registration usually takes nearly 12-18 months. The trademark once accepted and registered, it is valid for a period of 10 years from the date of Application filed with Trademark Registry. After the end of 10 years, the trademark needs to be renewed by filing a Renewal Application under TM-R along with the prescribed fees. However, if the Trademark registered is not renewed before six months of its expiry then it will be removed from the register of Registrar.

CONCLUSION Although the online trademark registration process in India is complex and time taking procedure, the Government has taken few steps to fast track the process. In addition to same, Government has also introduced provisions for granting rebate to the applicants falling under category of Micro, Small and Medium Enterprises along with Start-ups registered with Government of India.