Step-by-Step Guide to Trademark Protection

If you’re starting a new business or trade, a logo, name or signature is the first thing you choose to separate yourself from the rest. A “trademark” is that symbol you will use to do so. Registering a trademark is a legal process provided for under the Trade Marks Act, 1999. In this article, let’s get you acquainted with a tiny portion of the dirt and sweat and tons of paperwork that you will have to accept with arms wide open as a budding entrepreneur!

How to make a trademark application?

Before filing an application for registration of a mark in India, it is advisable to conduct searches to insure that the mark has not been used and registered by someone else in India. Such trademark searches can be made online, at the Office of the Trademark Registry, by anyone who has an account with an Indian bank to enable payment to that trademark office (you will also need an Indian address and fill form TM-54). But it is faster and easier to appoint a trademark law firm in India to do the searches and submit application for your company.

Selecting your trademark section

Before registering a trademark in India you should however know for which category (and subcategory) you want to register your trademark. You can choose your product or service categories in which your business operates (or plans to operate) at the World Intellectual Property Organization. The site shows you all the 34 goods classes and 11 service classes. For each class you register a trademark in India, you will have to pay extra, the selection of several subcategories will however not attract any extra cost. It is therefore advisable to select all the relevant indications of goods or services in the selected section. The application can be submitted at one of the Trade Mark Registry offices in India in Mumbai (Head Office), Delhi, Kolkata, Ahmedabad or Chennai. This will depend on the place where you reside or have your main place of business.

• The cost for the registration of a trademark in India is Rs. 3,500 for each section (this is a Government fee and does not include any property consultant or law firm fee for preparing the application and eventual oppositions to be filed in case the application is rejected).
• You will need to do a pre-filing search before filing your trademark.
• Once you register your trademark, you will be issued an official receipt with a TM number.
• Then an examination report is filed within three months from application. You will get a response to your registration either by an affidavit, a hearing or by an interview.
• Your application will be looked at to ascertain if it does not conflict with existing registered or pending trademarks. Based on this, an examination report is issued.
• As you defeat objections raised by the registrar, your application is then published in the Indian Trade Marks Journal, with an endorsement stating either that it has been accepted or that it is being published before acceptance.
• Once it is published, any person has three months (which can be extended to a month at the registrar’s discretion) to file a notice of opposition to registration.
• Acceptance or refusal of your trademark application will be considered once the opposition proceedings have been completed.

Types of trademarks available

• Names, including your own name or surname.
• An invented word or any arbitrary dictionary word or words. It does not need to be descriptive of the character or quality of the goods/service.
• Letters or numerals or any combination.
• Symbols
• Monograms
• Combination of colours or even a single colour in combination with a word or device.
• Shape of goods or their packaging.
• Marks constituting a 3-dimensional sign.
• Sound marks when represented in conventional notation or described in words by being graphically represented.

Documents required

• A soft copy of the logo in JPEG format.
• Date of first use of the mark.
• Name and address of the proprietor of the mark.
• Required fee.

What does the register of trademark contain?

• Currently maintained in electronic form, the trademark contains the following:
• The class and goods/services in respect of which it is registered including particulars affecting the scope of registration of rights conferred or disclaimers.
• Address of the proprietors.
• Particulars of trade or other description of the proprietor.
• The convention application date (if applicable).
• Place where a trademark has been registered with the consent of proprietor of an earlier mark or earlier rights.

Duration of trademark

The term of registration of a trademark is 10 years. This may be renewed for a further period of 10 years on payment of the renewal fees.

Costs for trademark transactions

• To file a new application there are set forms depending on the nature of your application. The forms are numbered as TM-1, TM-2, TM-3, TM-8, TM-51 etc: Rs 2,500
• To file a notice of opposition to oppose an application published in the Trade Marks Journal a (FormTM-5): Rs 2,500
• For Renewal of a registered trademark (Form TM-12): 5,000
• Surcharge for late renewal (Form -10): Rs 3,000
• Restoration of removed mark (Form TM-13): Rs 5,000
• Application for rectification of a registered trademark (Form TM-26): Rs 3,000

E-FILING OF APPLICATION

E-filing of a trademark application is a new service provided by the trademark registry office on its website. With it, you can:

• Complete an electronic application form
• Provide the associated attachments
• Complete necessary payment details.

Benefits of E-Filing

You will immediately:

• Receive a trade mark application number
• Online verification to assure error-free filing and obtain your filing date
• Speed up the registration process
• Print the completed application data and receive fee acknowledgement
• Save the data locally in your PC
• Be able to recall your contact details for subsequent applications
• You can also view online history and status of the applications filed by clicking “Status of Filed Application” and the online status of e-Payments.

Using the “” symbol with your trademark simply implies that you claim to be the proprietor of the trademark. There is no prohibition on the use of the symbol in India.

Contact

Trade Marks Registry, Mumbai (head office)

Intellectual Property Bhavan, Near Antop Hill Head, Post Office, S M Road , Antop Hill, Mumbai 400037

Tel: 022-24101177, 24148251

(Jurisdiction: Maharashtra, Madhya Pradesh and Goa)

P H Kurian, controller general of patents, designs and trademarks

Bhoudhik Sampada Bhavan, Near Antop Hill Head Post Office, S M Road, Antop Hill, Mumbai-400037,

Phone: 022-24132735, Fax : 022-24123322

Website: www.ipindia.nic.in