Trademark Registration Process in India
Before embarking on understanding the Trademark Registration, Trademark Registration Process in India, having an understanding of certain important aspects of Trademark are vital. Important amongst them are:
Trademark Registration Process and indicative timeline
What kind of Trademark can be registered in India?
Word mark (it includes one or more words, letters, numerals, or anything written in standard character),
Device mark (it includes any label, sticker, monogram, logo, or any geometrical figure other than word mark),
Colour (Mark in which the distinctiveness is claimed in the combination of colour) it can be with or without device),
Three-dimensional Trademark (it includes shape or packaging of goods), and
Sound mark (any distinct sound can be registered as trademark).
What is Word Mark?
A word mark is a type of trade mark which is a combination of one or more words, letters, numerals, or anything written in standard character like brand name or slogan etc, without any artistic, graphic design or pictorial representation. Word mark provides stronger and wider protection as trademark because it can be used in any format without any restriction of font, style, graphic design with respect to the class of goods/ services for which it is registered. Eg. TATA or Google etc.
What is Device Mark?
A device mark refers to a type of trademark that includes a unique and distinctive visual element, such as a logo, symbol, or design, which may be combined with words, letters, or numbers. In layman terms it is also referred as logo. Example of device mark are Apple logo, Nike Swoosh or Windows logo etc.
What is Service Mark?
A service mark is any trademark that represents the source of a particular service. Indian law does not recognise the term Service mark.
How application for registration of Trademark is filed in India?
Trademarks are registered for a particular class of Goods and/or Services. One Trademark can be registered for more than one class of goods and services as per the business requirements.
What are Classes in Trademark?
For the purpose of registration of Trademark to specific goods and classes with which they are being used, the goods and Services have been categorized in 45 different Classes.
Classes 1 - 34 are related to Goods while Classes 35 - 45 refer to the Services.
At present, Indian law recognises the NICE Classification (International Classification of Goods and Services) published by WIPO for the purpose of Trademark registration.
What is the statutory fees applicable for filing of the Trademark Application?
Statutory fee (fee collected by government) is as prescribed by the Trademark Office. Statutory fees is calculated on “one trademark for one class” basis.
E.g. if you are filing for registration of one trademarks in two classes, the statutory fees will be twice of the prescribed fees. Similarly, for three classes, it will be thrice.
Does statutory fees for fling application for registration of trademark vary on the basis of the category of the applicant?
Statutory fees for fling application for registration of trademark varies on the basis of the category of the applicant. Applicants of few categories can file application at reduced fee.
E.g the fee for individual, startup and small entities is less in comparison to that of other Companies/Body corporates. For filing new application (TM-A), an applicnt who is an individual or startup or small enterprise, the statutory fees of INR 4500 is applicable, whereas in all other cases, the statutory fees applicable is INR 9000.
When should you file a Trade Mark?
Trademark can be filed before use of the trademark as “proposed to be used” or by claiming "prior use" if the Trademark is already in use.
An early filing in “proposed to be used” stage is always beneficial. Such filing has benefits like ensuring priority, opportunity to modify the Trademark before filing, if identical to any registered trademark. It also saves investment in a Trademark which might not be registered.
How Prior Use of Trademark can be claimed?
Prior Use refers to such situations where the use of Trademark has commenced before the filing or registration of a conflicting trademark by another party.
To claim Prior User rights, you need to provide evidence by way of Affidavit with supporting documents, that you have been using the Trademark in India prior to the date of application for the subsequent trademark. This evidence may include documents such as sales records, invoices or bills, and any other records that establish the prior use of the Trademark.
Why is Trademark Search recommended before filing the Trademark Application?
Trademark by definition needs to be unique/distinct from any other trademark. Only distinct trade mark are eligible for legal protection.
Trademark search, before filing of application for trade mark registration, helps in identifying if any similar or same mark is already registered. Similarity with already registered trademark may result in rejection of the application. Thus, a trademark search prior to filing is preferred as it may save applicant’s time and money invested in filing the trademark registration application and get rejected on the ground of similarity.
Is it mandatory that Trademark Search should be conducted by an Attorney?
No, Trademark Search can be conducted by the applicant without help of an attorney on public search platform at IP India.
However, it is to be noted that the process of trademark search and interpreting the result is a bit complex and people prefer to take services of a trademark attorney. The attorney can help in faster, efficient, and comprehensive search with better analysis of the search result.
How can I check the status of my Trademark application?
Once registered, how many years can I enjoy the benefits of registration of Trademark?
The registration of the Trademark is valid for 10 years from the date of filing of the application for registration. It can be renewed for another 10 years by paying the requisite renewal fees. There is no restriction on the number of times a trademark registration can be renewed.
I have seen people using ™ and ® with respect to their Trademarks. What does that mean?
™ refers to the mark is being used as Trademark while ® suggests that Trademark is an officially registered Trademark.