TRADEMARK - WHO CAN APPLY AND HOW?

In India, the old Indian Trade and Merchandise Marks Act, 1958 was repealed by the new Trade Marks Act, 1999. The Act of 1999 was enacted to regulate the registration and protection of trademarks for goods and services and also to prevent fraudulent use of marks in the country. Here, it is pertinent to note that the Trade Marks Registry which was established in the year 1940 works as the operational and functional body of the Trade Marks Act, 1999, and the rules thereunder. As an operational body, the Registry acts as a resource and information center and is a facilitator in matters relating to trademarks in the country. Its main function is to implement all the rules and regulations of the trademark laws in India. In simple words, after filing an application for registration of a trademark under the Act of 1999, the Registry registers only those trademarks which qualify for registration under the Act. The application to register a trademark can be submitted to The Trade Marks Registry. It must be noted that when an application is submitted at any one of the four offices of the Trade Marks Registry in Delhi, Kolkata, Chennai, and Ahmedabad, it is rerouted to its Head Office in Mumbai.

Now, to understand the process of registration and protection of trademarks in India, it is necessary to know what the term ‘trademark’ implies. In simple words, a trademark is a sign that differentiates various products from each other and thus represents a business entity in a unique form. The owner of a trademark can get any form of a visual symbol like a label, word signature, device, combination of colors, brand name, number, tagline, or even a combination of all these elements protected to distinguish it from other similar goods or services originating from different businesses and also to identify their products and services. Only specific products of a certain class can be protected by trademarks as other businesses may register their marks that are identical or similar. For an applicant to get a trademark for his or her article, a clear representation of the mark and an identification of the class of products for which the mark is applied is necessary. A trademark needs to follow certain criteria such as the mark must not be descriptive, it must not include common last names or geographical names and it must not indicate royal patronage.

Who can apply for a trademark?

To register a trademark, any person including an individual, company, proprietor, or legal entity who claims to be the owner of the trademark can apply to the Trademark Registry. Once the trademark is successfully registered by the Trademark Registry, the person whose name was mentioned as the applicant in the Trademark Registration Form will be declared as the owner of the trademark. The owner can start using the registered trademark symbol (®) next to the trademark after receiving the registration certificate.

How to register a trademark?

One can follow this step-by-step guide to get a trademark registration certificate:

STEP 1: Search for a quirky brand name

This step comes before the official trademark registration process starts. The brand’s name plays a significant role when it comes to distinguishing a product from those of the competitors. Also, using a combination of invented and generic words to create a brand name can help boost the brand’s popularity. However, before finalizing a name, the applicant must do a quick search to make sure that no one else is already using the name.

STEP 2: Preparing the Trademark Application

After deciding the brand name, the applicant must fill the Trademark Application. Here, it is pertinent to note that there are 2 options one can take while filing for a trademark:

1. Filing a trademark under ‘Class One’ by filling Form- TM 1 and Rs. 3,500/- as application fees. A trademark registered under Class one will be class-specific and not apply to any product or service of other class.
2. Filing a trademark under multiple classes, also known as a collective trademark, by filling Form- TM-A. This will allow the applicant to register the trademark beyond one class.
3. One must also remember to attach the following documents along with the application:
4. A copy of the image of the brand logo
5. Applicant details like name, address, and nationality. In the case of a business entity, the state of incorporation must also be mentioned.
6. Proof of claim of the proposed mark being used before in another country must be attached if applicable.

STEP 3: Applying for Trademark registration

The application for trademark registration can be filed either manually or online. The e-filing system is more convenient because the acknowledgment of the application submitted by the applicant is issued immediately. However, in case of manual filing, the applicant must go to one of the Trade Marks Registry located in Mumbai, Delhi, Kolkata, Chennai, or Ahmedabad to submit the application. Later on, the acknowledgment receipt of the application is sent to the applicant within 15-20 days. The applicant can start using the ™ symbol next to the brand name after receiving the acknowledgment receipt. 

STEP 4: Examination of the Trademark Registration Application

The Registrar at the Trade Marks Registry examines the application and checks whether the brand name complies with the trademark laws and is not in conflict or in dispute with other existing registered or pending brands. 

STEP 5: Publication in the Trademark Journals

Upon successful examination, the brand name or logo is published in the Trademark Journal by the Trade Marks Registry. It must be noted that the mark is accepted only if no one opposes to or files an opposition complaint within 3 months from the date of publication.

STEP 6: Issuance of the trademark registration certificate

The Registrar accepts the trademark application if no one raises any opposition within the stipulated period of 90 days. Later, a Certificate of Registration under the seal of the Trade Marks Registry is issued to the owner of the trademark. This allows the owner to use the registered trademark symbol (®) next to the brand name.

Lastly, it must be noted that the entire process of obtaining a trademark registration certificate in India takes 15-18 months and the trademark is initially registered for 10 years but must be renewed within 6 months before the date of expiry of the registration.