What is a Trademark?
A Trademark generally refers to a brand or logo.
Trademark registration can also be obtained for a business name, distinctive catch phrases, taglines or captions.
Properly used and promoted, a Trademark may become the most valuable asset of a business. Trademarks such as Coca Cola, HP, Canon, Nike and Adidas serve as an indication of origin of the goods as well as an indication of quality.
It is also essential to obtain trademark registration for the business name/trade name under the Trademarks Act. Registration of a company or business name under the Companies Act does not in itself give protection against others who might commence using identical or similar marks.
Use of TM, SM and symbols
‘TM’ stands for Trademark and ‘SM’ stands for Service mark. The use of TM and SM symbols notifies the public that the company is claiming exclusive ownership of the trademark and can generally be used by one who has filed a trademark application.
The symbol, can be used only once the trademark is registered and the registration certificate is issued. Also, you may use the registration symbol only in connection with the goods and/or services in respect of which the trademark is registered.
The registration process is the same for both trademarks and servicemarks.
MBSoffers a comprehensive range of trademark services which include:
* Trademark Search
* Opinion on registrability of trademark
* Filing and prosecuting trademark applications
* Responding to office actions
* Handling trademark opposition proceedings
* Dispute resolution and litigation
* Advice on validity of registrations
* Advice on infringement and passing off
* Issuing legal notice (cease and desist letters)
* Publishing caution notice
* Trademark watch and monitoring services
* Renewal of trademarks
* Trademark due diligence
* Drafting license agreements, franchisee agreements and assignment deeds
Before filling an application
Before adopting a trademark, a trademark search is highly recommended, as this will give an indication of any existing trademarks which have been applied for/or registered in the Trademarks Registry.
MBS provides trademark search services in India, assisting clients in the selection of brand names and ascertaining whether any identical or similar trademarks are already existing in the records of the Trade Mark Registry.
The cost of conducting a trademark search is quite insignificant in comparison to the efforts and costs involved in rebranding due to infringement of others rights.
Therefore, a trademark availability search is highly advisable before huge amounts of money and time are invested in a trademark and the guidance of an experienced trademark attorney are extremely worthwhile.
In order to conduct a trademark search, kindly provide us with the following simple information:
i) Trademark to be searched
ii) Goods/Services in respect of which the trademark is to be searched
The trademark search results are reported within 1 or 2 business days.
Classes of goods and services
Before filing a trademark application, it is necessary to identify the classes in which you wish to seek protection for your trademark.
An application should be made in the relevant classes of current goods/services as well as in classes where there is intent to use. All goods and services are divided into 45 classes.
The 9th edition of the NICE international classification system is followed in India.
The following list gives general information about the goods and services covered in each class.
Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.
Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.
Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.
Hand tools and implements (hand-operated); cutlery; side arms; razors.
Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.
Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Vehicles; apparatus for locomotion by land, air or water.
Firearms; ammunition and projectiles; explosives; fireworks.
Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.
Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.
Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.
Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.
Yarns and threads, for textile use.
Textiles and textile goods, not included in other classes; bed and table covers.
Clothing, footwear, headgear.
Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).
Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.
Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.
Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
Alcoholic beverages (except beers).
Tobacco; smokers’ articles; matches.
Advertising; business management; business administration; office functions.
Insurance; financial affairs; monetary affairs; real estate affairs.
Building construction; repair; installation services.
Transport; packaging and storage of goods; travel arrangement.
Treatment of materials.
Education; providing of training; entertainment; sporting and cultural activities.
Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
Services for providing food and drink; temporary accommodation.
Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.
Selecting a good trademark
A trademark must be chosen carefully. If you are launching a product and adopting a new trademark, please bear in mind that the scope of legal protection you would obtain depends on the type of trademark chosen.
The most common mistake is to choose a word that is descriptive of the goods or services. People do this in the belief that the consumer will know straight away what the product is or the service rendered. The same result can easily be obtained by combining a distinctive and fanciful trademark with a word which indicates the goods or services. E.g. Kodak film.
Descriptive trademarks are difficult to register and enforce. Although it may be easier to market such products at inception, such trademarks are offered the least amount of protection and therefore, in the long term, it would be difficult to stop your competitors from using the same or similar trademarks.
A better strategy would be to adopt a coined word, which has no reference to the goods/services upon which it is used. E.g. Canon
Another option is to adopt an arbitrary word, which has no relevance to the goods/services upon which it is used. E.g. Apple computers; Lotus software
The more distinctive a trademark is, the broader will be the available scope of protection.
GUIDELINES TO BE FOLLOWED:
AVOID Superlative or Laudatory words E.g. Premium, Gold, Deluxe
AVOID Descriptive words E.g. Coffee shop for coffee bars; Cooler for Refrigerators
AVOID trademarks Confusing Similar to existing trademarks
AVOID words which have direct reference to the Character or Quality of the product/service. E.g. Best Choice, Easy Cook, Super
AVOID Common Personal Names or surnames. Such names are registrable only if it has acquired distinctiveness through advertisements and long use
Well known geographical names such as SWISS chocolates or U.S.A. pizza are also not registrable.
There are also other factors to be considered in the adoption of trademarks, which is beyond the scope of this text.
Requirements for filing a trademark application
|1.||The name, address and nationality of the applicant. If the applicant is a partnership firm, the names of all the partners. Also mention whether any minor is a partner.|
|2.||If the applicant is a company, the country or state of incorporation.|
|3.||A list of goods and/or services for which registration is required.|
|4.||Soft copy of the trademark to be registered.|
|5.||If the mark contains or consists of non-English words, a translation of those words into English is required.|
|6.||If the application is to claim priority from an earlier filed convention application, details of that application is also required (application number, filing date, country and goods/services). A certified priority document or its duly notarized copy is to be submitted. If the certificate is not in English, a certified/notarized English translation is also required. If it is not readily available, the application can be filed based on the basic application number, date of the application and country of the application. A copy of the priority document can be submitted within 1 month from the filing date of the application.|
|7.||Date of first use of the trademark in India, if at all used|
|8.||Power of attorney simply signed by the applicant (no legalization or notarization is required). For Indian clients, power of attorney to be executed in 100 Rs. stamp paper and signed by the applicant. The power of attorney is not required at the time of lodging the application and can be submitted later with no additional cost.|
Trademark Registration Process
Upon filing of the application, the registry will issue us with an official receipt with the filing date and number allotted to the application. The application is then formally examined by the Indian Trade Marks Office, as to its inherent registrability and/or any similarity with existing marks. If an objection to registration is raised, an official examination report will issue. To overcome the objection, it is necessary to file a written response or presenting evidence of acquired distinctiveness and in most cases, an interview/hearing with the examiner is posted. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used.
If, following examination, the trade mark application is considered allowable, a Letter of Acceptance (TLA order) will issue, after which the trademark will be published in the Trade Marks Journal. If there are no oppositions within 4 months from the date of advertisement in the Trade Marks Journal, then the trademark registration certificate will issue.
Trademark Registration is a tedious process and it takes around 18-24 months to obtain registration in a straight-forward case, without any objections or oppositions. However, once the trademark application is filed, an application number is allotted immediately and the priority starts from the date of application.
Once the trademark is registered, it is valid for a period of 10 years from the date of application. The registration can then be renewed indefinitely as long as the renewal fees are paid every 10 years.
Flow Chart for Trademark Registration in India
Time Frame (Working Days)