Applicants Guide to Trademark Filing - IIPTA · “Tirupati laddu”, “Bikaneri bhujia” or any other geographical indication name. 3. Avoid Descriptive Words : Words that describe

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Applicants Guide to Trademark Filing

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This guide is to help you to get your Trademark registered and to create a goodwill for your

products and services in the Indian market. It is important that your products and services shall get recognised by a distinct mark or name so that a reputation is created in the market. This guide will provide you a step by step introspection into the procedure of trademark registration in India.

OVERVIEW

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SUMMARY

This guide will make you aware of the steps involved in filing and obtaining a trademark for your business in India. A trademark is a recognizable sign, symbol,

design or expression which identifies products (package, label, voucher etc.) or services of a particular entity from that of others. The trademark owner can be an individual, business organization, or any legal entity. As such, trademarks are closely connected with your business reputation, and should be protected. Choosing an appropriate mark is the first step towards securing your trademark. You shall make sure that the mark selected by you does not belong to a prohibited category. After this you have to conduct a search in order to verify whether the selected mark was already in use by another entity or not? By the time you feel that your mark is entirely new and unique, you can prepare a trademark registration application. This Application has to be filed at the Registry in whose jurisdiction the proprietor’s Principal Place of Business lies. When you are ready with your application, you must first file a request for preliminary advice from the Registrar, so that he can point out the corrections that can be made in the application. Only a complete and perfect application is granted an acceptance by the Registrar. Thereafter when the Registrar has accepted your application for registration, the application is sent for publication in the Trade Marks Journal to let any interested person know about the trademark and if he would like to oppose the registration of the trademark at any stage, he can do so within 3 months of filing the application. The registrar cannot decide the registration in your favor without giving a chance to opposition party. You or your attorney have to attend all the dates of hearing to avoid abandonment of the application. If the opposition proceeding is decided in your favour or in case if there is no opposition against your trademark, then your trademark is legally registered and a certificate is awarded for the same in the form of a Trademark Registry’s Seal on it. The trademark registration expires in every 10 years and it has to be renewed every 10 years. Failure to renew the trademark will lead to removal of the Trademark from the Trademark Register, thus leaving your trademark vulnerable.

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I. Introduction .........................................................................................................

II. Steps for filing a trademark ................................................................................

• Step 1 : Selecting a Good Mark ...................................................................

• Step 2 : Conducting a Trademark Search (for existing trademarks) ......

• Step 3 : Preparing a Registration Application for your Trademark ........

• Step 4 : Request for Preliminary advice from the Registrar ...................

• Step 5 : Correction of the Application as advised by the Registrar .........

• Step 6 : Advertise the Trademark Application in the TM Journal ..........

• Step 7 : Waiting for any Opposition over your trademark ......................

• Step 8 : Attending Opposition proceedings (Filing of counter-statements

and evidences to support your trademark).................................................

• Step 9 : Get the Registration Certificate issued ..........................................

• Step 10 : Proper use and maintenance of the Registered Trademark .......

III. Do’s and Don’ts of Trademark ............................................................................

IV. Flowchart for trademark filing ...........................................................................

TOPIC

TABLE OF CONTENTS

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1 HOW TO SELECT A GOOD MARK

INTRODUCTION TO TRADEMARK

The TradeMarks Act, 1999 and the Trade Marks Rules, 2002 govern the law relating to trademarks in India.

“Trademark” means a mark (device, brand, heading, label, ticket, name, signature, word, letter, numeral) capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours. The word “mark” is thus intended to be interpreted broadly and no type of sign is automatically excluded from registration. Marks which will require special consideration are colours, shape of goods, sounds and smells.

GRAPHICAL REPRESENTATION

A graphic representation of the trade mark is to be given in the space provided on the application form for that purpose (size 8 cm x 8 cm). In any case, the size of such representation shall not exceed 33 cm x 20 cm with the margin of 4 cm on the left hand 24 side.

WHO MAY APPLY ?

Any person “claiming to be the proprietor” of the trade mark ‘used’ or ‘proposed to be used’ by him (company, or association of persons or body of individuals, society, HUF, partnership firm, whether registered or not , Government, trust etc) may make an application in the prescribed manner for registration of his trade mark.

JURISDICTION FOR FILING APPLICATION

• A trademark application is to be filed at the ‘appropriate office’ of the Registrar within whose territorial limits, the principal place of business in India of the applicant is situated.

• In the case of joint applicants, the principal place of business in India of the applicant will be that of the person whose name is first mentioned as having a place of business.

• If the applicant has no principal place of business in India, he should file the application at that office within whose territorial jurisdiction, the address for service in India given by him is located.

• No change in the principal place of business in India or in the address for service in India shall affect the jurisdiction of the appropriate office once entered.

STEPS FOR FILING A TRADEMARK

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To ensure that your goods are recognised by a Brand name or mark, you must select a trademark to represent the goods. The trademark should be a word capable of being read and spoken, distinct and such

as is capable to distinguish your goods from those of others. The Law prohibits certain kind of marks and name form registration, all those have to be kept in mind before filing for registration of a mark, but in general you must select a mark with following features:

APPLICANT’S GUIDE TO TRADEMARK FILING

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Marks that can be adopted as trademark :

• Any name (including personal/nickname of the applicant or predecessor in business or the signature of the person), which is not unusual for related trade to adopt as a mark.

• An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.

• Letters or numerals or any combination thereof.• Devices, including fancy devices or symbols• Monograms• Combination of colors or even a single color 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.

All of the aforesaid marks have to be sufficient for the purpose of identification of and distinguishing the goods, in relation to which they are being used, from other goods.

Inventive and distinctive words - These kind of words are the best Trademarks as they are your own creation and once you use an invented word, your goods are known from that very name instead from the genre they belong to. Such words can be made by combination of two words in same or different language and so on. The word should have the effect, such that no one has ever heard it before. Examples of such inventive and distinct words are XEROX, GOOGLE, POLAROID, EXXON, CLOROX etc.

Marks that should be avoided :

of goods, thus it will create a confusion. Its very difficult to get a surname registered as it is outrightly rejected due to the absence of distinctiveness.

2. Avoid Geographical Names : These names should be avoided as they are accepted as geographical indications under other law. Law does not allow any person to get monopoly over the name of a geographical region i.e. you cannot name your good as ‘Paris Snacks’, “Mysore silk”, “Tirupati laddu”, “Bikaneri bhujia” or any other geographical indication name.

3. Avoid Descriptive Words : Words that describe

the nature or quality of goods like ‘BEST’ or ‘FRESH’ cannot be registered as trademark since these are the general words and if allowed for registration, it will cause a haphazard situation. Every person would like to register his goods or service by the name that describe as good and best thereon. You should avoid such descriptive words as they get rejected by the registrar at the very beginning. A very good example is rejection of name “SILK” for clothings but acceptance for Cadbury’s chocolate since it was not descriptive to the later.

4. Avoid confusing marks : You cannot adopt name

or mark already in use by someone else. By doing this, the whole purpose of trademark would fail. Instead of being distinct it will cause confusion in the market as well as in the minds of general public. But this does not mean a name used by any product brand cannot be touched, you can use a name already in market for some other class of goods. For Example, a trademark used by chocolate manufacturer and the trademark used for shampoos can be same as in case of the trademark “DOVE”.

5. Avoid generic terms : Generic names or marks are those that are commonly used by consumer class for a genre of goods or a class of services. For example, you cannot keep your medicine’s name ‘Painkiller’ as it is a generic term and will cause confusion.

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1. Avoid Surnames : You might be thinking of using your surname as a Trademark, but we advise not. Surnames are not distinct as they can be same for more than one person. The other people might also use their same surname for the same class

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Marks prohibited by law :

Further the law prevents registration of Following types of trademarks. You must be aware of these before selecting a mark for your goods:

(i) The mark should not be such as to hurt religious sentiments of any class or section of citizens of India; or

(ii) The mark should not be such as to contain scandalous or obscene matter; or

(iii) The mark should not contain marks already prohibited by the Emblems and Names (Prevention of Improper Use) Act 1950; or

(iv) The mark should not be violative for any other law recognised for the purpose of marks in India (including ‘Passing off ’ which prevents copying of well-known marks).

Therefore, now you might have known a lot of safeguards to be kept in mind before selecting a mark in order to get it registered. Our organization has professionals that advise you on whether your mark will pass the test or not, and what can be done in such situations. It is considered best to take advice of a professional before deciding a mark for your goods as the professional is well aware of the law.

2 HOW TO CONDUCT A TRADEMARK SEARCH

A person may also conduct a trademark search himself on the site www.ipindia.nic.in or on other online sites available on google. You have to type the name that you have selected as a mark, followed by the selection of class of goods in which you desire to get the mark registered. After clicking on the search button, the database will show results for similar name or marks if already registered with the Indian Trademark Registry. Classes of goods are genre of goods differentiated internationally and the same classification applies in India. Classes of Goods are given under Schedule IV of the Indian Trade Marks Rules 2002. This is how the search site of IP India looks like:

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Technically this is your first step towards registration of your mark. A Trademark Search is conducted to ensure that the similar name or mark has not been registered for any other person or organisation. You

can request the Trademark Registry Office for an official search. This might take a month or more.

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You have the option of hiring a trademark attorney to handle your registration, he will take care of all this procedure. It is easier for IP organisations like ours to conduct a Trademark Search from not only India but throughout the world using different database. The time taken by IP organisation in conducting a Trademark Search is less than a day. The faster this search is conducted the earlier your trademark is filed for registration, therefore it is suggested to hire a Trademark attorney for your trademark search.

3 HOW TO PREPARE A TRADEMARK REGISTRATION APPLICATION

Q1. Can I file a Trademark?Any person who suppose to be a proprietor of the mark can file a registration application. In case of a Company, any person of the concern can file the registration in his name and then assign the mark to the Company.

Q2. Will registration make me the only owner of the trademark?Yes, Registration of the mark by your name means that you are the only person authorised to use the trademark. You have the power to assign or transmit the usage rights of the trademark to anyone you would like to.

Q3. How will I prepare my Trademark Application?A Trademark Application is generally a request to the Registrar to enter your mark in the Trademark Register. Following Forms are prescribed for preparing trademark applications:

• To register a Trademark in a single class of goods - TM 1

• A Convention Country application - TM 2• Textile trademark application - TM22• Application to register a series of trademarks for

more than one class of goods - TM 8

Although some other forms are also prescribed, but generally these are the ones that come most handy. The application has to be filed in triplicate. Five additional representations of the trademark in graphical form have be attached to the application.


You will require following particulars for filing a trademark application:

1. Name, Address and Nationality of the applicant. If the Applicant is in partnership, firm name and details of all partners is required to be filled;

2. If the applicant is a company, the country and state of incorporation of the Company and proof thereof;3. A definite list of the goods and/or services for which the registration is required; this means to specify the class of

goods/services in which the applicant desires to register the trademark;4. A graphical representation of the Trademark, five copies of the representation have to be filed;5. If the mark consists of non-English words a translation of those words have to be filed; 6. In case of a convention application details of the priority application and a notarized copy of the priority document.7. Date of first use of the trademark, if any;8. Power of Attorney in order to assign the filing rights to the Trademark Attorney hired.

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Before filing a Trademark Application it is necessary to consider the following questions that might rise in your mind:

It is better to hire a Trademark Attorney, who will file the application with these details in the very prescribed manner. An application properly so filed by a Trademark Attorney is rarely rejected.

Q4. Where am I to file the Application?The Application has to be filed at the Registry in

whose jurisdiction the proprietor’s Principal Place of Business lies. In case the applicant has his place of business outside India, he can file the application at the Registry in whose jurisdiction the place of residence, or the place referred for service of notices lies. The place of service is generally your attorney’s office address.

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4 HOW TO GET A PRELIMINARY ADVICE FROM THE REGISTRAR

5 CORRECTION OF APPLICATION AS ADVISED BY THE REGISTRAR

• Firstly it provides you the details of corrections which are to be made in the Application.

• Secondly, it saves the expenses of the further proceedings, and a later rejection on any ground.

Hence, it is necessary for you to correct the application as advised by the Registrar. Only a complete and perfect application is granted an acceptance by the Registrar.

• If you do not make corrections in the application and there lies any error or shortcoming, then the registrar might refuse the application or accept it with certain modifications or conditions.

• The Registrar can also ask you to amend the application after accepting it and at any time before granting the registration. You will have to amend your application as and when directed by the Registrar.

• After the registrar had granted acceptance to an Application, he can withdraw such acceptance if he feels that application has any error or the conditions laid on the registration should be different. Even in this case you will have to alter your application as directed by the Registrar.

Once you hire a Trademark Attorney, he files the application in perfection and keeps a practical view on the processing on the application, to ensure that no conditions are laid and no modifications are made against your interest.

When you are ready with your application, you must first file a request for preliminary advice to the Registrar, so that he can point out the corrections

that can be made in the application. The request for preliminary advice has to be filed in Form TM - 55 along with the prescribed fee of 1000 INR. The Correction so suggested by the Registrar have to be done, otherwise the application will get rejected.

The Preliminary Advice given by the Registrar is important to you in two aspects:

Below is a picture of IP Office in Dwarka Sector 14, India.

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6 ADVERTISEMENT OF TRADEMARK APPLICATION IN THE TM JOURNAL

and its acceptance is sent for advertisement in Trademark journal by the Registrar. When the Registrar has accepted your application for registration, the application is sent for publication in the Trade Marks Journal. The Registrar may advertise your application in following other conditions as well:

1. before acceptance, if the application is getting blocked on any absolute ground; or

2. before acceptance, if the application is getting blocked on any relative grounds; or

3. in any expedient circumstances; or4. any correction or modification to the application

in between the proceedings.

The application is advertised in order to let any interested person to know about the newly filed trademark and by this way, he/she can oppose the registration of the trademark at any stage if they would like to do so. The time limit for which you will have to wait for oppositions after your application is advertised is 3 months. This term can be extended by the registrar by one month in necessary circumstances. Below is an example how your trademark is advertised in the Trademark journal.


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The Trademark attorney ensures that your trademark is advertised in its true form in the TM Journal and does not get refused by the registrar at a later stage. At that instant, the application

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7 WAITING FOR ANY OPPOSITION OVER YOUR TRADEMARK

one’s favor. The registrar cannot give the final decision in your favor without giving a chance to opposition party. If you would directly go for registration of trademark before waiting for any opposition within the 3 months, then it may will lead to a conflict at the later stage in the form of infringement suits. Thus, in order to avoid litigation at a later stage, you have no choice but to wait for any opposition to come.

Apple’s objection to a Chinese food Company

8 ATTENDING THE OPPOSITION PROCEEDINGS

yourself. Even your attorney can attend them on your behalf. Each opposition filed is notified to you and your attorney.

Q1. On what grounds can a person Oppose my Trademark?This question has come legitimately. See, the

requisites we told you while selecting a mark are the grounds on which other person can oppose your trademark. If your mark does not conform to those features and you do not follow the dos and don’ts in step I your application gets opposed and fails at this step. This how the first step is more important as it kills your application at the verge of victory.

Counter-statement - Is your reply to the opposition of the other party. In reply to the opposition you state the grounds as to why your trademark is good to be registered. This work is best handled by an experienced attorney. The counter-statement should be filed within two months of receipt of the notice of opposition.

Submission of Evidence - This is the response of the opponent to your counter-statement. The evidences have to be filed within two months, otherwise the opposition is deemed abandoned by the other party. After the opponent has filed evidences you too will have to file evidences supporting your trademark. Evidences supporting your trademark may be of nature :

1. prove as to no similar or identical trademark is existing; or

2. prove that your word clears all requisites and there exists no technical fault in the application. etc.

Your attorney handles submission of evidences better than you as he is in practice of law.

Q2. Do I get a chance to say my side?Yes, the Registrar is bound to give a chance of hearing to both the parties. Within three months of filing of evidences the Registrar calls a hearing, and a notice to this effect is given at least one month in advance to you and your attorney. You can also seek an adjournment if you are not able to attend hearing on the date decided by the Registrar. You will have to respond to the notice of hearing in affirmity as default in this will lead to abandonment of your application.


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You will have to wait for 3 months in order to have any opposition over your trademark as it is a principle of natural justice to give each party a chance before giving judgment in

Your trademark attorney does his best in filing to avoid any opposition and advises you at each stage, but even if on advertisement your application faces opposition, you need not attend them

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You or your attorney have to attend all the dates of hearing to avoid abandonment of the application. Your attorney keeps track of the dates of your hearing and ensures to attend them for you. If you or your attorney defend your application well and the opposition fails to prove their point then the trademark gets registered. The filing and document keeping required for such complex procedure of opposition are best left to a trademark attorney, they have the experience and forte of handling the proceedings. Our organization have professionals who have been attended oppositions for our clients regularly and favourably.

9 GET THE REGISTRATION CERTIFICATE ISSUED

then your trademark is legally registered and a certificate is awarded for the same in the form of a Trademark Registry’s Seal on it. This certificate is a proof of grant of your rights straight from the Government of India. Once you collect this certificate from the registry office, you are the exclusive owner of the rights in your trademark and this is a conclusive

evidence which can be presented before any court of law to prove your propriety in the mark.

10 PROPER USE AND MAINTENANCE OF THE REGISTERED TRADEMARK

maintaining the Trademark as a right. The trademark registration expires in every 10 years and it has to be renewed every 10 years. Failure to renew the trademark will lead to removal of the Trademark from the Trademark Register, thus leaving your trademark vulnerable.

Non-use of your mark will also result in cancellation of register. If you do not use your mark for a continuous period of 5 years, the trademark is deemed as abandoned, and will be allowed for registration to another person. This means you cannot register a mark and leave it, it is not a property to remain in your pocket forever, you have to practice this right to enforce protection given to it.

When the opposition proceeding is decided in your favour or in case if there is no opposition against your trademark,

Registration of your trademark does not mean that the mark will remain forever and it will create a goodwill for itself. Efforts are required for

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DO’s & DON’Ts OF TRADEMARK

Proper use of your mark is a crucial aspect in acquisition and maintenance of the mark. Proper and prolonged use of the trademark preserves the mark’s ability to identify the origin of your products/services and minimizes the likelihood of it becoming generic, or abandoned. One must remember that Trademark rights are based on ‘use’. Following are some do’s and don’ts for your trademark use:

(i) Always give a notice of Trademark rights Putting a Registered symbol like following:

A registered trademark is shown by using the ‘R’ mark. Examples of how it can be used are given below:

Above examples show that ebay and Mcdonald’s are non-registered well-known marks, but Coca Cola and Starbucks Coffee are registered marks. But in both cases they give proper notice of their mark. Proper notice of your mark will help you in case of infringement, such a notice prevents the infringer from claiming ‘Innocent use’ as a defence. If you do not display a proper notice (symbol) for your trademark, the infringer may claim ignorance of trademark rights as an excuse and you might not get damages suffered by you recovered.

(ii) Always use your mark Distinctively Your trademark should be used in a manner that distinguishes it from the surroundings in the label or

packaging where it is placed. this is to employ a manner of display such as to create a commercial impres-sion in the consumer’s mind. For example combining a logo with a word mark, can enhance, or create, a distinctive commercial impression, and sometimes distinguish two similar word marks. Some examples are:

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(iii)Avoid using Trademark in a Generic manner Capitalizing, underlining, italicising, placing the mark in “quotation marks” or depicting in bold type leads

to generalising the mark. (iv) Affixing the mark to every good/services Trademark is used to identify one’s goods or services, if you are not fixing it to every good or service detail,

your trademark will die. Trademark are to be applied to products by affixing them or printing them on to the packaging, advertisements, accessories or labels of the products. Trademarks in relation to services are used in advertisements or on letterheads etc. related to the services of your company.

(v) Avoid ‘Naked Licensing’ Naked licensing is when you allow third parties to use your trademark without any legal authorisation, or

when you do not control the use by any authorised user of your trademark. When you authorise any person to use your trademark do it legally, keep a control over its use, and keep a check on the quality of goods he is supplying under your mark. This needs a carefully drafted legal agreement of license.


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A Trademark attorney advises you at every step after the registration is complete and helps you to use the mark properly in order to maintain its goodwill in the market. Our Attorneys believe that once a client always a client. We take care of your trademark related queries and problems lifelong, and maintain the database of your trademark to help us understand its market value. Our professionals are experts in trademark management and never let your trademark fall weak in the market. After all a strong trademark is a sign of a strong organisation. Hiring a trademark professional is the easy way and filing it self is the hard one.

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Select a good mark

Conduct a Trademark

Search Prepare a TM Registration Application

Take Preliminary Advice From

Registiar

Make Correction as advised by

RegistiarAdvertisement in

TM Journal

Wait for opposition

Attend the opposition

Get Registration Certificate

Use & Maintainance of Trademark

TRADEMARK REGISTRATION PROCEDURE


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Applicants Guide to Trademark Filing - IIPTA · “Tirupati laddu”, “Bikaneri bhujia” or any other geographical indication name. 3. Avoid Descriptive Words : Words that describe