Trademark Registration

Trademark Registration

ABOUT

A Trade mark means a mark 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. A Mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.

CATEGORY OF MARK

  • 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 (when the distinctiveness is claimed in the combination of colours with or without device)
  • Three dimensional trademark (it includes shape or packaging of goods)
  • Sound

REGISTERING AUTHORITY

Every application shall be filed in the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant or in the case of joint applicants the principal place of business in India of the applicant whose name is first mentioned in the application as having a place of business in India, is situate. However, where the applicant or any of the joint applicants does not carry on business in India, the application shall be filed in the office of the Trade Marks Registry within whose territorial limits the place mentioned in the address for services in India as disclosed in the application, is situate.

DOCUMENTS REQUIRED FOR REGISTRATION

Individuals & Sole Proprietorship

  • Copy of Trademark
  • Power of Attorney in Form-48
  • Identity Proof of the individual or Proprietor.
  • Address Proof of the individual or Proprietor.

Partnership / LLP / Company

  • Copy of Trademark
  • Power of Attorney in Form-48
  • SSI/MSME/Udyog Aadhar Registration Certificate
  • Incorporation Certificate or Partnership Deed.
  • Identity Proof of Signatory.
  • Address Proof of Signatory.

Other Applicants

All other applicants, including companies that do not have Udyog Aadhar registration will have to submit the following documents to obtain trademark registration in India.

  • Copy of Trademark
  • Power of Attorney in Form-48
  • Incorporation Certificate or Partnership Deed.
  • Identity Proof of Signatory.
  • Address Proof of Signatory

USE OF SYMBOL

TM_ Trademark Symbol

It is used when an application for trademark is made with the trademark registry. It act as a warning for infringers and counter-fitters.

SM_ Service Mark Symbol

It is used with trademark applications that are filed under class 35-45. However, using the TM symbol for all classes or using a SM mark for trademark application under class 35-45 are both acceptable. 

® – R Symbol

The applicant can start using the ® symbol next to the trademark, after getting the trademark registration certificate.

APPLICATION FOR TRADEMARK REGISTRATION

Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it , shall apply in writing to the Registrar shall be made in TM-A for the registration of his trade mark, which can be standard trademark, collective trademark, certification trademark or series trademark. There are 45 classes in which a trademark can be registered.

Where a person has made an application for the registration of a trade mark in a convention country or country which is a member of a group of countries or union of countries or Inter-Governmental Organisation and that person, or his legal representative or assignee, makes an application for the resigtration of the trade mark in India within six months after the date on which the application was made in the convention country or country which is a member of a group of countries union of Countries or Inter-Governmental Organisations the trade mark shall, if registered under this Act, be registered as of the date on which the application was made in the convention country or country which is member of a group of countries or union of countries or Inter-Governmental of Organisation and that date shall be deemed for the purposes of this Act to be the date of resigration.

Every application for the registration of a trademark, and where additional copies of the application are required, every such copy, shall contain a clear and legible representation of the trademark of size not exceeding 8 cm x 8 cm. Where an application contains a statement to the effect that the applicant wishes to claim combination of colours as a distinctive feature of the trademark, the application shall be accompanied with reproduction of the trademark in that combination of colours. Where the application contains a statement to the effect that the trademark is a three dimensional trademark, the reproduction of the trademark shall consist of a two dimensional graphic or prescribed photographic reproduction. Where an application for the registration of a trademark consists of shape of goods or its packaging, the reproduction furnished shall consist of at least five different views of the trademark and a description by word of the trademark, further Registrar may call upon the applicant to furnish a specimen of the goods or packaging, as the case may be. Where an application for the registration of a trademark consists of a sound as a trademark, the reproduction of the same shall be submitted in the MP3 format not exceeding thirty seconds’ length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations.

An application for registration of a collective mark shall be accompanied by the regulations governing the use of such collective mark. The regulations shall specify the persons authorized to use the mark, the conditions of membership of the association and, the conditions of use of the mark including any sanctions against misuse and such other matters as may be prescribed.

An application for the registration of a mark as a certification trade mark shall be made to the Registrar by the person proposed to be registered as the proprietor thereof, and accompanied by a draft of the regulations to be deposited under section 74

A single application may be made for registration of a trade mark for different classes of goods and services and fee payable therefore shall be in respect of each such class of goods or services.

The Registrar may refuse the application or may accept it absolutely or subject to such amendments, modification, conditions or limitations, if any as he may think fit.

In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.

WITHDRAWAL OF ACCEPTANCE

Where after the acceptance of an application for registration of a trade mark but before its registration, the Registrar is satisfied (a) that the application has been accepted in error: or (b) that in the circumstances of the case the trade mark should not be registered or should be registered subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the application has been accepted. the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application has not been accepted.

ADVERTISEMENT OF APPLICATION

When an application for registration of a trade mark has been accepted whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted together with the conditions or  limitations if any, subject to which it has been accepted, to be advertised.

OPPOSITION TO REGISTRATION

Any person may, within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on application made to him and on payment of the prescribed fee, allows, give notice in writing to the Registrar of opposition to the registration.

The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar, a counter statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application.

If the applicant sends such counter statement the Registrar shall serve a copy thereof on the person giving notice of opposition.

Any evidence upon which the opponent and the applicant may rely shall be submitted to the Registrar, and the Registrar shall give an opportunity to them to be herd, if they so desire.

The register shall, after hearing the parties, if so required, and considering the evidence, decide whether and subject to what conditions or limitations, if any, the registration is to be permitted, and may take into account a ground of objection whether relied upon by the opponent or not.

CORRECTION AND AMENDMENT

The Registrar may, on such terms as he thinks just, at anytime, whether before or after acceptance of an application for registration under section 18, permit the correction of any error in or in connection with the application or permit an amendment of the application. However, if an amendment is made to a single application referred to in subsection (2) of section 18 involving division of such application into two or more applications, the date of making of the initial application shall be deemed to be the date of making of the divided applications so divided.

REGISTRATION

When an application for registration of a trade mark has been accepted and either (a) the application has not been opposed and the time for notice of opposition has expired or (b) the application has been opposed and the opposition has been decided in favour of the applicant. The Registrar shall, unless the Central Government otherwise directs, register the said trade mark and the trade mark when registered shall be registered as of the date of the making of the said application and that date shall, subject to the provisions of section 154, be deemed to be the date of registration.

On the registration of a trade mark the Registrar shall issue to the applicant registration thereof, sealed with the seal of the Trade Marks Registry.

Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice to the applicant, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.

DURATION & RENEWAL OF REGISTRATION

The registration of a trade mark, after the commencement of this Act shall be for a period of ten years, but may be renewed from time to time in accordance with the provisions of this section.

The Registrar shall, on application made by the registered proprietor of a trade mark, renew the registration of the trade mark for a period of ten years from the date of expiration of the original registration or of the last renewal of registration.

EFFECT OF REGISTRATION

No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark. However, rights of action against any person can be taken for passing of goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.

The registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of trade mark in the manner provided by this Act.

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