Trademark - What is a Trademark?

A trade mark is used to distinguish the goods and services of one trader from those of another. A trade mark is a right that is granted for a letter, number, word, phrase, sound, smell, shape, logo, and pictureor a label. A registered trade mark is legally enforceable and gives you exclusive rights to commercially use, license or sell it for the goods and services that it is registered under.

Trademark:

Trademark is for a distinctive name (a word ora phrase), a logo (symbol or a design or an image), or a combination of these used by an individual ora legal entity for the product originated from a unique source.

Service Mark:

Service mark is a trademark used to identify services rendered by an organization from other. Organizations names who are purely into services, Titles of artistic works, Characters names are registered as service marks.
Example: LIC, E TV, Airtel and ‘ChotaBheem’

Certification Mark:

Certification mark is used to identify the material, quality, native and features of goods rend by a manufacturer from his competitors. Such marks may also be used to assess the worth of labor in manufacturing the goods.
Example: Halmark, Agmark and ISI

Collective Mark:

It is used to distinguish members of cooperative societies, an association and other collective groups.These prove to be an effective conservation process when intellectual assets cannot be protected under trademark or geographical indication.
Example: KadhiBoardmarks

Textile mark:

Textile mark is a trademark used in textile goods.
Example: Apco

Trademark Application Process:

  • Any person or a legal entity can file a trademark application which he uses or proposed to be usedit can be applied throughIndian Patent Officewebsite http://www.ipindia.nic.in/.
  • A single application may be made for registration of a trademark for different classes of goods and services.The fee payable therefore shall be in respect of each such class of goods or services.
  • Every application shall be filled in the office of the trademark registry within whose territorial limits the principal place of business in India.
  • Subject to the provision of Trademarks act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, 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.

Time and Statutory Fee:

From start to finish, the time taken for registration of a trademark is normally 12-18 months.  Whereas if an application is rejected at any stage within registration via acceptance and opposition, an appeal to the Intellectual Property Appellate Board which is constituted at Chennai. Further from decisions of the appeal revision is possible in the High Court/Supreme Court.

Statutory Fee Structure of Important Trademark Application Forms in India:

S No

Type of Request

Statutory Fee (in INR)

Form No.

1.

On application to register a trade mark in one class [Section 18(1)].

4000.00

TM-1

2.

On a single application under section 18(2) for the registration of a trade mark for different classes.

4000.00 for each class

TM-51

3.

Request for correction of a clerical error or for amendment under section 18(4), 22 and 58.

500.00

TM-16

4.

On a notice of opposition under section 21 (1), 64, 66 or 73 for each class opposed.

2500.00

TM-5

5.

On a counter statement in answer to a notice of opposition under section 21, for each application opposed.

1000.00

TM-6

6.

On notice of intention to oppose hearing under any of the section 21, 47, 57 and 59 by each party.

500.00

TM-7

7.

For renewal under section 25 of the registration of a trade mark at the expiration of the last registration.

5,000.00

TM-12

There will be an examination process to determine that the mark is acceptable, and does not conflict with any existing registrations or applications. Marks are generally examined in the order of application numbers, applications may remain pending for several months and, in some cases, several years before they are examined.After the examination process is completed, the mark is published in the Official Gazette. The purpose of the publication is to give notice to the public that the mark is about to be registered and to allow any interested parties to oppose the registration. The opposition is essentially a hearing at the Intellectual Property Office where both parties are provided with an opportunity to submit arguments and supporting documents. The period open for opposition parties to file an objection will be within 6 months.

Similar to other forms of IP, Trademark registration is also territorial in nature. Separate applications need to be filed in each country where an applicant wishes to register his trademark.Usually, the party who first registers a mark owns it. Therefore, it is significant to register your trademarks in each country your company considers to be a potential market. A national trademark registration does not extendits rights to the owner of the trademark outside the country in which it is registered.Most companies expanding into other countries often realize the value of registering their trademarks abroad verylate;only once they are faced with imitators make use of their brand names. The risks are extremely costly and detrimental to a company’s entire business and export strategy. It can be a severe financial liability to invest in a brand, promote it in the local market, then find that the brand cannot be registered and used internationally and have to finally abandon that investment.

Benefits of registering brand names abroad:

  • Registering a trademark abroad renders the company an exclusive right to commercialize its products in those markets.
  • This not only provides a solid foundation to stop counterfeiters but also ensures that the company enjoys exclusive rights over what may be one of its most valuable business assets.
  • Registering a trademark abroad also provides the opportunity to license the trademark to others or may be the basis for a company’s franchising or merchandising strategy.

Thus, the benefits of international registration and protection of one's trademark clearly outweigh the costs of such registration.

International Application under Madrid Protocol

India has joined the Madrid protocol. The Madrid system for the international registration of trademarks provides one single and cost-effective procedure for the registration of a mark in several territories.

At present, there are 90+ countries which are members of the Madrid protocol. The following link shows the members of the Madrid system:
http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf

In order to file an international application under the Madrid protocol, there should be a corresponding trademark application filed in India.

In a single international application under the Madrid protocol, several countries may be designated which are members of this system. The fees will depend based on the number of classes and countries designated.

The fees can be calculated using the online tool by choosing Office of origin as India, selecting the number of classes and specifying whether the mark is in colour.
http://www.wipo.int/madrid/en/fees/calculator.jsp

In addition, a handling fee of Rs. 2,000/- is payable to the Indian Trade Mark Registry.

Upon filing the application, the mark is examined by each designated member country where registration is sought and then proceeds to registration.

An international registration under Madrid protocol is however dependent on the corresponding Indian application for a period of five years from the date of international application.

If you wish to obtain registration in a country which is not a member of the Madrid protocol, separate national trademark application has to be filed directly in the respective country.

Back to Top
Get Quotation