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Tag: trademark registration process

  • DIFEERENCE BETWEEN TM-M AND TM-P

    In today’s competitive marketplace, a trademark serves as the identity of a brand, a visual and legal representation of its reputation, quality, and trust. Registering a trademark is not merely a procedural step but a strategic move to safeguard intellectual property. However, during the filing process or even after registration, applicants sometimes realize there are inadvertent errors or omissions in their application. Indian trademark law provides mechanisms to rectify or modify such details, ensuring accuracy and fairness without compromising the integrity of the registration system. In this article, we will discuss what TM-M and TM-P are, the differences between them, and which changes are permissible and which are not.

    The mechanisms for making changes to trademark applications or registered trademarks are through Forms TM-M and TM-P. These forms allow applicants and registered proprietors to make necessary amendments to their trademark applications or registrations, subject to certain conditions.

    If you are unsure which form to use or how to proceed, TMWala can help you identify the right approach and file the necessary forms accurately to avoid unnecessary rejections or delays.

    UNDERSTANDING FORMS TM-M AND TM-P

    Two of the most versatile forms under the trademark rules are TM-M and TM-P, both of which play crucial roles in correcting or modifying trademark applications.

    FORM TM-M – THE MISCELLANEOUS REQUEST FORM

    Form TM-M, officially titled “Application/Request for Any Miscellaneous Function in Relation to a Trade Mark Application/Opposition/Rectification under the Trade Marks Act,” is used for a variety of purposes. Applicants can submit this form to:

    • Make minor corrections or modifications in a pending trademark application;
    • Request the Registrar’s guidance or reasons for a particular decision;
    • Seek certified copies or extracts from the register;
    • Apply for an extension of time.
    • Request a review of a decision; or
    • Undertake any miscellaneous actions not specifically covered by other prescribed forms.

    Essentially, TM-M is a multipurpose form that allows applicants to address clerical mistakes, seek procedural clarifications, or handle other administrative requirements before registration.

    FORM TM-P – THE POST-REGISTRATION CHANGE FORM

    Once a trademark is successfully registered, any post-registration modifications must be made using Form TM-P. This form covers a broad range of changes, such as:

    • Transfer or assignment of ownership to a new proprietor;
    • Alteration of ownership details or partnership composition;
    • Modification of the registered trademark’s appearance or particulars;
    • Adjustments to the specification of goods and services;
    • Conversion of goods or services classification; or
    • Termination of an association between related trademarks.

    This form ensures that all post-registration modifications are formally recorded, maintaining the accuracy and validity of the trademark register.

    RECTIFICATION AND AMENDMENTS BEFORE REGISTRATION

    Errors are most likely to occur during the filing stage. Fortunately, the law permits applicants to correct such inaccuracies before the trademark is registered. A pre-registration amendment can be requested through Form TM-M, accompanied by the required fee and supporting documents.

    However, it is crucial to understand that only non-substantial modifications that do not alter the fundamental nature of the trademark or its ownership are permitted. For example, correcting typographical errors or updating an address is acceptable, but changing the mark itself or its class of goods and services is not.

    PERMISSIBLE PRE-REGISTRATION MODIFICATIONS

    • Correction of clerical or data entry errors (e.g., “TechWiz” accidentally entered as “TechWiiz”);
    • Updating the applicant’s address or contact information;
    • Deleting or restricting goods or services listed in the application;
    • Dividing a multi-class application into separate filings, or
    • Adjusting the description of goods or services to ensure precision.

    These permissible changes do not affect the mark’s identity or its usage. The Registrar reviews each modification request carefully and decides whether the alteration is minor or material.

    NON-PERMISSIBLE CHANGES

    Certain changes are deemed substantial and therefore cannot be incorporated into an existing application. These include:

    • Altering the word mark, logo, or design;
    • Changing the claimed date of first use;
    • Switching the trademark category (e.g., from a word mark to a device mark);
    • Modifying the class under which the mark was filed; or
    • Significantly revising the mark’s trade description.

    In such cases, a new trademark application must be filed, as allowing these modifications would alter the essence of the mark, potentially affecting third-party rights and public notice.

    REGISTRAR’S ROLE

    PRE-REGISTRATION MODIFICATIONS

    The Registrar of Trademarks holds the discretion to determine whether a proposed amendment is permissible. If the registry identifies errors in a filed application, it may mark the application as “Formalities Check Fail.” The applicant is then notified of the deficiencies and allowed to correct and resubmit the application. This step ensures transparency while preventing fraudulent or misleading alterations.

    POST-REGISTRATION MODIFICATIONS

    After a trademark is registered, changes are governed by a distinct legal framework. Any modification to a registered trademark or its ownership details must be made through Form TM-P. These post-registration amendments typically involve administrative updates rather than design or substantive modifications.

    PROCEDURE FOR FILING A MODIFICATION

    Whether pre- or post-registration, the process for requesting a modification is fairly systematic:

    The process starts by visiting the trademark portal:

    1. Choose the Form: Choose the correct form (TM-M or TM-P) based on the nature and stage of the modification.
    2. Fill the information: Fill in all the information asked in Form TM-M or TM-P.
    3. E-signature: Provide the E-signature and complete the form.
    4. Pay the Prescribed Fee: Fees vary depending on the modification type and mode of filing (online or physical).
    5. Submit to the Registry: Applications can be filed online via the official IP India portal or physically at the relevant office.
    6. Decision and Record Update: Once satisfied, the Registrar records the amendment in the official register and issues an acknowledgment.

    CONCLUSION

    Understanding the difference between Form TM-M and Form TM-P is essential for anyone involved in the trademark process. While Form TM-M is used for making corrections or miscellaneous requests before registration, Form TM-P is exclusively meant for post-registration changes to ensure the trademark record remains accurate and updated. Using the correct form at the right stage not only ensures procedural compliance but also helps maintain the integrity of the trademark register. By following the prescribed procedures and respecting the limits of permissible modifications, applicants and proprietors can safeguard their brand identity, avoid legal complications, and uphold the credibility of their intellectual property.

    With expert guidance from TMWala, applicants and proprietors can file these forms accurately, manage trademark modifications efficiently, and safeguard their brand identity with complete legal assurance.

    FAQs

    1. What is Form TM-M?

    It’s a Form used for corrections or miscellaneous requests before trademark registration.

    1. What is Form TM-P?

    It’s a Form used for making post-registration changes to a registered trademark.

    1. Can I change my logo or word mark using these forms?

    No, major changes like logos or names need a new trademark application.

    1. When should I use TM-M?

    Use TM-M for minor errors, address updates, or extension requests.

    1. How can TMWala help?

    TMWala guides you in choosing the right form and filing it correctly.

  • TRADEMARK REGISTRATION PROCESS AND FEE

    INTRODUCTION

    You must first register your trademark if you wish to acquire rights over it. In India, registering a trademark is a crucial first step for any company or individual looking to build and safeguard their brand. One registers their brand under the trademark legislation of 1999, which is overseen by the Office of the Controller General of Patents, Designs, and Trademarks, to safeguard their brand identification. Following registration, the owner of the trademark is granted exclusive rights to the class of goods and services it represents.

    The steps involved in registering a trademark in India, including how to do so, the trademark registration process, the trademark registration timeline, and the trademark filing fees, will all be covered in this article.

    TMWALA ensures compliance with each step, which makes from trademark registration journey smooth.

    TRADEMARK

    One form of intellectual property that distinguishes one brand’s goods and services from those of other brands is a trademark. A trademark might be a single word, phrase, symbol, emblem, or a combination of these. Since the owner of a trademark has the sole right to use it, they may complain if someone else tries to use it for their products or services. A trademark identifies the owner of a particular good or service.

    Trademark as defined under section 2(1)(zb) is “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 the shape of goods, their packaging and combination of colours;”

    HOW TO REGISTER A TRADEMARK IN INDIA?

    The first step is to determine whether the mark you are attempting to acquire for your company is available. To accomplish this, you should conduct a trademark search, which varies depending on your jurisdiction. You may also look for the mark’s availability abroad. You can then continue with the registration process if the mark is available.

    Either in person at the trademark registry office or online at IP India’s official website, the trademark application must be filed in FORM TM-A. Depending on the nature of the business, the application may be submitted for a single class or multiple classes.

    TRADEMARK REGISTRATION PROCESS

    Trademark Registration Process in India includes the following steps

    1. Trademark Search Report: To make sure the mark is distinctive and unique, one must conduct a trademark search before applying. Because it helps to prevent future legal conflicts, this step is crucial. It saves time, money, and effort. One can do the trademark search on the IP India website: https://ipindiaservices.gov.in
    2. Filing of Trademark Application: The trademark application is filed on the official IP India website, together with the necessary paperwork. The applicant can begin utilizing the ™ symbol with the brand name or logo after applying. You have the option of filing offline or online.
    3. Vienna Codification: The Registrar of Trademarks uses the Vienna Classification to assign a trademark to a different classification if it contains any figurative marks.
    4. Formalities Chk Pass: At this point, a formality check is performed on the application and the supporting documentation. A Formality Check Report is generated in the event that any procedural flaws are discovered. Within a month, the applicant has to make the necessary corrections.
    5. Trademark Examination: The application is examined by a trademark officer to see whether it is in compliance or if it matches any previously registered marks. If it does, the officer provides a trademark examination report that includes the objections discovered during the examination. Aspects including distinctiveness, descriptiveness, and similarity to previous trademarks are evaluated throughout the assessment. The officer will object and identify competing trademarks in the same class if the mark violates Sections 9 or 11 of the Trade Marks Act, 1999.
    6. Reply to Examination Report: After obtaining the Examination Report, the applicant or their representative has one month to address any objections. The application may be abandoned if no response is received. The application moves forward to approval if the register is satisfied with the response and all legal requirements are met.
    7. Show Cause Hearing: A hearing is set if the response is not sufficient. The application may be accepted conditionally or rejected by the examiner. The candidate has one month to meet the requirements if they are accepted conditionally. Publication of the trademark occurs only after compliance. The applicant is entitled to appeal if their request is denied.
    8. Journal Publication: Following acceptance, the trademark is published for four months in the Trademark Journal. Third parties may object to the application during this period.
    9. Withdrawal of Acceptance: After providing the applicant a chance to be heard, the Registrar may decide not to accept a trademark application under Section 19 of the Trade Marks Act, 1999. Usually, this takes place prior to the registration being finalized.
    10. Opposition: Anybody may contest the trademark within four months after its publication, per Section 21 of the Trade Marks Act, 1999. Typical reasons for protest include:
      • Similarity or identity with an earlier or existing registered trademark.
      • Lack of distinctive character.
      • Descriptive nature of the mark.
      • Application made in bad faith.
      • Use of customary terms in current language or trade practices.
      • Likelihood of public deception or confusion.
      • Conflict with existing laws.
      • Prohibition under the Emblems and Names (Prevention of Improper Use) Act, 1950.
      • Content is likely to offend the religious sentiments of any class or section of people.
    11. Counterstatement and Evidence Stages: The applicant is required to submit a counterstatement after being served with a notice of objection. This is succeeded by:
      • Evidence in support of opposition under Rule 45(1).
      • Evidence in support of application under Rule 46(1).
      • Further evidence in reply by the opponent under Rule 47.
      • Additional evidence under Rule 48 of the Trade Marks Rules, 2017.
    12. Hearing with Third Party (if applicable): Following the filing of all supporting documentation, the Trademark Registry Officer holds a hearing to determine whether or not the opposition can be maintained.
    13. Trademark Registration: A Trademark Registration Certificate is granted if there is no resistance or if all oppositions are settled in the applicant’s favor. After that, the applicant may combine their trademark with the ® symbol.
    14. Renewal :The ten-year validity of a registered trademark can be extended as many times as the registered proprietor desires. Non-use for more than five years, failure to renew, mark modifications, addition of goods or services, inconsistencies with Sections 9 and 11 of the Trade Marks Act, 1999, omissions, fraudulent registration, or market confusion are all grounds for rectification.

    TRADEMARK REGISTRATION TIMELINE

    The Trademark registration timeline starts with a trademark search:

    • Trademark Search: 1–2 Days
    • Filing of Trademark Application: 1–3 Days
    • Vienna Codification: 3–5 Days
    • Formalities Check: 7–15 Days
    • Trademark Examination: 1–3 Months
    • Reply to Examination Report: Within 1 Month
    • Show Cause Hearing(if required): 1–2 Months
    • Journal Publication: 4 Months
    • Withdrawal of Acceptance(if applicable): Before registration
    • Opposition: Within 4 Months
    • Counterstatement and Evidence Stages: 6–9 Months
    • Hearing with Third Party(if applicable): 1–2 Months after the evidence stage
    • Trademark Registration: 1–2 Months after opposition resolution
    • Renewal: Every 10 Years

    Overall Timeline

    • Without Opposition: 12–18 months
    • With Opposition: 24–30 months

    TRADEMARK FILING FEES

    The trademark filing fees in India can differ based on the applicant type and the filing method. For individuals, startups, and small businesses, the fee is rupee 4,500 per class for online filing,i.e., E-filing, and rupee 5,000 per class for physical filing. For other entities, such as companies, LLPs, and partnership firms, the fee is ₹9,000 per class for online filing and ₹10,000 per class for physical filing.

    You can get the best trademark filing deal with TMWALA.

    CONCLUSION

    In India, trademark registration is essential for having exclusive rights over your applied trademark. The Trademark registration process in India includes several steps from conducting a trademark search to trademark renewal.

    The Trademark registration timeline typically takes 12 to 18 months to complete without opposition, and with opposition, it may take up to 30 months.

    The trademark filing fee depends on the applicant type and the filing method. For online filing, it can be 4,500 rupees or 9,000 rupees, and for offline filing, it can be 5,000 rupees or 10,000 rupees. Differ based on business type, whether a single firm or LLP, or a Partnership firm.

    TMWALA can make this complicated journey easy for you by dealing with all the compliance checks and offering you the best advice at each stage.

  • TRADEMARK EXAMINATION REPORT

    INTRODUCTION

    In India, the trademark registration process ensures that trademarks are unique and legally protected under the Trade Marks Act, 1999. After an applicant submits a trademark application to the Indian Trade Marks Registry, the status of the application may initially appear as “Marked for Exam”. This status signifies that the trademark is now undergoing examination by an associate examiner to determine its eligibility for registration.

    The examination process is a key step in determining whether a trademark is eligible to be published in the Trade Marks Journal and, eventually, granted registration. This article provides a detailed look into the trademark examination process, including the steps involved, the criteria for examination, and what happens after the application is marked for examination.

    WHAT DOES “MARKED FOR EXAM” MEAN?

    When a trademark application is assigned to an Associate Examiner for scrutiny, its status on the Indian Trade Marks Registry website is updated to “Marked for Exam”. This status indicates that the application is under formal examination, which means that an examiner will assess whether the mark qualifies for registration based on the criteria established under the Trade Marks Act, 1999.

    The examiner’s task is to scrutinize the trademark application, perform a search to identify any conflicting trademarks, and decide whether the mark can be accepted for publication in the Trade Marks Journal. This examination is crucial because it helps ensure that trademarks are distinctive and do not infringe on existing marks, protecting businesses and consumers alike.

    At this stage, TMWALA can provide you with expert assistance to ensure your trademark application meets all the formal requirements and that your mark is classified correctly to avoid any initial delays or rejections.

    THE TRADEMARK EXAMINATION PROCESS: STEP BY STEP

    Step 1: Formal Review and Filing Compliance

    The first step of the examination process is to ensure that the trademark application complies with the formal requirements set by the Trade Marks Registry. This includes verifying that:

    • The correct forms have been filled out (e.g., TM-A form for application).
    • All mandatory details have been provided, including the applicant’s name and address, a clear representation of the trademark, and a description of the goods or services the mark will cover.
    • Payment of the application fee has been made.
    • The mark is categorized into the appropriate class (out of the 45 classes under the Nice Classification of goods and services).

    If any deficiencies or irregularities are found during this initial review, the applicant will be notified, and they will need to rectify the issues before the examination proceeds.

    Here, TMWALA can guide you through the filing process, ensuring that all documentation and legal requirements are met accurately, reducing the chances of initial rejection due to minor errors.

    Step 2: Trademark Search for Conflicts

    Once the application is accepted as compliant, the examiner conducts a thorough search of the existing trademarks in the Trade Marks Registry. The primary objective of this search is to identify:

    • Identical or similar trademarks that are already registered or pending registration.
    • Trademarks that are similar in relation to the goods or services the applicant is claiming for their mark.

    The examiner will check the phonetic and visual similarity of the applied mark to ensure there is no likelihood or confusion. For instance, if the trademark is too similar to an existing registered mark in the same or a related class, the examiner may raise an objection.

    Before filing your application, TMWALA conducts an in-depth trademark search to assess the likelihood of conflicts with existing trademarks. This proactive search helps mitigate potential rejections later in the process, saving both time and resources.

    Step 3: Assessing Registrability Under the Trade Marks Act, 1999

    The core of the examination is assessing whether the trademark meets the legal standards for registration under the Trade Marks Act, 1999. The key criteria include:

    • Distinctiveness: The mark must be unique and capable of distinguishing the goods or services of one business from those of another. Trademarks that are generic, descriptive, or commonly used in the industry are likely to be rejected.
    • Non-conflict with public interest: The mark should not be offensive, scandalous, or contrary to public policy or morality. It also should not violate any existing laws (e.g., national flags, symbols, or the names of countries).
    • Non-descriptive: Trademarks that merely describe the goods or services (such as “Fresh Apples” for apples) are usually not registrable.
    • No Likelihood of Confusion: The examiner evaluates whether the trademark is likely to cause confusion with any existing marks, especially in the same or related fields.

    Step 4: Identifying Conditions, Limitations, or Restrictions

    In some cases, the examiner may propose specific conditions, limitations, or restrictions on the use of the trademark. These may include:

    • Limiting the geographical scope of the mark’s use if there is already a similar mark registered in another region.
    • Imposing disclaimers if a part of the mark is deemed non-distinctive (e.g., disclaiming the word “fresh” in a trademark for fruit).
    • Adding conditions on how the mark can be used, based on the specific goods or services it covers.

    ISSUANCE OF THE EXAMINATION REPORT

    Once the examination process is complete, the examiner issues a consolidated Examination Report. The report may contain the following outcomes:

    1. Acceptance with No Objections: If the examiner is satisfied that the mark meets all requirements, the application is accepted for publication in the Trade Marks Journal.
    2. Objections: If the examiner identifies any issues (e.g., conflicting trademarks, lack of distinctiveness, etc.), the application will be provisionally refused, and the examiner will issue a detailed Examination Report listing the objections.

    The applicant will then need to respond to the objections within a specified time frame, usually 30 days from receiving the examination report.

    If objections arise, TMWALA will assist you in drafting a thorough response, addressing each objection with the necessary evidence or legal arguments. Whether it involves providing proof of acquired distinctiveness or modifying the trademark, TMWALA’s expert team ensures your application stays on track.

    RESPONDING TO OBJECTIONS

    If objections are raised, the applicant must take appropriate action to overcome them. There are a few ways to address objections:

    • Filing a Response: The applicant can provide explanations or evidence to support the distinctiveness of the trademark. For example, if the examiner objects on the grounds of descriptiveness, the applicant may provide evidence of the mark’s acquired distinctiveness through usage in the marketplace.
    • Amendment of the Application: In some cases, applicants may need to modify their application or amend the trademark in response to objections (e.g., changing the wording or the design of the logo).
    • Requesting a Hearing: If the applicant disagrees with the objections, they can request a hearing before the Registrar of Trade Marks to present their case and seek a resolution.

    PUBLICATION IN THE TRADE MARKS JOURNAL

    If the examiner accepts the application or the applicant successfully overcomes objections, the trademark is then published in the Trade Marks Journal. This publication serves to notify the public about the proposed trademark registration, allowing third parties to raise any opposition.

    The opposition period typically lasts 4 months from the date of publication. During this time, anyone who believes they will be adversely affected by the registration of the mark can file an opposition with the Trade Marks Registry.

    FINAL REGISTRATION

    If no opposition is filed, or if the opposition is resolved in favor of the applicant, the mark proceeds to the final registration stage. The applicant will receive a Certificate of Registration, confirming their exclusive rights to use the trademark in relation to the specified goods or services.

    CONCLUSION

    The trademark examination process is crucial to maintaining the integrity of the trademark system and ensuring that only those marks that meet the requirements of distinctiveness and legality are granted protection. Understanding the examination steps, responding to objections promptly, and being aware of the overall timeline can significantly increase the chances of successful trademark registration.

    From the moment an application is “Marked for Exam” to its final registration, the process requires careful attention, adherence to legal requirements, and strategic action. By navigating each step diligently, applicants can protect their brand identity and secure exclusive rights to their trademark in India.

    TMWALA, with its expert guidance at every stage of the processfrom filing to final registrationensures your trademark journey is smooth, timely, and successful. Whether you need assistance with formal review, responding to objections, or understanding the nuances of the process, TMWALA is the ideal partner to help you secure your brand’s legal protection.

  • The Ultimate Guide to Trademark Registration in India: Step-By-Step Process and Tips

    The Ultimate Guide to Trademark Registration in India: Step-By-Step Process and Tips

    Introduction

    Think of trademark as your brand’s unique footprint which distinguishes your brand from the others in the market. The term trademark has been derived from the words ‘Trade’ meaning business activities & ‘Mark’ meaning any sign or symbol. Let’s dive in to get more about trademark and trademark registration.

    Thus, a trademark is any symbols, words, phrases etc., used in relation of trade or business which distinguishes the goods and services of one person from the other. Example: The Nike Swoosh & the Apple logo. Trademarks are instrumental in ensuring business’ success as it helps customer identify your goods and services in the pool of goods and services present in the market. It protects brand’s unique identity & reputation and helps build trust and loyalty amongst customers. Trademarks are an indispensable tool to ensure business success.

    What is a Trademark?

    Trademarks are Distinctive Source Identifiers i.e., these are symbols, words, phrases etc. which make your business unique and help customers identify the goods and services manufactured, sold or rendered by you. Basically, any indication that helps customers differentiate between the goods and services of two sellers in the market can be termed as a trademark.

    Let’s now understand, what all can be registered as a trademark:

    1. Word/Names: Calvin Klein, Google
    2. Logo: Nike Swoosh, Apple Logo
    3. Symbol: Starbucks Logo, McDonalds Logo
    4. Slogan: Amul-The Taste of India, L’Oréal Paris-Because You’re Worth It 
    5. Mascot: The Amul Girl
    6. Colours: Tiffany Blue
    7. Shape of Goods: Coke Contour Bottle, Toblerone Chocolate

    Fun Fact: even smell, sound, taste, feel, personality etc., can come under the purview of trademarks.

    What are the essentials features of a Trademark?

    For anything to qualify as a trademark, it must meet the following essential criteria:

    1. Uniqueness: A trademark must be novel, unique and should not resemble an existing trademark.
    • Distinctiveness: A trademark should not be generic and shall be capable of distinguishing the goods and services of one person from another
    • Non-Descriptive: A mark which only describes the kind, quality, intended purpose, values, geographical location or time or origin, cannot qualify as a trademark. Example: A trademark ‘Fresh n Juicy’ for fruit juices is descriptive of its quality, thus cannot qualify as a trademark.
    • Use in Commerce: It is essential for a mark to be used in relation of trade/business/commerce, to qualify as a trademark.

    Apart from the aforesaid, a trademark should not hurt the religious sentiments of the public, should not cause public confusion or deception & shall not contain any scandalous or obscene matter.

    Benefits of a Trademark?

    Trademarks offer a host of benefits to brand owners including:

    1. Brand Recognition: Trademarks help customers recognise the your brand in the pool of brands in the market.
    • Legal Protection: Trademark registration protects brand owners from unauthorised use and infringement of their trademark.
    • Asset Value: Registered trademarks, although intangible, are a significant asset to a business, both literally and figuratively. Trademarks are entered on the asset side of the balance sheet and rightfully so. With passage of time, even investors are more inclined towards investing in businesses with strong IPR Portfolio which includes trademarks. Alike other assets, the value of trademarks also appreciate overtime.
    • Consumer Trust and Loyalty: Consistently providing quality items to customers ensure customer trust and loyalty. Thus, often enough, trademarks start to be identified for their quality which leads to trust building.
    • Exclusivity: Trademark grants the brand owner, rights to the exclusive use of the mark. It also entitles brand owners with the exclusive rights over all the economic benefits arising from its trademarks.

    Pre-Registration Steps:

    Trademark registrations are crucial for business success, but, before proceeding with filing of trademark application or adoption of a trademark, one must, without exception, follow the following steps to ensure a smooth and conflict free trademark registration process

    • Conducting a Trademark Search: It is crucial to conduct a thorough search of the records of the Trademark Register before adoption/filing of a trademark to avoid any potential conflict or litigation. This process will ensure that your mark is completely unique and there no one who is already the owner of a trademark identical or similar

    You can perform a trademark search on the official website of the Intellectual Property India (IPI) or hire TMwala to conduct a comprehensive trademark search for you. For Example: If you plan on adopting the trademark “Happy Cakes”, the trademark search might reveal that the same name “Happy Bakes” is already registered by another party, indicating a potential conflict.

    • Choosing the Right Trademark Class: Trademark classes are set of clusters in which goods and services of similar nature are grouped. This is done to simplify registration process. India follows the Nice Classification of goods and services established by the Nice Agreement, which is used internationally. There are 45 trademark classes in India which are divided into two main categories: Classes 1 to 34 cover goods, and Classes 35 to 45 cover services. You may search for the appropriate class of the goods covered by your trademark by conducting a search on Tmwala’s website. Example: Footwear falls in class 5, Restaurant Services fall under class 43 etc.
    • Collection of Necessary Documents: If your trademark is already in use prior to filing of the trademark application, all such documents substantiating the use of the mark along with user affidavit have to be collected. Example: collection of sale bills, government registrations and licenses, advertisements, financial statements etc.

    Step-by-Step Process of Trademark Registration in India

    • Filing the Trademark Application: Once all the Pre-Registration steps are completed, trademark application is filed on IPIndia’s website. The trademark application is filed on Form TM-A and requires providing of information relating to the trademark and its proprietor. The application can be filed either online or offline.
    • Formalities Check: After the foregoing steps are completed, trademarks are then proceeded for Formality check wherein the trademark application along with the accompanying documents undergo a thorough screening process. If any procedural discrepancy is found, a formality check report is issued which ought to be complied with, within one month from the date of issuance, by removing the raised discrepancies.
    • Trademark Examination: The next step is trademark examination where a Trademark Officer reviews the trademark application for its correctness and issues a trademark examination report in case your trademark has issues such as lack of distinctiveness, descriptiveness, and similarity to prior trademarks. To be eligible for registration, the trademark must be distinctive, non-descriptive, and free of similarity to existing trademarks. If the application violates Section 9 or 11 of the Trademark Act, 1999, the Trademark Officer issues an Examination Report with objections and lists similar brands within the same class. At this stage, the status of the mark is ‘Objected’.
    • Reply to Examination Report: Within one month from receiving the Examination Report, a reply to the same must be filed. Failure to respond within this timeframe may result in the abandonment of the application. If the trademark office finds the reply satisfactory, the mark is accepted and advertised in the trademark Journal. If not, the trademark is proceeded for Show-Cause Hearing.
    • Journal Publication: If the application is accepted and advertised, the proposed mark is published in the trademark journal for a 4-month period. During this time, the anyone can oppose the trademark application. If no opposition is received within the specified period, the trademark is deemed registered.
    • Opposition: According to Section 21 of the Trademarks Act, 1999, any person, within 4 months from the date of advertisement, may file an opposition against the registration of trademark. Common grounds for opposition include:
      • The trademark is similar or identical to an earlier or existing registered trademark.
      • The trademark is devoid of distinctive character.
      • The trademark is descriptive.
      • The trademark registration application is made with bad faith.
      • The trademark is customary in the current language and or in the established practices of a business.
      • The trademark is likely to deceive the public or cause confusion.
      • The trademark is contrary to the law or prevented by law.
      • The trademark is prohibited under the Emblem and Names Act, 1950.
      • The trademark contains matters that are likely to hurt any class or section of people’s religious feelings etc.

    • Counterstatement and Stages of Evidence: Following the notice of opposition, the next stage involves filing a counterstatement and presenting Evidence in support of Opposition under Rule 45(1), Evidence in Support of Application under rule 46(1), Further Evidence in Reply by the Opponent under Rule 47 along with any additional Evidence under rule 48 of the TM Rules, 2017.
    • Hearing with Third-Party: After completing all evidence stages, a hearing is scheduled with the Trademark Hearing Officer to decide the fate of the opposition proceedings. Either the opposition is quashed and trademark proceeds for registration, or the opposition is allowed and trademark is refused registration.
    • Trademark Registration: If there are no oppositions or if any oppositions are set aside, the Trademark Registration Certificate is issued, and the symbol ® can be used alongside the logo or brand name. Further, trademark registration also gives the owner, the right to institute suit for infringement.
    • Renewal: Trademarks are initially valid for 10 years from the date of filing of the trademark application. After this period, they can be renewed for another 10 years indefinitely. 

    In conclusion, following the above process ensures statutory protection for the trademark. While it’s not mandatory, it is highly recommended to consult with a trademark attorney or agent who can guide you through the process, conduct searches, and ensure your application is in compliance with the law. 

    FAQs:

    How long does it generally take to get your trademark registered in India?

    A trademark generally takes anywhere between 9-12 months for a trademark to receive registration in India. However, this time frame is only applicable in conditions where no objections or third party oppositions are issued against the applied mark.

    Who can apply for a trademark registration? 

    Any individual person, Partnership, Company, HUF or Corporation is eligible to file for a trademark registration in India.

    What is the difference between TM & ® symbol?

    The TM symbol is used to indicate a trademark claim. It is generally used in cases where a trademark has been applied for registration, but the registration is in process. It is important to remember that TM symbol is not an indication of trademark registration. Whereas the ® symbol is used to denote a registered trademark.

    What if someone uses the ® symbol without valid trademark registration?

    Unauthorised use of the ® symbol is illegal and use of the same without a valid registration could lead to legal problems and fines.

    What is infringement?

    When someone uses your registered trademark without your permission, it is called infringement. In case someone infringes your mark, you can take legal action and file a suit for infringement against them in court.

    Can I file a suit for infringement if my trademark is not registered?

    No, suit for infringement cannot be filed is someone uses your unregistered trademark without permission. However, in such case, a suit for passing off may be instituted.

    What is the validity of trademark registration in India?

    A trademark is valid for a period of 10 years from the date of registration, however, you may keep on renewing the same for the another 10 years indefinitely.

    Does trademark registration in India guarantee international protection?

    No, trademark registration only ensures protection in the particular jurisdiction only. A trademark registration in India only grants rights within the geographical territory of India. Trademark registration for each country has to be obtained individually.

    Can I register a domain name as a trademark?

    Yes, domain names can be registered as trademarks so long as they qualify the essential elements of trademark.

    What are the types of trademarks that can be registered in India?

    Any names, logos, word, artwork, mascot, slogan, symbol, shapes, smells, sounds, taste, touch etc., can be registered as trademarks in India if they possess the essential features of a trademark i.e., distinctiveness, uniqueness, source identification and use in trade.

    Wish to learn more about trademark registration? Click the link to learn more: https://legalguruindia.com/trademark-registration/

    Link to the official website of the Trade Marks Registry: https://www.ipindia.gov.in