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Requirements And Procedure For Filing Of A Trademark Application In India

Trademark is defined in the Trademark Act, 1999 as, "trademark 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." Trademark rights in India are statutorily protected by the Trademark Act, 1999and also under the common law remedy of passing off.

The administration of such protection under the Act is done by the Controller General of Patents, Designs and Trademarks. The Trademark Act, 1999 deals with the protection, registration and prevention of fraudulent use of trademarks. It also deals with the rights of the holder of the trademark, penalties for infringement, remedies for the damaged as well as modes of transference of the trademark.

Trademark Registration In India
Categories of Trademark Applicants:
From the applicability of filing fee, the applicants are categorized as follows:
  • Individual/Sole Proprietor
  • Start-up
  • Small Enterprise
  • Others
  • Association of Persons Body Corporate
  • Government Department
  • Hindu Undivided Family
  • Joint Applicants (Two or more Individuals together)
  • Joint Firm
  • Limited Liability Partnership
  • Partnership
  • Single Firm
  • Society
  • Statutory body
  • Trust
  • Others: like Foreign Nationals / Foreign Companies

Common documents required for trademark registration for all types of businesses:
The following list of documents is to be submitted by those individuals or business entities based on applicability and needs of the applicant:
  • Power of Authorization of an Agent: Every trademark application which is being managed by a lawyer or a registered trademark agent should consist of a Power of Authorization of an Agent.
  • Graphical Representation of trademark: Representation of trademark influences consumer behavior and preferences; therefore, it is advisable to always choose a mark that is capable of graphical representation.
  • User Affidavit: This document is to be attached with a trademark application when the applicant claims a date of first use of the trademark. Along with the user affidavit, the applicant shall also submit relevant supporting documents to prove the date of first use. (Some of the supporting documents or evidence for proving the date of early use can be commercial invoices, business formation-related certificates, etc.)

Trade Mark Registration Process:
To register a trademark, the owner needs to go through the following steps:
  • Conducting an exhaustive trademark search;
  • Filing an application with necessary documents;
  • Examination of the application by the Trademark Registry;
  • Post examination procedures;
  • Advertisement of the application in the Trademark Journal;
  • Opposition by any third party;
  • Registration and renewal of the same after every 10 years.

Step 1: Trademark Search
This step is very crucial before filing for trademark registration because conducting a detailed search will help a trademark owner to know whether their trademark is unique and distinct in nature and also check whether there is any similar or identical mark already existing or not.

The trademark owner will get to know whether they have any existing competition in the same trade or not, since, all the existing trademarks are available with the Trademark Registry. Conducting a search gives a warning that whether the owner will have any risk of using that trademark or is it safe.

Step 2: Filing an Application
After conducting a search, comes the process of filing the application for registration. The application must be filed in Form TM-A either online from the IP India's official website or physically at the Trademark Registry Office according to one's jurisdiction. The application must be filed for registration of a single class of goods and or services or in multi-class, and the fees will be calculated for each class included in the application.

The application must be backed up with the required documents, along with complete details of the trademark. If the trademark is already in use before filing the application (i.e. the owner wants to claim prior use), they have to attach an user affidavit indicating the usage of the mark also the evidence of its prior use in the trade.

Step 3: Examination Process
Once the application is filed, it will be thoroughly examined by the Registrar and they will prepare an examination in writing and will send a copy of it to the applicant with thirty days to let them know whether the Registry wants to refuse or conditionally accept the application and shall also include the materials by which he came to such a decision.

The applicant within thirty days from receiving the examination report, must file a reply, stating all the defences along with evidences against the objection raised by the trademark office and the owner shall put forward the reasons as to why their application should not be refused and must be proceeded for further registration procedures. If the applicant fails to reply within the above-mentioned time frame, the application will be abandoned.

Step 4: Post Examination Procedures
Once the applicant files the reply to the examination report, the Examiner if wants can arrange a hearing if due to any reason he/she is not satisfied with the reply sent by the applicant or if, the reply is not able to fulfil the purpose of the objection stated in the report. After the hearing process, if the examiner is fully satisfied, can accept the mark & forward it for publication in Trademark Journal or can refuse the application if any objection is still there.

Step 5: Publication of the Trademark Application
After the examiner has accepted the application, it will be published in the Trademark Journal which will remain there for four months. Advertisement of such an application is done so that within the time period stated above, any third party can see it and if they want can file an opposition against the applicant. Every Monday the Journal is updated with new accepted trademark applications.

Step 6: Notice of Opposition
Within 4 months from the date of publication of the application, any aggrieved party can file a notice of opposition in Form TM-O. When any third party feels that their already existing and prior use trademark has been infringed by the applicant, or the application is made in bad faith and if such a trademark is registered, it will harm the reputation and good will associated with the prior trademark of the third party.

Notice of opposition will halt the registration process and the opposed mark of the applicant according to the Trademark Act, 1999, and the applicant have to go through certain legal procedures if they wants to continue with the registration of the same mark, which includes filing a counter- statement, submitting evidence in reference to that counter statement and in some cases it is seen that the applicant have to go through hearing as well.

Step 7: Registration
The last step in the registration procedure is to get the certificate of registration. After the mark goes through all the legal processes related to the opposition, and if the opposition is cleared, the applicant will receive the certificate.

Multi Class Trademark Application
It is necessary to obtain multi class trademark registration when the same trademark is used for goods and services that come under different trademark classes to get complete trademark protection against infringement. For example: ITC Limited company manufactures and sells different types of goods that belong to different trademark classes under its 'ITC Limited' trademark. Since it manufactures different products, it must obtain trademark registration in all related classes to protect its products.

Since filing separate trademark registration applications for different classes is tedious and time-consuming, a company can apply for a multi class trademark registration application. A company can simultaneously apply for trademark registration for more than one class of products through a multi class trademark registration application.

Collective marks
A collective mark shall not be eligible for registration if it has an element that causes confusion among the masses or it is deceptively similar to any other marks in India. Thus, applicants are required to facilitate certain documents that solidify the legitimacy of their marks.

The said document must ensure:
  • The mark in question is unique and does not resemble existing marks.
  • That the proposed mark is free from any element that may trigger confusion among the masses
Anything contrary to these conditions shall lead to the cancellation of trademark registration.

Requirements for Collective Marks Registration in India
  • Describe what the business offers: Trademark must serve as a source identifier for a business. A collective mark fulfills the same purpose and indicates areas served by the particular business.
  • Basis of use: It is imperative to clarify whether the trademark that is being registered is for 'use in commerce' or 'intent to use. The status of the application shall differ based on this. Apparently, collective marks not in use or not utilized for commercial purposes shall be marked under 'intent to use,' and collective marks utilized for commercial use shall be filed under 'use in commerce. Registering collective marks that are in use shall seek proof in the form of pictorial representation of the collective mark in use or labels or advertisements relating to your product offerings.
  • Identify Trademark Class: It is vital to go through the different trademark classes in the trademark registry when seeking trademark protection. Presently, there are around 45 sectors, and each sector is acknowledged as a class. Trademark registry has categorized goods and services into 45 different classes.

Process for Registering Collective Mark in India
  • Trademark search on Trademark registry
  • Application and Documents submission to the Registrar
  • Application and Documents Scrutiny
  • Intimation to the applicant about an application issue, if any
  • Scrutiny of applicant's response
  • Publication of Mark in the Trademark Journal for 3-4 months (This is for inviting public objections if any)
  • Arrangement of hearing for the applicant in case of any objection.
In the case of no objection, the authority shall confer the trademark registration enclosing the seal of the trademark registry.

Certified Trademarks
A certification mark is a mark placed on a product to show that it complies with all applicable rules and regulations. It enables a business to demonstrate to customers that its goods are of a high standard, meet all regulations, and have the required documentation. In this post, we'll clarify the differences between certification marks and trademarks, learn what a certification mark denotes, and learn how to get one.

Procedure for registering Certification Trademark
The procedure for obtaining a certification mark for goods and services can occasionally worry individuals. Although the process will take some time and work, your products' quality, materials, and country of origin will be accepted.

You must prepare the following paperwork in order to receive a certification mark:
Your legal name, home address, and email address; the sort of legal entity you are; and your citizenship (US or international); a thorough explanation of your mark; an English translation (for people whose documents are in a foreign language); a sketch of your mark; a list of the goods for which you want to obtain a certification mark; filing basis and filing fee (a charge from a government agency).

Once you have read each of the aforementioned documents, you may apply for the certification mark. Use of the Trademark Electronic Application System is required for this. Everything can be done online. You'll be informed when the mark is prepared.

Although certification marks vary depending on the products you use them for, they always serve the same purpose�protecting the rights of consumers. They serve as proof that goods and services are secure and produced in accordance with agreed norms. You must submit the required documentation in order to receive the mark, then you must wait till everything is completed.

Procedure for Registration of certification trademarks:

The certification trademarks must be registered in the classes of products or services that are being certified by the applicants. A Statement of Case outlining the application's grounds-that is, the justifications for why the applicant is qualified to file the application�must be submitted along with a certification trademark application.

It's crucial to remember that each certification trademark application must be accompanied by a draft regulation that contains specific provisions relating to the applicant's suitability to manage the certification scheme, the attributes of the mark being certified, the process for observing the use of the mark, etc. The types of information that must be provided in certification trademark applications are specifically outlined in the Trade Marks Act of 1999.

When an application to register a certification trademark is submitted, the Indian Trade Marks Registry must determine whether the application complies with all applicable legal requirements. One of these requirements is that the certification trademark must be able to distinguish certified goods and services from uncertified ones. The application will be published in the Trade Marks Journal after the Registry is confident that all legal requirements have been met. For a period of four (4) months, any third party may object to the application.

The certification trademark will be registered if there is no objection or if the opposition action has been concluded in the applicant's favour. A certification trademark has a ten (10) year registration period.

Well-Known Trademarks
In India, Section 2 (1) (zg) of the Trademarks Act, 1999 clearly defines a 'well: known trademark' in relation to any goods or services, as "a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services".

Provisions under the Trade Marks Act 1999 relating to well-known marks:
  • Section 11(2): Recognizes one of the relative grounds of refusal of a trade mark stating that a trade mark shall not be registered if or to the extent the earlier trade mark being a well-known trade mark in India.
  • Section 11(9): It lays down the conditions/factors which are taken into consideration for grant of a well-known trademark, any of the following, namely:
    1. that the trade mark has been used in India;
    2. that the trade mark has been registered;
    3. that the application for registration of the trade mark has been filed in India;
    4. that the trade mark�
      1. is well-known in; or
      2. has been registered in; or
      3. in respect of which an application for registration has been filed in, any jurisdiction other than India; or
    5. that the trade mark is well-known to the public at large in India.
  • Section 11(10) (i): This section sets out an obligation on to the Registrar of Trade Marks to protect a well-known trademark against marks which are identical and/or similar.

Procedure to file:
Rule 124 of the Trademark Rules of 2017, sets out the procedure for filing of well-known trademarks which is as following:
  1. Application to be filed under Form TM-M to initiate the process for the recognition of a well-known trademark.
  2. The form is to be submitted via E-filing only and a fee of Rs. 1,00,000 is to be paid.
  3. The documentary evidence including Statement of case and evidence in support of the applicant's right to be filed. For a successful application, the following documents should be filed in the form of evidence:
    • Evidence showing use of trademark in India and/or abroad;
    • Any domestic or international registrations for the mark, if any;
    • Awards and recognitions, if any;
    • Annual sales turnover, worldwide including India in relation to goods sold and/or services provided under the mark;
    • Annual promotional and advertisement expenses, worldwide including India in relation to goods sold and/or services provided under the mark;
    • Number of actual or potential customers of goods and/or services;
    • Promotional and advertisement material;
    • Details of enforcement actions and the orders passed;
    • Details of any order recognizing the mark to be a well-known mark, if any.
  4. All documentary evidence is to be submitted in a PDF file where the size of the document does not exceed 10 MB.
  5. The office then scrutinizes the documents submitted to the Trade Mark Registry.
  6. The examination of the application by publication is conducted.
  7. The Registrar may call for further documents, as he thinks fit for the purposes of examination and/or determination;
  8. Objections to the mark are to be processed and dealt with by the Applicant, if any.
  9. Thereafter, the Registrar, before determination of a trade mark as a well-known mark, may invite objections from the general public which are to be raised and filed, if any within 30 days from the date of invitation of such objections.
  10. If the mark is approved and declared as "well-known" mark by the Registrar, it is then published in the list of well-known marks maintained by the Trademark registry, which is also available online.
  11. Even after registration, the Registrar may at any time remove such mark from the list, if it is found that the same has been erroneously or inadvertently declared as a well-known mark.
  12. Appeal against this decision of the Registrar, if any, to be filed before High Court (earlier IPAB) within three months from the date of such decision.

Trademark is a marketing tool which increases financing of the business. A trademark is not always a brand but the brand is always is a trademark. Sometimes there is a confusion between trademark and brand. The brand name can be simply a symbol or logo but the trademark is a distinguishing sign or indicator in a business organization as it has a wider implication than brands. People are more influenced by the distinctive trademark that reflects the quality of the product. A trademark can be a logo, picture mark or a slogan.

  • Trade Marks Rules 2017
  • The Trade Marks Act, 1999
  • "Multiclass Trademark Registration." Cleartax, Accessed 11 Mar. 2023.
  • Trade Mark: Registration Process & Validity (4 Step Process)., Accessed 11 Mar. 2023.
  • "Well Known Trademarks." S.S. Rana & Co., Accessed 11 Mar. 2023.
  • "Protection and Enforcement of a Well-Known Trademark - Trademark - India." Mondaq, Accessed 11 Mar. 2023.
  • Mittal, CS Manisha. "Certification Trademark vs. Trademark." TaxGuru, Accessed 22 Mar. 2023.
  • "Collective Mark: Provisions and Registration Norms." Corpbiz, Accessed 11 Mar. 2023.

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