Trademarks in India are registered by the Controller General of Patents, Designs and Trademarks; Ministry of Commerce and Industry; Government of India. The Trademark owner has the exclusive right to sue in case of infringement of a registered Trademark. The process of registering the Trademark is in accordance with the provisions of the Trademarks Act, 1999 (hereinafter called ‘the Act’) and Rules made thereunder. For registration, Trademark Application (hereinafter called ‘TM-A’) form can be filed either online through the IP India website or submitted offline in a nearby Trademark Registry Office after paying the appropriate fee as mentioned in the first Schedule of Trademark Rules 2017. After submitting the application one can use the ™ symbol alongside their brand name and it ensures that no other company can register the same or similar brand name. It however takes up to two years to use the ® symbol. In the present article, we will discuss the details involved in filing the TM-A form (Application for registration of Trademark).
Before filing for the Trademark application, the applicant should consider selecting a mark, Format of the mark, Identification of Goods and/or Services, and ensure that no one is already claiming Trademark rights in wording/design that is similar and is used in related goods/services. The application requires the following details to be filled in:
Nature of the Trademark Application: The applicant has to choose the category of Trademark application from the following:
- Standard Trademark;
- Collective Mark;
- Certification Mark; and
- Series Marks.
The collective mark is owned by an association of person(s) not being a partnership. It belongs to a group and its use therefore is reserved for members of the group. The primary function of a collective mark is to indicate a trade connection with the association or organization who is the proprietor of the mark.
The purpose of a registered Trademark is to show that the goods or services in respect of which the mark is used have been certified by some competent person in respect of certain characteristics such as Origin, mode of manufacture, quality etc.
Where a person claiming to be the proprietor of several Trademarks in respect of the goods or services which, substantially resembling with each other in the material particulars thereof yet differ in respect of the matter of a non-distinctive character which does not substantially affect the identity of the Trademark; seeks to register those Trademarks, they may be registered as a series in one registration.
Standard Trademark here means an application for registration of a Trademark not being a Collective or Certified Trademark or Series of marks.
The Registrar (the officer who is assigned such duty) later examines the nature of the application for registration, based on the form submitted. As part of the examination of an application for registration of the Trademark u/s 18 (4) and 18 (5) of the Act, the Registrar must determine as to whether the application has been made in accordance with the Act and/or Trademarks Rules 2002 or not. In the case of Collective Mark or Certification Mark, the draft regulations with form TM-M must be submitted.
Who can file a Trademark Application?
Any person who claims to be the proprietor of the Trademark in relation to goods and /or services may apply for the registration of a Trademark. For the purpose of making an application for Trademarks, ‘Person‘ includes:
- A Natural Person;
- A Body Incorporate;
- A Partnership Firm;
- Association of Persons (in case of collective Trademarks);
- Joint Proprietor(s);
- A Trust;
- A Society; or
- A Government Authority/Undertaking
In the case of a startup/small enterprise, the requisite certificate should be provided as proof. If an application is filed as an individual or the joint owner(s), the full name of the applicant or the joint owner(s) is required. A business name or trading style is not acceptable as the name of an individual or the joint owner(s). In the case of a partnership firm, the names of all the partners are essentially required to be mentioned in an application filed by a partnership firm. In the case of companies, the name under which a company is incorporated is required. A trading style or business name, if given, will be recorded separately. In the case where the applicant is a government department, the traditional form of the name of the applicant is “the Government of India /State of ________ (followed by the name of the department) represented by____________(name of the authorized person followed by the name of department)”. For statutory/public sector undertakings, reference should be made to the statute under which such organization/undertaking is discharging its functions. The application can be made in the name of the organization/undertaking as “Life Insurance Corporation of India (established under the ……. Act) through its authorized signatory and executed in the manner prescribed by the rules regulating it”.
Fee as per first Schedule Trademark Rules 2017
|Where the applicant is an Individual / Startup/Small Enterprise||5,000||4,500|
|In all other cases (Note: Fee is for each class and for each mark )||10,000||9,000|
Trademark Representation: The application requires actual drawing with a clear showcase of all the features of the trademark. In the case of trademark containing shape, packaging and colours must also be accompanied by a concise and accurate description of the trademark. These representations must be satisfactory and durable in nature.
Authorized Agent: The application must be signed by the applicant(s) or a person authorized to sign the application on their behalf. Persons who may sign on behalf of the applicant(s) are defined in Section 145 of the Act who is (a) a legal practitioner (b) Trademark Agent (c) a person in the sole and regular employment of the principal. In case the agent signs the application, a power of attorney duly executed by the applicant in the favour of that agent on form TM-M is required to be filed.
Category of Trademark : The applicant can choose amongst the following category of Trademarks:
- 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 n-word mark);
- Colour (when the distinctiveness is claimed in the combination of colours with or without device);
- Three-dimensional trademark (it includes s shape or packaging of goods);
- Sound Description of the mark;
Language of Trademark Description: As per Rule 33, where a trademark contains a word or words in scripts other than Hindi or English, a sufficient transliteration in the roman script and its translation of each such word in English shall be endorsed on the application form and the additional representations thereof, and every such endorsement shall state the language to which the word belongs and shall be signed by the applicant or his agent. Section 18(4) of the Trademarks Act 1999 states that subject to the provisions of this 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. However in all such cases the Registrar should communicate an objection or proposal in writing to the applicant.
Class of Goods or Services: A class number must be selected for each group of goods and/or services. Class number is a number given to a service or the goods the trademark represents. In India, the services and goods are divided into 45 classes. The application form requires the class number for which the trademark is proposed to be used. An application for registration of a single trademark may be made in respect of goods and/or services in one or more classes. The applicant should specify the goods and/or services in relation to which the application is made. A specification that claims registrations of all goods, products, services etc. in a particular class is regarded as too wide.
Trademark application must contain the following information:
- Name of the proprietor(s);
- Valid email ID of the proprietor or Trademark agent;
- Proprietor principle place of business
- Address for service
- Type of Mark, i.e. Word, Label, Device etc.,
- In case of Convention Applications, only single priority date should be claimed; separate applications should be filed if different priority dates are claimed for different goods and/or services.
- Every application for registration of trademark is required to have the principal place of business of the applicant.
- In case of authorization of Trademark agent, the address of the agent and registration number may be mentioned as the applicant’s address for service.
- Application had to be duly verified and signed by the applicant along with the address and date of filing of the application.
If the details filled in the application incur deficiencies, the registrar shall give the applicant one-month time to rectify the same and if the deficiencies are not rectified in the above time, the application is considered abandoned. If the deficiencies are rectified, the application goes to the examination phase of the registration process.
In case if wish to register your trademark application in India, you can get assistance from A2Z Filing Services, India. A2Z Filing Services offers a cost-effective, fast, reliable, easy, transparent and secure online platform to make your trademark registration process easy and fast.
Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.