Article discusses Trademark, its effect and its types, Types of Trademark:, Validity of a Trademark after registration, Steps for Trademark Registration in India, Status of the Trademark Application, Timeline of the Trademark registration process, Correction to the Trademark Application, Procedure of Renewal of a Trademark and Trademark Application in multiple Classes.

Trademark is considered as an effective tool which safeguards from our competitors to use our business identity to sell their products. Therefore, it is crucial to discuss the important facts about Trademarks and its registration procedure. In this write-up we have tried to cover each and every aspect of trademark Registration.

Trademark, its effect and its types

A Trademark (popularly known as Logo or Brand) can be termed as a Symbol, a Mark, a label or an Expression which represents an entity or Goods or Service and which is capable of distinguish the Goods and Services than those of others in the industry.

It not only gives the Registered Owner an exclusive right to use such mark but also prevent its identity from being used by other competitors. Registration of Trademark is now a necessary as it may become a valuable Asset for the Entity or an Individual getting it registered.

Once a Trademark is registered with Registrar of Trademark, The Registered Owner get an exclusive right to use such Trademark. It is important to note that the conferred right is only limited to republic of India. If an entity wants to get the global protection then it need to apply for the registration in every country individually.

Types of Trademark:

  • Standard Mark: Standard marks are basic marks which denote the source of Goods and Services and which are not to be classified as Collective or Certification mark. This is the most common mark used for Trademark Application.
  • Collective Mark: Collective mark is generally used to distinguish the origin of a product or service at a specific geographical region or by specific group or association. The owners of Collective marks are generally regional Institutions.
  • Certification Mark: These are the marks used to indicate that the particular product meets the set standards specified with respect to quality or safety or any such thing.
  • Series Mark: These are marks which are similar to each other substantially and differ only with non-distinctive characters.

Validity of a Trademark after registration

A Trademark registered in India is valid for 10 years from the date of its Registration, once expired; it can be renewed for further 10 years from the date of expiration by filing Form TM-R.

Steps for Trademark Registration in India

Following steps has to be followed to register a Trademark in India:

  • The First and foremost step is to do a details research of Trademark to make sure the Trademark to be applied is not already registered in the name of some other Entity or Individual in same class (Class details are given on the trademark website).
  • As per Rule 23 of the Trademark Rules, 2017, a Trademark can be registered by filing a written Application to the Registrar of Trademarks in Form TM-A duly signed by the applicant or his agent on behalf of the Applicant or by creating a Login id at Trademark website and selecting New Form Filing using Class DSC of Applicant or Agent.

Important Details to be entered in Form TM-A:

1. Type of Applicant: Individual / Startup / Small Enterprise / Others.

2. Nature of the Applicant: Individual / Partnership / Body Corporate including Company / Limited Liability Partnership.

3. Details of Applicant: Name, Trading Address and Service Address, Phone Number, Email Address.

4. Details of Trademark Agent: Name, Phone No., Email Address, Registration No.

5. Nature of Trademark Agent: Registered Trademark Agent/ Advocate/ Constituted Attorney.

6. Category of the Trademark:

i. Word Mark: A Word mark consist of word and combination of words, numbers and symbols in standard form which can be distinctive, e.g. IBM

ii. Device Mark: Device mark means logo or label or word or combination of words used with specific style or format or shape, e.g. Google

iii.Colour: Colour mark consist a specific colour or combination of colors to indicate the usage or origin of Goods or Services.

iv. Three-Dimensional Mark: It is used the where the product has particular shape and it is well indicated in three-dimensional mark.

v. Sound mark: A sound can be so distinctive to indicate something that’s why it becomes necessary to protect such sound mark.

7. Description of Trademark:Details and basic feature of the mark is to be mentioned here. Also mention if the mark is colour specific.

8. Class of Trademark and description of Goods and Services: Class of Goods to be mentioned along with a brief description of the Goods or Services being offered is to be mentioned (carefully check the applicable class before mentioning in the application).

9. Date of 1st usage of Trademark or proposed date of 1st usage of Trademark: Mention the date when the mark was brought into usage by the Applicant (accompanied by a user Affidavit) or the date when the Applicant is willing to use the mark.

  • Keep regular eye on the department website to know the status of your application (although it will also be communicated through email).

Status of the Trademark Application:

Once an Application is filed, the applicant gets an Application number which enables him to check the status. One is required to check the status of Form from time to time at http://ipindiaonline.gov.in/eregister/eregister.aspx under head Trademark Application /Registered Mark.

Following are the different types of Status:

1. Formality Check Pass / Fail: Once a Form is filed it passes through all the basic formalities like description of goods and services and the documents required to be attached if some discrepancy is found at the initial level then Formality Check becomes fail.

2. Marked / Sent for Examination:Once the Formalities checked, the form is sent for Examination to the Registrar which examines the Form and finds any irregularity and duplicity in the Mark

3. Accepted & Advertised:When the Department accepts the Form does not have any objection and the mark is advertised in journal.

4. Objection: Upon Examination of Form TM-A, if examiner encounters any inconsistency in the Form, it may raise objection under section 9 and Section 11 of the trademark Act, 1999 regarding description of Goods and Services and other common issues and require a reply to be satisfied that why the Objection should not be raised.

5. Opposition:Once the mark is advertised in the journal and someone finds it similar to their registered mark they may write to Examiner and oppose the Application which leads to hearing.

6. Abandoned:When there is no response from the Applicant’s side on the objection raised by Examiner or opposition within the specified time then it is marked as abandoned.

7. Withdrawal: If the Applicant withdraws the Application filed then the status becomes withdrawal.

8. Registered:Once the Examiner is completely satisfied with the Application and there is no opposition filed, the status gets Registered.

Timeline of the Trademark registration process:

Normally it takes minimum 8-12 months to register a Trademark, in case there is Objection raised, it may lead to delay of a year and if there is opposition filed by a party then the Application may take nearly 2 years to get registered.

Fees to be paid for Trademark Application:

 Applicant Type Mode of Application
Online (E-Filing) Offline (Physical)
Individual / Startup / Small Enterprise INR 4,500/- INR 5,000/-
Any Others INR 9,000/- INR 10,000/-

Correction to the Trademark Application

When some clerical error is required to be corrected in the filed Form TM–M can be used to make such correction. Column (a) of Part B of is required to be filled in Form TM-M and can be filed within 30 days. Fees to be paid is Rs. 900 via online mode and Rs. 1,000/- via Offline Mode.

Procedure of Renewal of a Trademark

The registrar of trademark sends a notice to the Registered Owner of trademark to get the trademark renewed before expiration of Trademark. In case the Registered Owner fails to renew within the time limit, the Trademark can be renewed within further 6 months from expiration date after paying a late fee along with Renewal Charges if still the Registered Owner fails to renew then he gets extension of 6 more months in which he can restore the Trademark by paying Restoration fees.

Trademark Application in multiple Classes

Multiple Trademark can also be applied in single Form TM-A, important to note that fees for each class is to be paid separately. One Application number is generated for all Applications.

{The author is a Company Secretary in Practice & can be reached at (E) mail@csdeepikashukla.com}

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Qualification: CS
Company: Deepika Shukla & Co. (Company Secretaries)
Location: New Delhi, New Delhi, IN
Member Since: 18 Jan 2018 | Total Posts: 21
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