trademark-faqs

A Trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights. It is a brand or name associated with a service or product of an individual or company. It is a unique mark through which the consumers identify a product or service. It differentiates the product manufactured or service provided by an individual or an entity.

There are 7 different types of Trademarks that are registered in India:

1. Product Mark
2. Service Mark
3. Collective Mark
4. Certification Mark
5. Shape Mark
6. Pattern Mark
7. Sound Mark

One of India’s most substantial types of Trademarks is the Product mark. It is a mark linked to the products or goods, but it does not include services. The use of product marks is to recognize the source of a product and differentiate the products manufactured and sold by one person from the others.

Service mark is a mark linked to the services and not the products or goods. A service mark is used to recognize the source of assistance. A service mark differentiates the services of one person from that of another. It signifies the services offered by a company and is used in the service business where the definite goods are not traded under the Trademark as provided by the Trademark Act 1999.

The mark used by the group of companies and protected by the group collectively is termed collective marks. The effect is used to represent or inform the public at large about the unique idea of the product. It is used to promote certain products with specific characteristics in that field.

A certification mark is used to describe the standards of the goods or services. It safeguards the consumers of the goods or services that such product encounters the safety and other set standards. The certification mark on the product signifies that the product has gone through the quantified standard tests. It safeguards and assurances the consumers that manufacturers have assumed or gone through an audit process to safeguard the anticipated quality of the products.

A mark used to indicate the shape of goods, their packing, etc., are termed Shape Mark as provided by the Trademark Act. It is used only when it is likely to present the product’s shape. These shape marks make it different from the other products. If the form has some distinctive features, such effects can be registered under the Trademark Act.

A mark that comprises a pattern capable of identifying the product or services that originate from a particular undertaking and can be distinguished from the other project can be termed the Pattern Trademark as provided by the Trademark Act. The method of evaluation is similar to other Trademarks.

A sound mark is a mark used when a specific sound performs the purpose of uniquely classifying the source of a product or a service; it is termed as sound mark. In such cases, such sound is connected with a company or its products or services. It is provided by the Trademark Act.

Any person who is an individual, a company, a proprietor or a legal entity claiming to be owner of the Trademark can apply for Trademark. An application can be made for registration of a Trademark actually used or proposed to be used by any person claiming to be the proprietor of the Trademark. In the case of a prior user of the mark, the concerned person is required to submit an affidavit along with evidence to support his claim of priority. In India, for the facilitation of the registration of the Trademarks, the Trademark registry operates from five locations i.e. Delhi, Mumbai, Ahmedabad, Kolkata, and Chennai. In the case of Indian applicants, jurisdiction is decided based on the principal place of business of the applicant and in the case of foreign applicants, jurisdiction is based on where an applicant’s agent or attorney is situated.

Benefits of registering a Trademark:

1. Trademark registration allows a person the right to sole use of the mark in regards to the services or goods. In addition, the most important purpose in registration of a Trademark comprises powerful answers against any unauthorized use. Trademark registration allows the proprietor to begin litigation against infringement.

2. Trademark registration also prevents others from using similar marks by making a mark easy to find when searching for Trademark availability searches. This also prevents problems before they arise.

3. Trademark registration safeguards against Trademarks that may sound too confusing.

4. Trademark registration designates the mark on the use of the application date, which is important in a system where the first use wins. Your rights are restricted to a geographic area.

5. Trademark registration affords national notice of ownership, stopping others from claiming a subsequent adoption of the mark.

6. A registered Trademark may be designated as a security, which means that the Trademark may be pledged as collateral to obtain loans in the same way other properties may be bonded.

7. Regarding tangible property, your Trademark is considered a valuable, intangible asset. Trademark registration entails the attachment of goodwill and reputation to a product.

A TM (™) sign denotes an unregistered Trademark, which is a symbol often used to advertise or brand products when they have applied for Trademark registration. Companies may use the Trademark superscript, (™), after text, pictures, or other content they claim as their own but have not been formally registered with a regulatory authority. Occasionally, businesses will use ™ to indicate their first usage or that they have applied for registration. From a business perspective, it suggests that an individual selling a particular product or service believes that its identity is unique.

The R (®) symbol on a product indicates that it is a registered Trademark. This means that the logo enjoys legal protection as per the Trademarks Act, 1999. Trademark registrations carry a validity of ten years with a possibility for an extension by following the renewal process. If a person or business utilizes the registered name, logo, or symbol without the owner’s prior consent, they may be prosecuted for Trademark infringement.

Trademark applications can be submitted filed physically at the Front Office Counter of the Indian Patent Office or filed online through the e-filing gateway available at the official website www.ipindia.nic.in.

The Trademark is registered for ten years by the Registrar. Hence, following the date of registration indicated in the registration certificate, a Trademark registration will be valid for ten years. The Trademark registration must be entered into the Register of Trademarks by the Registrar when it is issued.

By submitting a Trademark renewal application to the Registrar prior to the initial registration expiry, the Trademark owner can extend the Trademark registration for an additional 10 years.

Under the Trademark Act 1999, the duration of Trademark registration in India is ten (10) years. The renewal for a further 10-years period will require prescribed renewal fees.

You’ll have to decide if you want to renew or not before the expiration date. Anyone can claim your Trademark after 10 years if not renewed.

India has been following the Nice Classification system for trade mark registration. The Nice Classification comprises Class Headings, Explanatory Notes and an Alphabetical List of Goods and Services. The Class Headings indicate, in a general manner, the nature of the goods or services contained in each of the classes. Each class has Explanatory Notes which describe the type of product or service included, or not included in a class. The Alphabetical List sets out specific items of goods and services in alphabetical order, along with the appropriate class.

Yes, Trademarks are territorial in nature and must be filed in the countries the applicant seeks for protection.

Section 9 of the Trademarks act, 1999 provides absolute grounds, and section 11 provides relative grounds for refusal of registration of India. Trademark laws mandate Trademarks to be distinctive and non-descriptive in order to get registered. The rationale behind this provision is that non-distinctive or descriptive marks can’t be granted monopoly being generic to the trade and are open for public use without any exclusive rights over the same.

If it is a word it should be easy to speak, spell and remember. The best Trademarks are invented words or coined words or unique geometrical designs. Please avoid selection of a geographical name, common personal name or surname. No one can have monopoly right on it. Avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super etc.) It is advisable to conduct a market survey to ascertain if same/similar mark is used in market. Trademark shall be unique and distinctive. It shall not be same in any manner like phonetically, descriptively and in appearance. Trademark creating confusion with other existing or applied trademark is undesirable. Adding prefix or Suffix also doesn’t create uniqueness and will always is objected by the department.

Yes Corrections cane be made in trademark application, but the basic principle is that the Trademark applied for should not be substantially altered affecting its identity. Subject to this changes are permissible according to rules detailed in the subordinate legislation. Four credentials cannot be changed in existing application, 1. Applied trademark; 2. Owner Name; 3. Class of trademark; 4. Logo (minor variations are allowed in logo).

It can be removed on application to the Registrar on prescribed form on the ground that the mark is wrongly remaining on the register. The Registrar also can suo moto issue Notice for removal of a registered Trademark.

Yes! You can get as many Trademarks as required under one GST or business as there is no relation between the two. However, you should note that each Trademark application has to be filed separately and with separate registration fee for each application. For example, Patanjali Ayurveda Limited has over 140 Trademarks in just one class of Trademark with different names or logos for all of its products.

A registered company’s name is protected against use by any other company or LLP for their business, but a third party can still get a Trademark registered in that name. But on the other hand, if you get a Trademark for the name, the name can neither be used by a company, LLP nor any individual for any purpose under the class that you have registered. Therefore, protection by a Trademark supersedes the protection of name by incorporating a company. But Existing entity can apply to commercial court for infringement of Intellectual Property Rights.

Trademark Registration consists of 2 types. Word and Device.

• If you want to register your brand name only, then you can choose a Word type.
• If you want to register your brand name and logo, then you can choose a Device type. The cost of Trademark registration includes the logo registration.

No, Trademarks are valid for a period of 10 years. After the completing of 10 years, one can file application for its renewal and paying the renewal fee. If it is not renewed, it will be marked abandoned and will be available for anyone to use. Even after the death of owner of Trademark, the same can be transferred to his legal heirs.

No, Trademark registrations are territorial in nature, which means they are valid only in the country of their registration. For protection in various countries, you need to file separate applications in all those countries.

Yes, to file a Trademark application, a DSC is required. In addition, the applicant also needs to create an account on the Trademark Registry. It is advisable to consult a Trademark attorney who can help you with the Trademark registration and hence you will not need to get a DSC. Physical Application can also be filed but that’s much troublesome as compared to online application.

It is during the initial stages of the Trade Mark registration process that the status on the Trade Mark Registry website shows as “Send to Vienna Codification”. This is one of the first steps taken for any Trademark that comprises any figurative element or logo. This codification is done to facilitate Trade Mark Code for an artwork or logo.

Yes, the Trademark can be registered online through the e-filing gateway available at the official website. However it can also be filed physically at the front office counter of the respective office or can be sent by post.

By following the below given steps you can Check Trademark Status

Step 1: Access IP INDIA Website. https://ipindiaservices.gov.in/eregister/eregister.aspx

Step 2: Select National/IRDI Number.

Step 3: Provide Trademark Application Number.

Step 4: View Trademark Application Information on clicking on application number reflecting as hyperlink.

A Trademark search can be conducted in India on the Indian Trademark registry at public search link provided below:

Step 1: Visit the official website of Intellectual Property India at

https://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx

Step 2: Under the dropdown menu in the “Search type” select ‘Wordmark’

Step 3: Here three options are available

• ‘Start with’ which display all the search results that start with the data you have entered;
• ‘Contains’ which display all the search results that contains the data you have entered;
• ‘Match with’ which display all the search results that exactly matches the data you have entered there.

Step 4: Enter the applicable class;

Step 5: Click on search and list of trademark registered or application for registration of trademark will be displayed.

Trademark search refer to any action taken for the purpose of determining whether and/or a Trademark is used in commerce. Trademark searches can be narrow in scope or can include results from every avenue for Trademark protection for every mark is remotely similar to the mark that is the subject of the search. An appropriate search strategy will consider the nature of the mark, the nature of the goods/services the mark covers, the timeline for bringing the mark to commerce, and the applicant’s allocation of resources.

After all the prerequisites have been met, the next step in the Trademark registration process would be the filing of the Trademark application. The application is submitted online to the relevant intellectual property office, requesting an examination and approval of the mark. It includes crucial details such as the applicant’s information, a representation of the mark, and the specified class of goods or services for which it is intended to be used. Accuracy and completeness are paramount at this stage to ensure a smooth progression through the Trademark registration process step by step.

Once the application is filed, the process for Trademark registration necessitates the payment of requisite fees. These fees cover the costs associated with processing the application, conducting examinations, and other administrative functions. Applicants need to be aware of the fee structure applicable to them, based on the type of entity and the number of classes their Trademark is being registered in https://ipindia.gov.in/form-and-fees-tm.htm

This stage involves a meticulous review of the proposed Trademark by the intellectual property office to assess its uniqueness and availability. The objective is to ensure that the mark meets the criteria for distinctiveness, non-descriptiveness, and adherence to other legal formalities. An examination report is prepared by the Examiner, highlighting any objections that may cause hindrance in the Trademark registration process.

Addressing objections raised during the examination stage is extremely crucial to take the Trademark registration process further. The applicant must respond to the objections meticulously within 30 days from the date on which they were raised. If the examiner is satisfied, they will proceed to the next stage. However, if unsatisfied, the examiner may summon a show cause hearing to resolve the issue.

Upon settlement of the objections, the approved Trademark application moves to the publication stage. The mark is published in the Trademark journal, a publicly accessible document inviting potential third-party oppositions. Third-party oppositions may arrive on grounds like the similarity of the mark with other marks. These need to be settled before the application is finally processed for Trademark Registration.

In instances where third parties raise objections or oppositions during the specified period, resolution becomes a critical aspect of the Trademark registration process. This step involves negotiation, settlement, or legal proceedings to address the concerns raised by opposing parties. Only after a successful resolution of all public oppositions, the department will consider proceeding with the application.

The last milestone of the Trademark registration process step by step is achieved when the applicant is granted a Trademark Certificate. This official document serves as tangible proof of the exclusive rights conferred to him. Once issued, it remains valid for 10 years from the date of application. Throughout this period, the Trademark remains protected against unauthorised use and plagiarism.

Trademark protection is not perpetual, Trademark owners must proactively renew their Trademarks to maintain their rights. Failure to renew before the expiry may result in the loss of its protection. The renewal process is almost similar to the original registration process. Moreover, there is no restriction on the number of times a Trademark can be renewed.

No use of mark prior to registration is not mandatory in India. Trademark that are proposed to be used can also be registered in India. But it is always suggestable to mention the user detail.

A mark shall not be registered as a Trademark if-

1. the mark is likely to deceive the public or cause confusion;
2. the matter contained or comprised in the mark is likely to hurt religious susceptibilities of any class or section of the citizens of India;
3. it contains or comprises of scandalous or obscene matter;
4. its use is prohibited under the Emblems and Names Act, 1950.

The government fees for Trademark registrations are as under:

• Where applicant is Individual/Startup/Small Enterprise the fees for E-Filing would be 4500 whereas for the physical filing fees would be 5000.
• In all other cases fees for E-Filing would be 9000 and for physical filing fees would be 10000

Documents required for trademark registration are as follows:

1. Name of owner of trademark;
2. Address of owner of trademark;
3. Nature of business – name of products or services specifically;
4. Trademark/ Logo;
5. Using date of trademark;
6. Mail ID;
7. Mobile Number.
8. MSME/ Startup registration certificate

Yes, The TM symbol is used when an application for Trademark is made with the Trademark registry. The TM symbol is thus used to indicate the fact that a Trademark application exists with respect to the Trademark and serves as a warning for infringers and counter-fitters.

Trademark Registration is a lengthy process and it takes around 18-24 months to obtain registration in a straight-forward case, without any objections or oppositions. However, the Trademark application number is usually issued within one or 2 days after filing.

Trademark registration is a long process which has to pass through various steps. Trademark watch provides the services of keeping a close watch at the each stage of the Trademark registration process and even after that and do the needful as and when needed to prevent the client from missing out on any important stage which can affect the registration of the Trademark.

To understand the remedies for the refusal of the application, it is essential to know the grounds on which the Trade Mark Application was rejected. For this purpose, the applicant should request a copy of the grounds for refusal. Once the copy is received, within 30 days of the refusal notice, the applicant can file a review petition.

Section 127 (C) of the Trade Marks Act 1999 empowers the Registrar, on an application made in the prescribed manner, to review their own decision regarding the registration. This review application must be filed in form TM-M within one month from the date of the application or within an additional one month as allowed by the Registry. The review application should be accompanied by a statement setting out the grounds for the review.

The review of the decision is generally considered by the same officer who passed the initial decision. After giving the parties an opportunity for a hearing, the Registrar will then dispose of the review petition, either allowing the Trademark to be advertised in the journal or maintaining the refusal. If the applicant is still unsatisfied with the outcome, they can appeal to the Intellectual Property Division of the High Court.

A Trademark has to have one basic feature that is it should be unique and create a brand identity for a product. So if a Trademark is such that does not create any brand for a product can’t be Trademarked.

In general,

• Generic words can’t be Trademarked. For example you can’t Trademark the words like TV, Fridge, scooter, car etc.
• The names of the cities and countries cannot be Trademarked.
• The names of Gods and Goddesses and the names of religious books cannot be Trademarked. For example you can’t Trademark Lord Ram or Ramayana
• Surnames cannot be Trademarked under normal circumstances. For Example you can’t Trademark Sharma
• Names of Constitutional Posts or Government posts can’t be Trademarked. For examples you can’t Trademark Prime Minister of India
• Words which denote illegal or Immoral acts can’t be Trademarked. For example you can’t Trademark *Let’s cheat or Let’s grope
• Words which are prohibited under names and emblems act can’t be Trademarked. For example, you can’t Trademark the official sign of Government of India.

Following is the step-wise guide for Trademark Registration in India:

• Step 1: Trade Mark Search:

This step is of utmost importance before filing a Trademark application, as it aids the owner in determining whether their Trademark is unique and distinctive and whether there exists another Trademark that closely resembles the owner’s mark. Merely having a unique brand name in mind does not guarantee that it is not already registered by another business, making the Trademark search an essential and unavoidable process. This search can be conducted either through the Trademark Office or via the Online Portal. On the Online Portal, you can select a specific class and search the database accordingly.

• Step 2: Prerequisite Documents: The following are the documents required during Trademark Registration:

1. Name of owner of trademark;
2. Address of owner of trademark;
3. Nature of business – name of products or services specifically;
4. Trademark/ Logo;
5. Using date of trademark;
6. Mail ID;
7. Mobile Number.
8. MSME/ Startup registration certificate

• Step 3: Examination of Trade Mark Application: After the submission of the Trademark Application, the Examiner must submit an examination report which may or may not include any objections that can be absolute, relative or procedural.
• Step 4: Respond to the Examination Report: Within 30 days of receiving the examination report, you must file a reply to assert the arguments in favor of the application and address any objections that may have been raised. This period provides ample opportunity to address objections and resolve any concerns raised during the examination process. If the application is not yet accepted after fulfilling the conditions, then a hearing can be requested. If the examiner believes that the Trademark should be registered then, it will be published.
• Step 5: Acceptance and Publication: After a thorough examination, the Trade Mark is published in the Indian Trade Mark journal. The purpose of this advertisement and publication is to invite objections from anyone who may oppose the registration of the Trade Mark, providing a fair opportunity for such opposition. In case of opposition, the applicant is required to present a case justifying why the registration should be granted to them. Upon receiving an opposition, a counter-statement must be filed within two months using Form TM-O.
• In the event of a refusal, the examiner declines to register the Trade Mark.

                                                                OR

• If the Trade Mark Registrar approves the application without any objections, a Trade Mark Registration Certificate will be issued, bearing the Trade Mark Registry Seal

Yes, we can file a single application under multiple classes mentioning the proposed class and their description in the application. The procedure for filing a multiclass trademark application is similar to the procedure of filing an application under a single class. It should be noted that the government fee for filing a multiclass application is to be paid per class.

Goods means anything which is the subject of trade or manufacture.

Services means service of any description which is made available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising.

Registered Proprietor means a person whose name has been entered in the register as proprietor of the trade mark.

Go to TM CLASS SEARCH, classification of goods and services are listed from Class 1 to Class 45. Once you reached the site, click on the Classification Resources tab, and select “Nice Class Heading”, a list of terms along with Class will be displayed. You can find it from the link given herewith. https://euipo.europa.eu/ec2/

After the acceptance of the mark, trademark is published in TM Journal. If no opposition is filed within four months from the date of publication of the trademark, the published trademark becomes eligible for registration. The issuance of registration certificate is done through automated TM system.

When a trademark application is filed by a trademark attorney or a trademark agent or a constituted attorney, then a power of attorney (Form TM 48) must be executed by the applicant in favour of the trademark filing agent.

 Form TM-48 must be printed on  Rs. 100 Non-Judicial Stamp Paper.

Trademark registration fees for MSME and Startups have been reduced to 50% as compared to other entities. MSME stands for micro, small and medium enterprises. These businesses have recently gained popularity due to their marginal investment needs, shorter gestation period, and supportive government initiatives. For getting the benefit under the trademark registration.

Following are the documents required for Trademark Registration of MSME’s:

1. Name of owner of trademark;
2. Address of owner of trademark;
3. Nature of business – name of products or services specifically;
4. Trademark/ Logo;
5. Using date of trademark;
6. Mail ID;
7. Mobile Number.
8. MSME/ Startup registration certificate

Form TM-M is used when the trademark application is pending for registration. It is used for the correction of any error in or in connection with his application or any amendment of his application. You can select any of the following suitable heads:

• AMENDMENT OF REGULATION OF A COLLECTIVE MARK;
• CERTIFIED COPY OF ENTRY IN THE REGISTER (U/S 137) / COPY OF A DOCUMENT;
• CORRECTION OF CLERICAL ERROR OR FOR AMENDMENT U/R 37;
• DETAIL OF ADVERTISEMENT OF MARK;
• DIVISION OF APPLICATION;
• EXTENSION OF TIME;
• EXPEDITED LEGAL CERTIFICATE;
• PRELIMINARY ADVICE;
• REGULATION FOR GOVERNING THE USE OF A COLLECTIVE TRADEMARK OR A CERTIFICATION TRADEMARKS;
• REQUEST FOR ADVERTISE A NOTE OF CERTIFICATE OF VALIDITY;
• REQUEST FOR INCLUSION AS WELLKNOWN MARK;
• REQUEST FOR PAYMENT OF MISC. FEE FOR OTHER PURPOSE;
• REQUEST FOR THE INSPECTION OF THE DOCUMENT UNDER RULE 121;
• REQUEST SUBMITTING AUTHORISATION OF AGENT;

Trademark Class 35 covers a variety of business services.  It includes services involving business management, operation, organization and administration of a commercial or industrial enterprise, as well as advertising, marketing and promotional services.

Trademark Class 5 covers Pharmaceuticals, medical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for human beings and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides.

Yes you can register your clothing brand. Trademark Class 25 covered Clothing, Footwear Headwear and other accessories.

Trademark registration certificate can be downloaded from the Official Trademark Registry Website. It can be downloaded by the applicant or the general public.

Steps to download the trademark registration certificate:

Step 1: Go to the official trademark registry site;

https://ipindiaservices.gov.in/eregister/eregister.aspx

Step 2 Click on the Trademark Application /Registered Mark option;

Step 3 Select the National/ IRDI Number;

Step 4 Enter the Trademark Application number and captcha code and click on the view button;

Step 5 Click on the Trademark number;

Step 6 Click on the View Registration Certificate option;

Step 7 The trademark Certificate will be displayed in a new tab. Click on the download icon, it will be saved in pdf form.

Trademark is valid for 10 years only.  An application for TM renewal must be filed six months prior to expiry of the 10 years period. If the trademark owner fails to renew the trademark registration within the stipulated time , the trademark becomes abandoned. Once the trademark is abandoned, it becomes available for other to use and filed the application for the same mark.

When the applicant failed to respond within stipulated time period prescribed in the act, the status of the application shows as “Abandoned”.

Trademark registry abandoned the application on the following grounds:

1. If trademark registry come across to any defect in the application, an examination report is sent to the applicant with objection under section 9 or section 11. If the applicant failed to respond or failed to attend the hearing called by the registry, then in such scenario your application status be shown as Abandoned;
2. A trademark registration is valid only for 10 years. After the expiry of this it needs to be renewed. If owner of the trademark fails to renew the trademark within 1 year after the expiry date, it is likely to be abandoned by the trademark Registry and afterwards any person can claim for such mark;
3. If a trademark application is opposed then in such a case counter statement against such opposition must be filed in form TM O within 2 months, delay in filing of documents can lead to the status of Abandoned.

Whenever a Trademark Application is opposed, applicant received a notice from the Trademark registry. You can also check it from E-Register –

Following are the steps to know who had opposed your Trademark Application:

Step 1: Go to the official trademark registry site;

https://ipindiaservices.gov.in/eregister/eregister.aspx

Step 2 Click on the Trademark Application /Registered Mark option;

Step 3 Select the National/ IRDI Number;

Step 4 Enter the Trademark Application number and captcha code and click on the view button;

Step 5 Click on the Trademark number;

Step 6 In case your Trademark application is opposed, Status will appear as “OPPOSED” on the top left side of the master page.        

Step 7 On the master page, when you go down to the page it will show the details of Opponent name and address, details information can also be downloaded from there.

Yes, all the supporting documents filed with reference to the application/ opposition/ or Counter Statement are available  in the official trademark registry site . You just need to enter the Application number and thereafter you can check the notices and evidences submitted by the parties.

https://ipindiaservices.gov.in/eregister/eregister.aspx

While filing the application for registration of trademark in FORM TM A, if applicant wants to go with the device then the permissible size for the logo is 8cm x 8cm.

Machines, machine tools, power-operated tools; Motors and engines, except for land vehicles; Machine coupling and transmission components, except for land vehicles; Agricultural implements, other than hand-operated hand tools; Incubators for eggs; Automatic vending machines

This Class includes, in particular:

• semi-worked woods for use in building, for example, beams, planks, panels;
• wood veneers;
• building glass, for example, glass tiles, insulating glass for building, safety glass;
• glass granules for marking out roads;
• granite, marble, gravel;
• terra-cotta for use as a building material;
• roofing, not of metal, incorporating photovoltaic cells;
• gravestones and tombs, not of metal;
• statues, busts and works of art of stone, concrete or marble;
• letter boxes of masonry;
• geotextiles;
• coatings being building materials;
• scaffolding, not of metal;
• transportable buildings or structures, not of metal, for example, aquaria, aviaries, flagpoles, porches, swimming pools.

Yes you can register your brank, it is covered under class 21. It includes Household or kitchen utensils and containers; Cookware and tableware, except forks, knives and spoons; Combs and sponges; Brushes, except paintbrushes; Brush-making materials; Articles for cleaning purposes; Unworked or semi-worked glass, except building glass; Glassware, porcelain and earthenware.

Class 41 covers a variety of services like:

• organization of exhibitions for cultural or educational purposes, arranging and conducting of conferences, congresses and symposiums;
• translation and language interpretation services;
• publication of books and texts, other than publicity texts;
• news reporters services, photographic reporting;
• photography;
• film direction and production services, other than for advertising films;
• cultural, educational or entertainment services provided by amusement parks, circuses, zoos, art galleries and museums;
• sports and fitness training services;
• training of animals;
• online gaming services;
• gambling services, organization of lotteries;
• ticket reservation and booking services for entertainment, educational and sporting events;
• certain writing services, for example, screenplay writing, songwriting.

In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.

If two people are using the same trademark and neither is registered, each party would have common law rights that are limited to their geographical reach. However, if the geographical reach as well as the field of goods or services overlap one another, then the party who can establish an earlier date of use of the trademark would generally have “prior rights.”

The name of a series of books may be federally registered as a trademark. To determine whether your work is a book series or a “single creative work,” which is not eligible for registration, consult an Intellectual Property attorney.

A company slogan used to indicate the source of goods or services can be registered as a trademark, provided all use requirements are met. Slogans or phrases used on T-shirts or buttons that are not used to identify a source of goods or services are not eligible for trademark registration.

Intellectual property in India refers to the patents, copyrights and other intangible assets in India.

Every applicant or opponent or any person concerned in any proceeding under the Act or rules shall furnish to the Registrar an address for service in India comprising of a postal address in India and a valid e-mail address and such address shall be treated as the address for service of such applicant or opponent or person:

Provided that a trademark agent shall also be required to furnish a mobile number registered in India.

Classification of goods and service for the purpose of registration of trademark, the goods and services shall be classified as per current edition of “the International Classification of goods and services (NICE classification)” published by the World Intellectual Property Organization (WIPO). https://euipo.europa.eu/ec2/

The Registrar shall publish a class wise and an alphabetical index of such goods and services, including goods and services of Indian origin.

When the Trademark examiner examines the application, he may object the application if it violates the act and rules. The objection raised by the examiner is known by Trademark Objection. The examiner raise the objection in the form of Examination Report, the applicant should file the reply to examination report within 1 month.

When the application for Trademark is published in TM journal for public to view, any person can within four months from publication in the journal can file an opposition. The purpose of Trademark opposition is to prevent a person from using the same, identical mark which may create confusion among the public.

An application to register a trademark shall, unless the trademark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of all the goods or services mentioned in the application.

In case, the use of the trademark is claimed prior to the date of application, the applicant shall file an affidavit testifying to such use along with supporting documents.

If the name or representation of any person appears on a trademark, the applicant shall, if the Registrar so requires, furnish him with the consent in writing of such person in case he is living or, in case his death took place within twenty years prior to the date of the application for registration of the trademark, of his legal representative, as the case may be, to the use of the name or representation and in default of such consent the Registrar may refuse to proceed with the application for registration of the trademark.

While considering the application made by the applicant, if the registrar has any objection to the acceptance of application or propose to accept it but subject to some conditions, amendments, modifications or limitations as he may think fit to impose. In such case, the Registrar shall communicate such objection or proposal in writing to the applicant in the form of an examination report.

If, within one month from the date of receipt of the examination report, the applicant fails to respond to the communication, the Registrar may treat the application as abandoned.

If the response to the examination report is not satisfactory or where the applicant has requested for hearing, the registrar shall provide an opportunity of hearing to the applicant and the same shall be conducted as per rule 115.

In case the applicant fails to appear at the scheduled date of hearing and no reply to the office objection has been submitted by the applicant, the Registrar may treat the application as abandoned.

An application for the renewal of the registration of a trademark shall be made in Form TM-R along with the fee as prescribed in the first schedule and may be made at any time not more than one year before the expiration of the last registration of the trademark. https://ipindia.gov.in/form-and-fees-tm.htm

Ready For Show Cause Hearing  is a status given to a trademark application when the Examiner has determined that the application requires further review. The applicant will then be required to attend a hearing to explain why the trademark should be granted registration.

The applicant can attend the trademark hearing either in person or through a Trademark Agent/Attorney. However, if no objections are raised, the application is approved and then published in the Journal.

In hearing applicant is allowed to present their arguments and evidence and respond to any concerns or objections raised by the Examiner. After the hearing, the hearing officer will issue a written order or decision either approving or rejecting the trademark application.

A notice of opposition shall be filed within four months from the date of publication of the trademark journal in which the application for registration of trademark was advertised.

The opponent must file the evidences in support of trademark opposition within two months of receipt of a copy of the counterstatement or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition.

The applicant must file evidence in support of a trademark application within two months of receipt of copies of affidavits in support of opposition or intimation that the opponent does not desire to adduce any evidence in support of his opposition.

 In case the applicant adduces any evidence or relies on any evidence already left by him in connection with the application, he shall deliver to the opponent copies of the same, including exhibits, if any, and shall intimate the Registrar in writing of such delivery.

The opponent may within one month from receipt of copies of the applicant’s affidavit, file evidences by affidavit in reply and shall deliver the copies of the same  including exhibits, if any, to the applicant and shall intimate the Registrar in writing of such delivery.

Where no notice of opposition to an application advertised or re-advertised in the Journal is filed within the period specified, or where an opposition is filed and it is dismissed, the Registrar shall enter the trademark on the register.

The entry of a trademark in the register shall specify the date of filing of application, the actual date of the registration, the goods or services and the class or classes in respect of which it is registered.

In case of death of any applicant for the registration of a trademark after the date of his application and before the trademark has been entered in the register, the Registrar may, on request on form TM-M and on proof of the applicant’s death and on proof of the transmission of the interest of the deceased person, substitute in the application, the name of successor in interest in place of the name of such deceased applicant, and the application may proceed thereafter as so amended.

The certificate of registration to be issued by the Registrar under sub-section 2 of section 23 shall be on Form RG-2 and shall include the trademark. It shall bear the seal of the Trade Marks Registry.

The Registrar may issue duplicate or further copies of the certificate of registration on request by the registered proprietor in Form TM-M accompanied by the prescribed fee.

Provided that, no such duplicate or copy of certification of registration shall be issued where such request is received after the expiry of time limit for renewal of registration and restoration of registered trademark.

If at the expiration of registration of a trademark, the renewal fees has not been paid, the Registrar may remove the trademark from the register and advertise the fact forthwith in the Journal.

If no application for renewal of the registration is made in the prescribed form (FORM TM-R) with the specified fee, the registrar shall send within six months before the expiration of registration of trademark a notice in FORM RG-3 at the address of service informing the registered proprietor of the approaching date of expiration and the conditions, if any, subject to which the renewal of the registration may be obtained.

Before making application for registering the mark, one must check the name availability.

Following are the steps to check it:

Step1 : Go to the official website of Trademark registry for Public Search from the link given herewith: https://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx

Step 2: Choose the search type “Wordmark”

Step3: Choose the search parameter, such as “starts with, “contains, or “phonetically similar;

Step4: Enter the proposed trademark name in the search box;

Step5: Enter the relevant class you want to applied for;

Step6: Click on the search button;

The search results will show you that the proposed mark you want to registered is whether already registered by someone else or not, or if yes then the possibility of getting the same mark is less because it will likely to conflict with already registered mark. One shall use all possible permutation and combination while making search for best results.

Any person can check the status of Application from the site of Trademark Registry, you just need the Application Number for the same.

Following are the steps for checking the status of Application:

Step1: Go to the Official site of Trademark Registry from the link given herewith: https://ipindiaservices.gov.in/eregister/eregister.aspx

Step2: Click on the Trademark Application /Registered Mark option;

Step3: Select the National/ IRDI Number;

Step4: Enter the Trademark Application number and captcha code and click on the view button;

Step5: Click on the Trademark number;

Step6: On the top left side, you can see the status of your application.

Goods and services are classified from Class 1 to 45 for Trademark. You can check within which class your Goods or Services falls  from the website given herewith:

https://euipo.europa.eu/ec2/

Following are the steps to check it:

Step 1. Go to the website as above mentioned;

Step 2. Once you reached the website, Click on the “Classification Resources” tab which is shown on the top interface of the page;

Step 3. After that, click on the “Nice Class Headings”

Step 4. Class wise list of terms will be displayed on the page;

Step 5. Enter the name of Goods or Services in the “Search bar” you want to search;

Step 6. After that you will get the List of terms under which your searched item falls.

In the initial stage while examining the application if applicant defaults in filing proper documents or essential information, registry sends a notice regarding this and the application made by the applicant faces the formality check fail.

The following are some reasons behind an application faces the Formality check fail:

• Incorrect Class– Trademark is divided into 45 classes. The appropriate class need to be selected after checking the list of items a particular class covered. If the class is not correct, your applicaton will not proceed futher and marked as “Formality check fail” in Trademark by the department.
• Improper Information- The name, address, state and other details must be as per power of attorney; category of mark, class, product description, agent registration number, etc. all the relevant information must be filled.
• Improper Documents- Power of Attorney, User Affidavit must be properly notarized, If applicant opt for MSME/ Start-up benefit in Trademark, then in such a case MSME/ Start-up Registration certificate must be attached with the application. Also on POA & User Affidavit appropriate amount of stamp duty shall be made as per Schedule I of Stamp act of respective state.
• Inappropriate goods or services description- Description must be provided accordingly for the goods or services applicant is dealing with.

MIS F is reply to formality check.  Applicant can file a Formality check from the tab “miscellaneous reply” by selecting “reply to formality check (MIS-F)” and providing an application number.

If your application status is showing “Marked for Exam”, it shows that your application will be revieved by the examiner to determine its registrability. Examiner will check whether the application made by you qualifies for registration or not. Trademark examiner will also check the documents and informations submitted by you.

When Trademark examiner serves an Examination report containing objection under Section 9 (absolute grounds) and Section 11(relative grounds), the trademark application status shows Objected with an alert- awaiting for reply to examination report.

If the examiner examines the trademark application and, after hearing the applicant’s response to the objection, he/she refuses the application, the trademark status shows ‘refused.’

The trademark status can also show ‘refused’ in cases when a third party is able to oppose the trademark application successfully.

The following are the reasons for refusal of Trademark Registration:

• Lack of Distinctiveness;
• Similarity to existing Trademarks;
• Deceptive or Misleading in nature;
• Improper Classification;
• Lack of proper description of Goods or Services;
• Misrepresentation in respect to false statements of ownership, user detail of trademark;
• Similarity to well-known Trademarks;
• Offensive or Immoral Trademarks;
• Failure to respond to Trademark registry actions;
• Infringement of existing Trademarks;
• Misleading Trademarks which are likely to deceive people;
• Lack of evidence of use;

If the registration is refused the applicant has the final option of appealing to the Intellectual Property Appellate Board (hereinafter referred to as IPAB). An appeal to the IPAB must be filed within three months of the date of issuance of the refusal order by the registrar.

If any trademark is added to the trademarks journal and advertised there, the status of the trademark application shows ‘Advertised before accepted.’ Any third party can oppose such trademark application within 4 months of being advertised.

If no opposition is lodged against the trademark, the trademarks officer has to accept the trademark application before issuing the certificate. Once the certificate is issued, the status changes to ‘advertised and accepted’ and later changes to ‘registered.’

The simple motive behind the publication of Trademark in the TM Journal is to give general public a window of 4 months to raise their objection on the applied Trademark if the said mark is likely to create conflicts or unnecessary trouble to their already applied/ registered marks.

The Indian Trademarks Office publishes the Trademark Journal of India and contains information on trademarks registered or applied in India. It is a public record that anybody can occasionally inspect and raise public opposition if needed.

When a third party opposes the application within 4 months from the advertisement date, then the trademark application status shows as ‘opposed.’ A third party is most likely to file an opposition only if the trademark application is not  similar to another trademark already in use.

The trademark application status shows as “Abandoned” when the applicant failed to respond within the stipulated time period prescribed under the act.

The following are some reasons, why an application is abandoned:

• No response has been filed to an examination report within the stipulated period of one month from receipt of examination report;
• If the applicant forgets to file a counter statement within 2 months of receiving the notice of opposition, the trademark status will change to ‘abandoned;
• Show-cause hearing has not been attended when the hearing was scheduled;

A trademark application requires a minimum of 18-24 months to get approval if the application is accepted without any opposition or objection. However, if any opposition or objection is raised against the application, it might take more than 24 months to approve your trademark application . However, the trademark application number is usually issued within one or 2 days after filing.

Even though a TM can be used without filing application for registration but using it without registering will not provide legal protection against its infringement, and your competitors can still copy your logo.

Trademark examiner will reject the application if the class you have applied and the description is not matching or can issue formality check fail notice. Trademarks are divided into different classes, and if your trademark is not in the appropriate class, it may be rejected.

The best solution to avoid the unnecessary delaying in registration is to consult with a trademark attorney to ensure that your application is filed in the appropriate class with appropriate goods or services description.

To register a Trademark, owner needs to go through the following steps:

1. Trademark Search;
2. Filing an Application;
3. Examination Process;
4. Post Examination Procedures;
5. Publication of the Trademark Application;
6. Notice of Opposition;
7. Filing of Counter Statement against Notice of Opposition;
8. Registration;

The response to office objections mentioned in the examination report, should be submitted by the applicant or applicant’s authorised agent concerned, as the Reply to Examination Report.

In case the applicant/applicant’s authorised agent has a level III digital signature he may send the Reply to Examination Report online through the gateway provided at the home page of the office website www.ipindia.nic.in

The Reply to Examination Report may also be submitted at the Head Office/appropriate office of the Trade Marks Registry, personally or by post.

 Any affidavit and supporting documents may also be submitted along with the Reply to Examination Report

In case of objections as to formality requirement(s), the applicant should comply the requirements as desired by the office. The applicant may however submit to establish that as per Trade Marks Act and Rules the formality requirement(s) called by the office are not necessary. For example if the office may has called for consent of the person whose portrait appears on the trademark, the applicant may state that portrait appearing on the trademark is not of a particular person, but it is general picture of a man or woman.

In case of objection to the effect that goods or services mentioned in the application do not fall in the class mentioned in the application, the applicant may file a request for amendment of the application by correcting the class; the applicant may however submit that as per classification of goods or services published by the Registrar, goods or services have been rightly classified. In case of objection to the effect that some goods or services mentioned in the application do not fall in the class, the applicant may file a request for amendment of the application by deleting items that do not fall in the relevant class. the applicant may however submit that as per classification of goods or services published by the Registrar, all items fall in the class mentioned in the application.

In case of objections on relative grounds of refusal because of identical or similar trademarks in respect of similar goods or services, existing on records, the applicant may submit to the effect that trademarks cited as conflicting marks in the examination report are different than the applicant’s trademark; or goods or services mentioned in the application are different than those covered in marks cited as conflicting in the examination report. The applicant may also produce consent/No objection from the proprietor of marks cited as conflicting in the examination report

In case the office objections to acceptance of the application for registration cannot be waived even after considering the applicant’s response to examination report, the matter is set down for hearing through the system.

This hearing commonly known as show cause hearing is scheduled and conducted at the appropriate office of the Trade Marks Registry.

A hearing notice shall be sent to the applicant/agent/attorney concerned, intimating him about the Application No. & Date of Hearing. The hearing notice shall be sent approximately 15 days before the date of hearing.

It is shown when Trademark registry had sent a Notice for Hearing and the hearing date is scheduled. The Hearing Officer shall patiently hear submissions of the applicant or applicant’s authorised agent concerned and peruse all other documents submitted or referred to during the course of hearing.

Section 9 describes “absolute grounds for refusal of trademarks” which are not prima facie “capable of distinguishing” the goods/services of one person from those of another person are devoid of distinctive character.

In order to overcome office objections raised under Section 9(1) the applicant may submit the mark has acquired a distinctive character by virtue of its prior use.

The use of trademark must be established by adequate evidence. Under section 129 of the Act, ‘in any proceeding before the Registrar, evidence shall be given by affidavit. But the Registrar may, if he thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit’.

Section 11 sets out “relative grounds for refusal”’ by reason of conflict with prior trademarks and well-known marks, however under Section 12 a mark could be registered on the basis of “honest concurrent use” when supported by evidence to that effect.

Objections raised under Section 11 can be overcome by the applicant by :

• removing the conflicting goods/services by way of amendment;
• obtaining consent from the proprietor of the cited mark(s) under Section 11(4);
• filing evidence to establish honest concurrent use to secure registration under section 12;
• By securing rectification of register excluding such goods/service of the same description from the specification of the cited mark, under section 57;

If the applicant or his authorized agent is not prepared or is unable to appear for hearing and files an application for adjournment of hearing, the Hearing officer may allow the request for adjournment and then a next date will be fixed for hearing. However no adjournment will be given on frivolous grounds. Hearings may also be adjourned and may be fixed on another date due to administrative reasons. In all adjournments of hearing, a fresh hearing notice fixing hearing on another date shall be issued to the applicant/agent/attorney concerned.

After duly considering the evidence of use of the mark, the distinctive nature of the mark, existence of earlier similar marks, if any, the nature of goods/services covered under the application and other relevant facts, the Hearing Officer may accept the application for registration or he may accept the application with condition as to use of the trademark or limitation as to area of trade, as he thinks fit; or he may propose the application to be advertised before acceptance or may refuse to register after giving reasons of refusal.

During the course of hearing the applicant may desire to withdraw the application, or the authorised agent of the applicant may desire to withdraw the application on  behalf of the applicant. In such circumstances, the Hearing officer will require the withdrawal letter to be submitted in writing. The withdrawal letter will be uploaded in the system.

The genuineness of withdrawal letter as well as the authority of the person withdrawing the application shall be verified by the Hearing Officer on the basis of records of the application. If withdrawal of application is done by the competent person, the Hearing officer concerned will treat the application as withdrawn, enter his remarks in the system to this effect and update the status of application accordingly.

If the Hearing Officer is not convinced with the materials produced & submissions made in the course of hearing and he may refuse the application for registration after giving appropriate reasons.

A communication letter shall be generated through the system, in respect of all types of orders passed by the Hearing Officer. The said letter shall be sent to the applicant/applicant’s authorised agent concerned, latest within one week of the order.

The trademark journal contains –

• Public Notices and notifications, if any, issued by the office;
• Trade Mark applications which are accepted or ordered to be advertised before acceptance;
• Re -advertisements of applications, if ordered by any competent officer;
• Corrigenda or further notification in respect of earlier published application;
• List of trademarks, which are registered, renewed, removed, application withdrawn, etc;
• Post registration changes including Assignments/transmission recorded;
• International non -proprietary names as published by WHO from time to time;
• Other information as considered necessary to be published from time to time.

MIS-R (Miscellaneous R) is used to file the objection reply. Following are the documents attached as reply:

• A copy of examination report reply with appropriate submissions;
• A power of attorney that the applicant duly signs;
• Documented proof against the objection. This can be anything like affidavit, permission, etc.

There is no fee associated with the reply. However, as you will need the assistance of a professional for this process, they will charge you a nominal fee. Before the submission, you, as a client, would check if the reply is correct.

Once the reply has been submitted, there is a waiting time of 15 days. After this time, you will get either a positive or negative response. A positive reaction will advertise your trademark in the journal. A negative one will prompt you to appear in a trademark hearing.

The Trade Marks Act, 1999, provides for the renewal of a registered trademark for a period of ten years from the date of expiration of the original registration or the last renewal. To initiate the renewal process, the registered proprietor must apply to the Registrar of Trademark in FORM TM-R along the fees of INR 9,000 (in case of e-filing) , within one year before the expiration of last registration of the Trademark. Upon receiving the application and payment of the prescribed fee, the Registrar will renew the registration for another ten-year term.

There is no limit on the number of times you can renew your Trademark. You must remember that with every renewal, validity is extended for another ten years.

Following are the easy steps for renewal of Trademark:

Step 1: Filing of Application for Trademark Renewal;

Step 2: Verification and Examination;

Step 3: Publication in Trademark Journal;

Step 4: Issuance of Renewal Certificate;

Submit a renewal application to the Trademark Registry in Form TM-R. Include the following details:

• Trademark registration number;
• Current status of the trademark;
• Applicant’s contact information;

The Registry will verify the application and examine the trademark for any potential conflicts. It will also assess the renewal eligibility based on the validity period of the trademark and compliance with renewal requirements. If a conflict is found, the registry will raise objections and seek clarifications from the applicant. The clarification must be filed within the prescribed time frame.

No the renewal application is not published in TM Journal for opposition.

Upon successful completion of the publication period and resolution of any opposition or if no opposition arise, then the Registry will issue the Trademark Renewal Certificate. This certificate confirms the renewed validity of your trademark for the next 10 years.

The application for renewal may be made by a person who is proprietor of the registered Trademark or by a person who is his duly authorized agent.

If someone else is representing the trademark owner, a Power of Attorney is necessary.

The application for Trademark Renewal must be filed before its expiry.

You may be able to file the trademark renewal application one year prior to the expiry of its registration.

 In case the registration of the trademark has lapsed as it was not renewed before its expiry, it can be renewed within six months after its expiry with an additional surcharge in government fee of trademark renewal.

If the trademark application is not renewed, before its expiry or with additional fee within six months after the expiry date, then the trademark registration gets cancelled. A cancelled trademark can be restored if an application is filed within six months of cancellation.

The government fee for Trademark Renewal is Rs 10,000 (for offline filing) and Rs.9,000 for (for online filing) if the application for the renewal is filed before the expiry of the trademark. If the application is filed within 6 months after the expiry, the applicable surcharge over and above the renewal fees would be Rs.4,500 per class (for e-filing) and Rs.5,000 per class (for offline filing).

A person (including a legal entity):

• who is a citizen of India, or domiciled in India, or
• who has a real and effective industrial or commercial establishment in India, and
• who has got a registration of a trademark or whose application for registration of trademark is pending in Indian office ,

may make application for international registration of his trademark.

You can file international application of Trademark either offline (physical submissions) or through online mode from the site given herewith www.ipindia@nic.in.

You must already have – or have applied for – a national trademark registration (known as your “basic mark”) through your home IP Office (“Office of origin”) before you can file an application for an international trademark registration.

Form MM-2E is used to file application for international registration of trademark under the Madrid System.

Application must be filed through the gateway for online filing of International applications made available at the official website www.ipindia@nic.in,

The Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. File a single international trademark application and pay one set of fees to apply for protection in up to 130 countries. Modify, renew or expand your global trademark portfolio through one centralized system.

Having regard to the practical difficulty in filing applications for registration of trademark in each country, with different laws, languages and fee payment in different currencies, an international agreement gave birth to the Madrid Protocol administered by a specialised agency of the United Nations, called the World Intellectual Property Organisation (WIPO). This protocol facilitates international registration of trademark and provides a means for securing protection to such marks in one or more member countries under the Madrid System.

You can use the Madrid System if you are a national of or have a domicile or business in any of the 130 countries covered by the Madrid System’s https://www.wipo.int/export/sites/www/treaties/en/docs/pdf/madrid_marks.pdf

The Madrid Union is made up of Contracting Parties to the Madrid Protocol.

The office of the Contracting Party in which you apply for or register your basic mark is referred to as the “Office of Origin“. In your international application, you can select Contracting Parties in which you would like to protect your mark, or you can expand the geographical scope of your international registration under the Madrid System at a later time.

Yes, Trademark registration is subjected to territory where it gets registered. When a trademark is registered in India, the registration provides protection only within India. A trademark owner needs to obtain international trademark protection for its protection outside India. When trademark owners have national registration/application is filed for such registration of Trademark, they can apply the mark outside India and ensure that third parties do not apply for the same trademark in the global market.

The Trademarks Act, 1999 was amended to comply with the Madrid system after India became a member of the Madrid Protocol. On 21 September 2010, the Trademarks (Amendment) Act, 2010 was passed, and the international trademark registration under the Madrid Protocol was introduced in India.

With the expansion of International trade and commerce, the need to obtain protection of trademark becomes very important for commercial enterprises to register not only in one’s own home country but also in other countries. 

Basic application means an application filed under section 18 of Trademark Act, 1999 for the registration of Trademark in one’s own country which is used as a basic necessity for applying for an international trademark registration.

Basic registration means the registration granted under section 23 of Trademark Act, 1999 in one’s own country which will be used as a basic necessity for getting international registration of trademark.

Following are the requirements to be fulfilled before making application for international trademark registration:

• The applicant should be domiciled in India, be an Indian national or has an effective and real business or commercial establishment in India.
• The applicant must have a trademark registered with the Indian Trademarks Registry or must have applied for a national trademark application in India. The national trademark application/registration acts as the basis of the international application.
• The applicant should apply for an international application for the same trademark for which the national trademark registration is obtained or mentioned in the national trademark application.
• The list of goods and services in the international application should be the same as on the national trademark registration or application.
• The applicant must choose one or more Madrid Protocol member countries where they wants protection in the international application.

Any person can make application for registration of trademark internationally only if he had applied for registration or is registered owner of the trademark in their own country. After

that, applicant or the registered owner may make an international application in the form prescribed by the common regulations for international registration of that trademark.

Form MM-2E is used to file application for international registration of trademark under the Madrid System. The applicant must specify all the countries in which they seek registration which are known as designated contracting parties.

The term “Contracting Party” denotes any country as well as any inter-governmental organization (the European Union, for instance) which is party to the Madrid Protocol.

The Office of Origin is the office of the Contracting Party through which the applicant derives entitlement to file the international application. It is the Office in which the basic application will have been filed or the basic registration will have been recorded.

Yes application made by the applicant for international registration be first checked by the Trademark registry. If the international application does not meet the requirements, the registrar shall not forward it to the International Bureau. A notice to comply with the requirements shall be sent to the applicant by the registry of trademark. Application will be forwarded to WIPO only after such compliances have been made within the period specified in the notice.

The Registrar of Trademarks (office of origin) will process and verify the application. After verification, the Registrar will forward the international application within the time period of two months from the date of receipt of the said application to the International bureau for registration, which scrutinizes International application received from the office of origin.

[International Bureau means office of World Intellectual Property Organisation (WIPO)].

The applicant must file the international trademark application electronically through the official IP India website and pay the handling fee. The site link is given herewith for your reference. https://ipindiaonline.gov.in/trademarkefiling/user/frmLoginNew.aspx

While scrutinizing the application by the International Bureau, if they discovered any irregularities in the application, the comments made by them will be communicated to the office of origin and the applicant’s authorised representative, who must rectify the irregularities within the prescribed period.

No, there is no need to file multiple application for registration of trademark, The Madrid System allows for registration in multiple jurisdiction without the need for multiple individual applications.

Applicant needs to only specify the countries where they seek registration.

Once the application is filed, the international bureau of WIPO reviews it to ensure that it complies with the Madrid System’s requirements. If the application is approved, the international bureau forwards it to the national trademark office for examination and registration.

The national offices have upto 18 months to decide whether to approve or reject trademark registration. If the trademark is approved, it is registered in each country where protection is sought.

The applicant must do a Trademark search before applying for international trademark registration.The applicant can conduct a trademark search on the WIPO’s Global Brand Database to determine if any similar or identical registered trademark exists. Website link is given herewith for your reference. https://www.wipo.int/reference/en/branddb/

The applicant must ensure that no similar or identical registered trademark exists in any of the Madrid Protocol countries where he/she is planning to apply for trademark registration. If a similar or identical trademark exists, the application will be rejected.

The WIPO will issue a notification regarding the international trademark application to each Madrid Protocol member country where the applicant chooses to obtain registration. The member countries will examine the international registration application as per the trademark regulations and rules applicable to them.

The member countries will submit the examination report and notify the acceptance or refusal of the application to the WIPO within 12 to 18 months of receipt of trademark registration application.

A handling fee shall be payable to the registrar for certification and transmittal of international application to the International Bureau and fees shall be paid in Indian rupee electronically along with the application.

The international registration of trademark at the International Bureau shall be valid for a period of ten years and may be renewable  for further ten years upon payment of the required fees to the WIPO.

An international registration remains dependent on the mark registered or applied for in the Office of origin, for a period of five years from the date of its registration.

If the basic registration cease to have effect or the basic application is refused or withdrawn or treated as abandoned within the five-year period, the international registration will no longer be protected.

The list of members can be found at –

https://www.wipo.int/export/sites/www/treaties/en/docs/pdf/madrid_marks.pdf

The list of members is also available on Form MM 2E, the application for international registration of mark.

The following is the procedure to file an application for international registration of trademark:

• Application must be filed only through the gateway for on line filing of International applications made available at the official website ipindia@nic.in,
• The Trade Marks Registry (TMR) verifies the eligibility of the applicant and contents of the International Application vis-à-vis basic registration/application;
• When the International Application is not proper, the TMR sends a deficiency letter to the email of the applicant. The applicant shall prepare a reply to the deficiency letter and upload it along with supporting documents, if any, through the gateway;
• When the International Application is proper the TMR certifies and transmits such applications to the International Bureau of WIPO;
• The fee for international application and the individual fee/Complementary fee for designated countries wherever applicable is to be paid directly to the International Bureau of the WIPO, in Swiss Francs;
• The IB of WIPO examines such applications for formalities;
• In case of any irregularity (regarding the classification of goods or services, for instance) is found, the IB communicates such irregularities to the TMR as well as to the applicant;
• If the International Application is found to be proper by the IB of the WIPO. It is registered with the IB, published in the WIPO gazette and transmitted to the offices of the designated Contracting Parties.

On April 8th of 2013, the Hon’ble Minister of Commerce & Industry, the Government of India, deposited the instrument of accession to the Madrid Protocol, with the Director General of the WIPO and accordingly, the provisions of international registration under the Madrid Protocol came into effect in India since July 8th of 2013.

Provisional refusal means a declaration by the Office of origin, outlining the grounds on the basis of which protection cannot be granted to the international application made by the applicant.

Some common grounds for provisional refusal in India include conflicts with existing trademark registrations or applications, descriptive or non-distinctive trademarks, and marks that are against public policy or morality.

When the Indian trademark office issues a provisional refusal, it provides a detailed explanation of the grounds for refusal and a deadline for the applicant to respond.

Some common grounds for provisional refusal in India include conflicts with existing trademark registrations or applications, descriptive or non-distinctive trademarks, and marks that are against public policy or morality.

A reply to provisional refusal is to be filed within 30 days from the date of receipt of provisional refusal. An extension of one month can be sought for replying to the provisional refusal. The reply must be filed by the authorised representative competent to practice before Indian TM Registry or by Applicant if it is having an office/address for service in India.

If you receive a provisional refusal for your trademark application in India, you have the right to respond to the refusal. Here are the steps you should follow to respond to a provisional refusal in India:

• Review the grounds for refusal: Carefully review the provisional refusal notice to understand the reasons for the refusal. This will help you to prepare a well-crafted response.

• Analyse the refusal: Based on the grounds for refusal, analyse your trademark application and assess whether there are any issues that need to be addressed. You may need to provide additional evidence, arguments or amendments to your application to overcome the grounds for refusal.

• Prepare a response: Based on your analysis, prepare a detailed response that addresses the specific issues raised in the provisional refusal. Your response should be in writing and include all the necessary evidence and arguments to support your trademark application.

• Submit your response: Submit your response to the Indian Trademark Office within the deadline specified in the provisional refusal notice. Failure to respond within the deadline will result in the abandonment of your trademark application.

• Attend a hearing, if required: In some cases, the Indian Trademark Office may require a hearing to be held to discuss the issues raised in the provisional refusal. If a hearing is required, attend the hearing and present your case.

The basic fee for filing international application for registration of trademark, which is consists of either 653 Swiss francs for a mark in black and white, or 903 Swiss francs for a mark in colour. This fee is for payment to the International Bureau.

 It is recommended that the applicant use the electronic Fee Calculator, which is available on the Madrid system website at the following address:

http://www.wipo.int/madrid/en/fees/calculator.jsp

You can renew your international trademark registration at the earliest six months before the ten-year term of protection expires, or within the six-month grace period following its expiry. Important! Surcharges apply if you renew during the grace period.

The applicant may directly pay the fees to the International Bureau in Swiss France or through the trademark registry.

If he opt to pay the fee directly to the International Bureau then in such scenario, the applicant had to firstly notify the Director General for the same.

The international application may be in English, French or Spanish, according to what is prescribed by the Office of origin.

The Office of origin is entitled to restrict the choice of the applicant to just one language, or to two languages, or indeed, the Office may permit the applicant to choose between any of the three languages.

Thus, the applicant should ascertain from the Office of origin which language or languages must or may be utilize, in advance of the filing of the application through that Office.

Yes, you can mention an additional address for correspondence. Where the applicant requires that that communications be sent to an address other than that as mentioned in the application form, field of “Address for correspondence” is filled.

Yes, two or more applicants may jointly file a single international application, provided that the basic application or the basic registration is jointly owned by them.

Where there is more than one applicant, the name and address of each applicant should be given, if necessary using a continuation sheet.

The following documents are required for making an international application of trademark:

• Identity proof;
• Address proof;
• Business Registration( CIN, Partnership, MSME);
• International Application Form MM-2E;
• Copy of Trademark- Word or Logo;
• Trademark Registration Certificate/Application Master Page proof (if application is pending) in Domestic country.

You need to keep the following things in mind when applying for International Trademark Registration-

• Ensure that the trademark is not yet registered in the countries you are seeking registration.
• Make an International trademark search on WIPO’s broad database to check all registered trademarks. Search can be done from the link attach herewith https://branddb.wipo.int/
• The search can be performed using the text, image or class of goods or services.
• You must get the trademark in your home country before applying for international trademark registration.
• Your country must be a part of the Madrid System
• You can choose multiple countries when applying for international trademark registration, so decide beforehand which country you are going to apply and accordingly the fee will be applicable.

By following the below given steps you can Check Trademark Status –

Step 1: Access IP INDIA Website. https://ipindiaservices.gov.in/eregister/eregister.aspx

Step 2: Select International Registration Number.

Step 3: Provide Trademark Application Number.

Step 4: View Trademark Application Information on clicking on application number reflecting as hyperlink.

Before submitting your international application, double-check to ensure that your mark will not infringe on any existing trademark anywhere in the world. Of course, you can file without conducting the background check, doing so puts you at risk of being sued for trademark infringement.

The most reliable source of this kind of information is the global brand database of WIPO itself. You can conduct any trademark search by text or pictures and view the displayed results https://branddb.wipo.int/

International Classification of Goods and Services also known as the Nice Classification

It is updated every five years. Class 1 to 34 include goods and Class 35 to 45 embrace Services. Link is given herewith from where you can reach the Nice Classification.

https://nclpub.wipo.int/enfr/

Form MM-11 is filed for filing the application of renewal of international trademark.

You can renew your international trademark registration at the earliest six months before the ten-year term of protection expires, or within the six-month grace period following its expiry. Important! Surcharges apply if you renew during the grace period.

Trademark proprietors can transfer trademarks similarly to how they can transfer physical properties. One of the ways to transfer a trademark is through an assignment.

Assignment means transferring rights, interests, titles and benefits from one person to another. Assignment of a trademark means to transfer the owner’s right in a trademark to another person.

Here Assignment means absolute transfer.

A trademark license is a legal agreement that grants permission from the owner of a trademark (the licensor) to another party (the licensee) to use the trademark in connection with specified goods or services, according to terms and conditions outlined in the agreement. This permission allows the licensee to utilize the trademark for commercial purposes while maintaining the ownership rights with the licensor. The terms of the license typically include provisions regarding the scope of the permitted use, quality control standards, duration of the license, royalties or fees, and any limitations or restrictions on the use of the trademark.  

A trademark assignment is the transfer of an owner’s property rights in a given mark or marks. Such transfers may occur on their own or as parts of larger asset sales or purchases.

Trademark assignment agreements provide both the records of ownership & transfer and protect the rights of all parties.

As with other forms of intellectual property, a trade mark belongs to the registered owner. To assign ownership to another party, there needs to be an agreement between the current owner (the ‘assignor’) and the proposed owner (the ‘assignee’). This agreement will need to be signed by an authorised person and to be registered with registrar.

In the context of trademark assignment, an authorized person is someone who has the legal authority to act on behalf of the owner of the trademark. This authorization may be explicitly granted in writing, such as through a power of attorney or a formal resolution. An authorized person could include an attorney, an executive within the company, or another representative who is empowered to execute and manage the trademark assignment on behalf of the owner. It’s crucial to ensure that the person conducting the assignment has the proper authorization to do so.

The transferring party is called the assignor, and the receiving party is called the assignee.

Some of the benefits of Trademark Assignment are:

• The trademark assignment enables the owner of the trademark to encashed the value of his brand.
• With the help of a trademark assignment, the assignee can obtain the rights of an already established brand.
• The assignment of the trademark supports both the assignor and the assignee to expand their respective business.
• In case of any dispute, the trademark assignment agreement would enable the assignor or the assignee to establish the legal right.
• Appropriate stamp duty be paid on consideration as per respective state according to Schedule I of Stamp Act.

The following documents must be submitted to the registrar of trademark along with Form TM-P (Assignment of Trademark)

• Trademark assignment agreement.
• Trademark certificate.
• NOC from the assignor.
• Identification documents of the assignor and assignee.
• Appropriate