Trademark Services

Trademark Search, Filing and Registration

  • Trademark Search and Analysis
  • Trademark Filing
  • Trademark Prosecution and Registration
  • Trademark  Renewals/Maintenance
  • Trademark  Portfolio Management
  • Opposition/Rectification
  • Trademark   Risk Clearance
  • Trademark Watch
  • Trademark  Litigation Management
  • Domain Name Dispute Resolution
  • Trademark  Enforcement
  • Alternative Dispute Resolution
  • Settlement of Trademark Disputes
  • Trademark Strategy
  • International Trademark Filing (Madrid Protocol Filing)

Trademark represents a company’s business, and good will associated with it. If appropriately protected and strategized, a trademark can provide tremendous business advantage to an organization. Effective trademark management, and efficient business value creation requires insight into trademark law, keen understanding of business, foresight of possible opportunities, and ability to capitalize on business developments.

Our team of highly experienced trademark attorneys at BIP provide value added trademark services to help clients maximize business value from their trademarks. From trademark clearance searching, to trademark protection, and brand management, our team offers a very wide range of trademark services. Having helped clients acquire thousands of trademark registrations in the USA, India, Europe and across the world, our attorneys are well versed in trademark processes. Our experience of handling trademark compliance audits, and licensing/franchising transactions enables us to offer unique, value added services to our clients.

1.What is a trademark?

In simple words, a trademark can be a symbol, word or words legally registered or established by use as representing a company or product or any business. Examples of certain famous trademarks are McDonald’s, KFC and Revlon.

2.What items can be registered as a trademark?

According to the trademark law we can register a logo, word, name, device, label, numerals and taglines if it is graphically plottable and definite.

3.What are trademark classes?

Indian Trademark Registry classifies trademarks in 45 classes (Please refer the next question for more details). These classes are defined based on the type of goods and services. Registering in the relevant classes will help the company safeguard its interests and not allow any other competitor’s to infringe on its Intellectual Property. Class 1 to 34 defines different goods, whereas, classes 35 to 45 defines different services.

4.What are the various classes in which I can file a trademark in India?

The following are the classes of trademark in which you can file a trademark in India, depending upon the goods or services which you seek to provide.

Class 1

Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 2

Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

Class 3

Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 4

Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminates; candles and wicks for lighting.

Class 5

Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 6

Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

Class 7

Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.

Class 8

Hand tools and implements (hand-operated); cutlery; side arms; razors.

Class 9

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

Class 10

Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

Class 11

Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 12

Vehicles; apparatus for locomotion by land, air or water.

Class 13

Firearms; ammunition and projectiles; explosives; fireworks.

Class 14

Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 15

Musical instruments.

Class 16

Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 17

Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 18

Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.

Class 19

Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

Class 20

Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21

Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 22

Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

Class 23

Yarns and threads, for textile use.

Class 24

Textiles and textile goods, not included in other classes; bed covers; table covers.

Class 25

Clothing, footwear, headgear.

Class 26

Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 27

Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 28

Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 29

Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

Class 30

Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

Class 31

Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt.

Class 32

Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 33

Alcoholic beverages (except beers).

Class 34

Tobacco; smokers’ articles; matches.


SERVICES

Class 35

Advertising; business management; business administration; office functions.

Class 36

Insurance; financial affairs; monetary affairs; real estate affairs.

Class 37

Building construction; repair; installation services.

Class 38

Telecommunications.

Class 39

Transport; packaging and storage of goods; travel arrangement.

Class 40

Treatment of materials.

Class 41

Education; providing of training; entertainment; sporting and cultural activities.

Class 42

Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Class 43

Services for providing food and drink; temporary accommodation.

Class 44

Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

Class 45

Legal services; security services for the pro

5.Why is trademark important for a startup company?

One of the most important concerns of a startup company is to establish its brand, visibility in the existing market and to differentiate itself from its competitors. Therefore, it becomes extremely important for such a company to use a trademark, through which it can advertise and connect itself with the relevant section of consumers. At BIP, we generally suggest a startup company to run a trademark search before using any mark; and this is to make sure that it is not violating anyone else’s intellectual property, thus will incurring any additional expenses at a later stage.

6.What are the various reasons because of which a trademark might be rejected by the Trademark Registry?

At BIP, we often come across clients whose trademarks have been rejected by the Trademark Registry as the trademark agent to whom they had entrusted the matter to, did not register it in the appropriate class. On an analysis we found out that there are several reasons for rejecting trademark. However, most important amongst those are:

  • When the trademark consists of words or terms which are usually found in dictionaries, it cannot be trademarked. For example, the word “CHAIR” cannot be sought to be registered as a trademark by a company which sells chairs. Such terms are known as generic terms. Thus, a generic term gets rejected.
  • Words that are commonly used to describe the kind or quality of products/services are also more likely to get rejected when sought to be registered as a trademark.
  • Any mark which might deceive or mislead consumers with regards to its quality, geographical origin and nature is also likely to be rejected.
  • Marks which contain offensive terms or which are contrary to public morality are also rejected.
  • Trademarks that contain flags, emblems of state and international organisations are also rejected.

7.Should I get the trademark registered in my name or the company’s name?

One of the main purposes of registering a trademark, in addition to securing rights against third party use, is increasing the net value or worth of a particular business. So, we at BIP, suggest you to register the trademark in the name of the company, so that consumers associate the registered trademark with the goods or services provided by the respective company. In case the trademark is registered in the name of a person, then the terms of use of the trademark between him and the company has to be regulated by a license.

8.Can I sell my trademark?

A trademark helps you build your own brand and also your business. Once you create your own brand, then you can always assign or license your trademark for monetary benefits.

9.How do I file an international trademark using Madrid Protocol?

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an “international application.”The International Bureau of the World Intellectual Property Organization, in Geneva, Switzerland administers the international registration system. BIP earns the distinction of filing international trademark applications and is currently the highest filer of international trademark applications.

In order to file an international application under the Madrid protocol, there should be a corresponding trademark application filed in India. In a single international application under the Madrid protocol, several countries may be designated which are members of this system. The fees will depend on the number of classes and countries designated. Upon filing the application, the mark is examined by each designated member country where registration is sought and then proceeds to registration. To file an international trademark application, contact us today !

10.What is the difference between the symbols ™ and ®?

A ™ symbol is a reference to the fact that Trademark application has been filed for the particular brand whereas a ® symbol signifies that the trademark has been duly registered.

11.For how long is a trademark valid?

A trademark is valid for a period of ten years at a time. The trademark owner reserves the right to file for renewal prior to expiry of the trademark rights to keep the trademark registration intact. At BIP , in addition to registration of various trademarks , we also provide timely updates to our clients regarding renewal of their trademarks.

Purple thick in a black bordered square.

Why BIP ?

Clients in India and across the world prefer BIP for trademark registrations and related services for the following reasons:

  • BIP hosts an experienced and highly qualified team of advocates, trademark attorneys and agents
  • Formerly as Brain League, and now as BIP, the firm has filed and managed more than fourteen thousand (14, 000) trademark applications across the world including the USA, India, Europe, etc
  • BIP was the first firm in India to  file Madrid applications after India’s  implementation of the protocol
  • On time delivery is one of the core values of BIP’s trademark team and many clients in the USA, India, Europe and other countries prefer BIP for this reason
  • BIP has well established international reach and partnerships to help clients file and prosecute applications in more than hundred countries
  • The firm’s proprietary project and portfolio management tools enable it to track, manage and deliver projects in an organized and timely manner
  • Over the years, BIP’s attorneys and agents have developed proprietary templates and tools to address specific business needs of clients
  • BIP has its presence in all major cities such as Mumbai, New Delhi, Chennai, Pune, Bangalore and Hyderabad
  • The firm has the credit of helping companies build and manage trademark portfolios, which not only provide business and competitive advantage, but also assume high financial value

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