Intellectual Property FAQ’s
A trade mark is a representation used in trade or business. It protects the association between the mark and the business and the good will linked with it. It can be a word, symbol, color, sound, smell and so on.
A trade mark application may be filed by the applicant directly or through a trade mark agent. There are two ways to file a trademark application:
- Paper filing and
- Online filing.
Document/ Information require for filing trademark application:-
- Trademark name (logo/Device/word /symbol)
- Applicant’s name, nationality, address and
- Registered description of the Applicant (Individual/ partnership firm/ joint firm/ Hindu undivided family/ body incorporate/ society/ trust as the case may be).
- Trade description of the Applicant – such as Manufacturer / Service Provider / Distributor or as the case may be.
- Date of Use of the trademark (if the trademark is proposed to be use, date of use is not required).
- Class of the Trademark
- Description of Goods or services.
- For filing an ordinary application other than conventional application in a single class the prescribed form is TM -1 and statutory fee is 3500/-.
Trade mark is an intellectual property, which provides the exclusive right to use the name, mark, symbol, logo, image or combination of these elements which are used as the brands / names under which goods and services of a merchant/trader are sold. It protects the unauthorized copy or use of a similar mark by any person for the same category of business. It provides the right to prosecute any person who infringes the brand name or identification mark. Even an unregistered trademark provides protection in form of a passing off action..
A trade mark protects the reputation of the business of the trader. It helps the trader to establish the connection between the mark and the quality/characteristics of goods or services associated with it.
The symbol ® signifies that the trade mark is a registered trade mark. The symbol ™ signifies that the word or logo is used as a trade mark. It may not be a registered mark. When a mark is used as a trademark, ™ symbol may be used along with the mark. Once the trade mark is registered, the ® symbol is generally used along with the mark.
A person may use a trade mark for his goods or services irrespective of trade mark filing or registration. Use of a trade mark for a certain period of time will enable the person to show acquired distinctiveness that will help in registration of the trade mark. If the trade mark is filed as a proposed to use mark, it must be used within a period of about five years.
A trademark clearance search is the search in the database of Indian Trademark Registry for existing marks (Registered or applied). If a trader wish to use any mark as his trademark, then this search will help him in ascertaining whether any same or similar mark already exists or not. Accordingly the trader can strategize whether he should go ahead with that mark or not or whether he should file a word mark or a logo mark.
A Trademark agent is a person who can act on behalf of the applicant of a trademark in all proceedings before the trademark registry except signing in an affidavit. A person having a basic degree in any field can become a trade mark agent by passing the qualification exam. A legal practitioner can register directly with the trade mark office as a trade mark attorney. A Trade Mark agent or attorney can represent his clients before the trade mark office.
It is important to choose the best trade mark attorney or agent to ensure that your trade mark protection is strong. A good trade mark agent or attorney must have the following qualifications:
- He must advise you on the best form of trade mark to bee filed;
- He must strategize your trade mark filing in the broadest possible manner;
- He must have a strong background in IP (Masters in IP from a leading institute and/or experience of prosecuting numerous trade marks);
- He must enable you to avoid trade mark opposition; and
- He must advise on various options for trade mark filing in case of existence of conflicting marks.
Yes, as per trademark Act, a trademark can be granted over a color or combination of colors. However, such protection is possible only if the color does not describe the nature of the product. For example GREEN for eco-friendly products may not be registrable because of its descriptive nature but green for headphones would be protectable. For protecting a color, a written description of the color might be required by the trademark registry. Such description can be accompanied by the relevant code(s) from an internationally recognized color identification system.
Word mark is a mark, in which a word, combination of alphabets, numerals or combination of alphabets & numerals is used as trademark (example ‘SAMSUNG’ & I10). A logo mark is a mark which is a symbol, design or a graphical representation used along with the words and/or numerals. Logo marks are generally created in a specific font style.
A word mark gets stronger protection than a logo mark because it allows the owner of the mark to prevent third parties from using the word in any format. On the other hand, logo mark only enables the owner to prevent others from using an identical or similar logo.
Yes, sound can be protected as a trademark. The definition of trademark in India states that trademark is a mark that is capable of being represented graphically. As sound can be represented graphically, it is capable of being protected as a trademark. Some sounds have already been protected in India as trade marks.
A trade mark can either be a fanciful mark, arbitrary mark, suggestive mark, descriptive mark or generic mark. A fanciful mark gets the strongest form of protection and generic the weakest form of protection.
A fanciful mark is a coined mark and does not indicate or have any connection with the goods or services to which it is applied. For example Kodak for photographic supplies, where the mark used is fanciful in nature and makes no sense with regard to the product. This type of marks are totally unknown and completely out of common usage. They are considered as the strongest marks.
An arbitrary mark provides the second strongest form of protection. Arbitrary marks are existing words applied to totally unrelated goods or services. For example Apple for computers, camel for cigarette, where the marks signify something other than the products or services on which it is used.
The next type of marks is suggestive marks. They suggest the kind of goods or services to which the mark is applied after application of certain amount of thought. They are protectable marks but not as strong as fanciful or arbitrary marks. For example, yellow pages for telephone directories.
The next category of marks is descriptive marks. These marks describe the goods or services for which they are applied and do not get strong form of protection. For example, Coffee Shop, for a shop that sells coffee is descriptive because it describes the nature of business being carried out. Such marks can be registered only if they acquire secondary meaning through prior usage.
Generic Marks are marks that become synonymous to the goods or services for which they are applied due to extensive or wide usage. The marks are so widely used that the goods or products are referred by the marks. Such marks are not distinctive and therefore, get very weak protection. For example, Xerox for photocopying machines has become generic and has lost its distinctiveness.
A person must choose fanciful or arbitrary marks for getting strong trade mark protection. Efforts must be put on choosing before launching the mark to ensure that similar marks do not exist. The best approach to choosing a trade mark is to shortlist three or four marks and carry out a trade mark clearance search. After performing the search, a mark that has no identical or similar marks can be chosen for protection.
Once an application is filed for trademark registration, the next step is the issuance of examination Report by the Trademark registry. This examination report consists of objections raised by the Examiner against registration of the Mark. The applicant has to respond to this examination report by overcoming all procedural irregularities, , if there are any and by giving appropriate reasons for registrability of the mark. Thereafter, if the registry requires, the applicant either himself or through his agent can give a representation to the Registrar in the form of oral hearing.
Then if the mark is accepted for publication, it will be published in the journal of Trademark Registry. Once the mark is published, the same is open for opposition for a period of three (3) months with one (1) month grace period. If there is no opposition filed during the opposition period, the mark will proceed for Registration. However, the applicant cannot used a ® symbol unless they receive a registration certificate from the Registry.
Yes, the status of any trademark application can be checked online. The searcher needs to have the application number for knowing the latest status. The application number can be entered on the website’s trademark status check section at https://www.ipindiaonline.gov.in/eregister/eregister.aspx
Along with a trade mark application, the applicant must submit all documents necessary to prove the date of first use of the trademark. Such proof can be in the form of invoice, sales order, purchase order, advertisement, price list, agreement and so on. Submission of such evidence in advance will enable faster processing of the trade mark application.
Trademark examination report is a report of examination conducted by Trademark Office after examining the registrability of the application, which includes distinctiveness, existing similarity with prior registrations, and filing of supporting documents.
If a mark is accepted during examination, the trademark office will issue an acceptance order and the trade mark will be published in the journal. However, a trade mark is rarely accepted without objections. If registration of a trade mark is objected by the examiner in the examination report, applicant or his agent must respond to it within one month from the date of receiving the examination report. The response to an examination report must include:
An answer to the objections raised;
- Relevant case laws or precedents of the trade mark office; and
- Supporting documents to prove inherent or acquired distinctiveness.
After filing the application, every trademark is examined by the examiners appointed by the Trademark Registry. After examination, an examiner issues an examination report in which the objections, if any, are raised by the examiner. On receiving the Examination Report, the applicant has to submit his/her response based on the objections in the examination report. In case the objections are not met to the satisfaction of the trade mark office through the response, the applicant can avail an opportunity of hearing before the Trademark Registrar, where he/she can present submissions orally. The hearing is generally conducted by the assistant Registrar of Trade marks.
Trademarks are published in the trademark journal. These journals are published by the trademark registry twice every month i.e. on the first and sixteenth day of every month. Any application accepted after the examination of the registry is published in the journal. The journals can be accessed online at http://ipindia.nic.in
A trademark is said to be infringed if a person uses an identical or similar trademark for identical or similar goods or services and such usage is likely to cause confusion among the consumers. Only a registered trademark owner can initiate proceedings for trademark infringement in India.
Identifying conflicting and infringing trademarks or applications is called trademark watch. A trademark watch enables a trademark owner to prevent registration of identical or similar marks by a third party. It also enables him to enforce his trademarks effectively.
A person using a trademark will get the right to prevent others from using the trademark. However, if a trademark is not registered, the trademark owner cannot file an action for infringement. An unregistered mark will have only the right of passing off under common law. However to exercise this right, the trader has to establish the use of the mark by factual evidence that he has an established trademark which has reputation and goodwill.
For registration of the trademark, the trademark registry will look for the following:
- Whether the applied trademark has any conflict with any existing registered trademark or pending trademark application? A registration will be granted only if the mark for which application has been filed does not have any conflict with existing trademarks or applications.
- Whether the applied trademark describes the kind, quality, use or geographical origin of the goods or services for which it is used? Registration will not be granted if the trademark describes the goods or services for which it is used.
- Whether the trademark has any distinctive character? A trademark will be accepted only if it has distinctive character.
- Whether the applied trademark is obscene, scandalous or affects the religious acceptabilities of any society? trademark registration will not be granted if the mark is obscene or has an impact on religious sentiments of communities.
A Famous trademark is one that has established a strong connection, in the minds of the consumers, between a specific good or service and the source of that good or service. For example, the COCA-COLA and SONY brands have been determined to be famous marks by courts.
The owner of a famous trademark can prevent another person from using the same or similar mark for any goods or services. He will also have the right to prevent others from registering identical or similar marks for any goods or services.
Common sets of goods or services are classified into different classes under the trademark law. While filing for a trademark, an applicant must indicate the class or classes to which his/her trademark belongs. Registration of a trademark is granted in a specific class or set of classes identified by the applicant. The international system of classification followed across the world is called as NICE Classification.
In India, classes 1-34 deal with goods and classes 35-45 deal with services.
Anyone who is in the business of goods and services which may come under more than one class may register his/ her trademark under multiple classes. It must be noted that, a mark registered under one class may not get protection under other classes, for example a mark registered for electronic goods under class 9 cannot get protection under class 25 for textile goods. If the producer is in multiple kinds of businesses, then he must file for registration of the trademark in all classes that relate to his business.
A trademark can be protected perpetually by continuously renewing it. After the initial registration, the trademark protection extends to ten years. After the expiry of ten years, it can be renewed every 10 years by payment of the prescribed renewal fee. This process of renewal can be started 6 months prior to its expiry. In case the trademark is not renewed it will be removed from the register but can be restored if a request is made within one year from the date of expiry or the date of last renewal. However, the applicant is required to pay additional fee for such renewal.
Every registered trademark has to be renewed once in every ten years from the date of filing of trademark and the fee for the renewal is Rs. 5000. The proprietor (the owner of the trademark) must pay the renewal fees before expiry of the term of ten years but not before 6 months from the date of expiry. If the renewal is done after the expiry but within 6 months then the fee will be Rs. 8000. If the renewal is done after 6 months of expiry but within 1 year, then the fee will be Rs. 10,000.