Trademark Search, Filing and Registration
- Trademark Search and Analysis
- Trademark Filing
- Trademark Prosecution and Registration
- Trademark Renewals/Maintenance
- Trademark Portfolio Management
- Trademark Risk Clearance
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.
|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.|
|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.|
|Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.|
|Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminates; candles and wicks for lighting.|
|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.|
|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.|
|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.|
|Hand tools and implements (hand-operated); cutlery; side arms; razors.|
|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.|
|Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.|
|Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.|
|Vehicles; apparatus for locomotion by land, air or water.|
|Firearms; ammunition and projectiles; explosives; fireworks.|
|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.|
|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.|
|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.|
|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.|
|Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.|
|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.|
|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.|
|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.|
|Yarns and threads, for textile use.|
|Textiles and textile goods, not included in other classes; bed covers; table covers.|
|Clothing, footwear, headgear.|
|Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.|
|Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).|
|Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.|
|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.|
|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.|
|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.|
|Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.|
|Alcoholic beverages (except beers).|
|Tobacco; smokers’ articles; matches.|
|Advertising; business management; business administration; office functions.|
|Insurance; financial affairs; monetary affairs; real estate affairs.|
|Building construction; repair; installation services.|
|Transport; packaging and storage of goods; travel arrangement.|
|Treatment of materials.|
|Education; providing of training; entertainment; sporting and cultural activities.|
|Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.|
|Services for providing food and drink; temporary accommodation.|
|Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.|
|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?
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.