What is a Trademark?
A trademark can be thought of a name, a phrase, a logo, or even a sound that uniquely identifies your brand and distinguishes it from your competitor’s.
It can be for both product and/or service. Once a trademark is registered, no third party can use the registered trademark for their products or services unless the original party that registered the trademark grants permission for any such use.
The Trademarks Act, 1999, regulates the usage of trademarks in India along with its’ Rules. 2017.
Kinds of Trademarks that can be registered in India (With Examples)
In most cases people register a Wordmark. Word Marks are the specific set of characters associated with a company’s offering.
These characters collectively distinguish a company’s product and/or service from its competitors. Example: Nestle
Companies that are in the business of providing a specific service can register this type of Trademark. Service marks are used to differentiate between companies which provide similar kinds of services. Example: FedEx
Logos and Symbols
There are several instances where a company might want to use a specific design/printed figure to differentiate it’s market offerings and not include any word or character in such design.
These kinds of trademarks come under Logos and Symbols. Example: Apple (The slightly bitten apple figure)
Shape of Goods
This kind of trademarks (shape of goods) can be used to identify a product purely based on the shape. These marks are often used along with a word mark.
The Shape of Goods mark deals purely with the appearance of a product. Example: The shape of a coco-cola bottle.
Series marks contain a common prefix/suffix which is shared among multiple of a companies offerings. These products differ only as non-distinctive characteristics like price, size, quantity, etc.
Example: McDonald’s uses the prefix ‘Mc’ on multiple products like McMaharaja, McVeggie, McFlurry, etc.
When multiple people collectively register a trademark, it is known as a collective mark. In such cases, any of the group of people who have registered the trademark can use it even though the trademark is owned by the group as a whole.
Example: Any Charted Account who is a member of the Institute of Charted Accountants can use the ‘CA’ symbol.
Any company that has met a certain quality standard check is authorised to use the respective certification mark. Common Examples are: ISO Certification Mark, FSSAI Certification Mark.
As the name suggests, sound marks are specific sounds that once a person hears, relates to a certain brand or a product/service of the brand. Example: the tune of IPL, or the tune used in ICICI bank’s advertisements.
Who can apply for a trademark? (Eligibility Criteria)
An Individual (Person)
Any individual, even if he/she is not doing any business, is eligible to file for a trademark by proposing that the trademark will be used by him/her in the future.
In cases, where two or more persons come together to jointly own a trademark then names of all the owners have to be mentioned in the application.
Since a sole proprietorship firm is not a separate legal entity, while filing for a trademark by such firm, the full name of the proprietor should be given.
In case both the proprietor name and the name of the business is give, both of them will be considered separate and treated separately.
Since a partnership firm is not considered a separate legal entity, the names of all the partners must be used in the application for filing for a trademark. In case a minor is included in the partnership, the name of his/her guardian should also be mentioned.
Limited Liability Partnership
The primary difference between an LLP and Partnership is that the partners of an LLP don’t have an unlimited liability towards the actions of an LLP.
In this case, Partners in this case cannot be applicants and we need to file the Trademark in the name of the LLP who will be the owner of the trademark.
In case of any type of Indian Company, be it OPC, Pvt. Ltd., or a Limited Company, the trademark application should be filed in the name of the company itself. The company, being a separate legal entity, cannot have it’s director(s) as applicant(s).
In case a foreign incorporated company wanting to file for a trademark in India, it should file the application in it’s own corporate name, word-to-word as it’s name in it’s own country.
Trust or Society
The name of the chairman, or secretary, or the managing trustee or society should be used to file a trademark for such organization.
Why should you apply for a trademark?
There are a couple of reasons why you might want to register for a trademark:
- Prevents your competitors who provide similar service/product from using your brand name to sell their market offering.
- Helps people recognize your product and distinguish it from your competitors.
- It gives credibility and guarantees product/service quality
Documents Required for Trademark Application
- PAN Card of the Entity
- Certificate of Incorporation (For Company)
- KYC Documents of Director(s)/Proprietor/Partner(s)
- Address Proof
- Power of Attorney
- Details regarding Trademark
What are the steps in Trademark Application?
The first step would be to do some research and make sure the trademark is unique. Both registered and unregistered trademark will have to be searched. Moreover, the competition for the trademark would affect the registration process.
Filing of Trademark Application
Once you have found a trademark that is unique, the from TM-A is filed which is the Trademark Registration Form. The government will then spend 3-4 months scrutinizing the application
Examination by the Government Authority
An examiner working with the government will spend 3-4 months scrutinizing the trademark application. A report will then be issued by the examiner.
A reply to the report should be filed within 30 days of getting the report. Any evidence against any arguments raised by the examiner should be present in the report.
After the reply, if the examiner is still not satisfied with it, he might appoint a hearing. The examiner may still reject the Trademark if he is not satisfied even after the hearing.
Publishing of the Trademark to ‘The Trademarks Journal’
Once the hearing is over and the examiner is satisfied, the trademark will be published to The Trademarks Journal. The purpose of this is to invite the general public to raise objections against the trademark.
Objection from the General Public
If any opposition to the trademark is filed (via form TM-O) by the public, then due process of law must be followed.
This would include filing a counter statement application against the objection, and a hearing in some cases. If a hearing is conducted, we again will have to wait for a period of 3 months for the objection to go away.
Once the 3-month waiting period passes, we can proceed with registering the trademark. Once a trademark is registered, it is valid for a period of 5 years after which it must be renewed.
In case no objection had been filed against the trademark, a registration certificate is automatically generated within a week after the 4 months period is over.
A trademark would play a vital role in a company’s success. Without it, anyone can pretend to be your company. Even though trademark application process might take in excess of 1 year, it is worth to do it.
If you want professionals to take care of all the steps in the trademark process, contact us by clicking here.
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