A trade mark is a mark capable of being represented graphically and distinguishing the goods or services of one person from those of others and may include a word, device, label, logo, shape of a product, packaging of a product, combination of colours, sound, slogan, signature, symbols etc. A trade mark once granted registration, remains valid for 10 years and may be renewed after the expiry of every 10 years.
Who can file a trade mark?
Any person or entity who claims to be the proprietor of the trade mark in relation to goods or services for which it is used or is proposed to be used, may file an application for registration of the mark. The applicant making an application could be individual, joint proprietors, body incorporate, partnership firm, HUF, trust, society or a government authority.
Details required for filing a trade mark application
In order to file an application at the Trade Marks Office (TMO), certain details and documents are required, the same are listed herein below:
- Name and address of the applicant
- Nationality of the applicant
- Exact representation of the trade mark
- Description of the mark
- Class(es) and specification of goods and / or services
- Translation and transliteration of the mark, in the event the mark contains words or character in a language other than English or Hindi
- A duly executed power of attorney by the applicant, if the application is to be filed through a Trade Mark Agent or an Attorney
- Date of first use of the mark together with an affidavit of use and documentary evidence in support of use of the mark (if the mark is already in use)
- Priority details and documents, if priority of an earlier application is claimed, and
- An address for service
Classification of goods and services
For the purpose of filing a trade mark application, the recitation of goods and services need to be in accordance with the NICE Classification. Broad and obscure specification of goods and services is generally not accepted and invites objection for the TMO, which results in unnecessary delay in processing of application.
How to check the availability of a trade mark?
Although not mandatory, it is always advisable to conduct an availability search before filing a trade mark application so as to make sure that the mark to be applied for has not been filed or registered by another proprietor or entity. The Trade Marks Office offers the facility of conducting a free online search in the relevant class of goods and services to ascertain the availability of a trade mark.
Official fee for filing an application
With the introduction of new Trade Marks Rules, 2017, the official fee for filing trade mark application and all other forms has been revised. For an individual, start-up and a small enterprise, the official fee for filing an application is INR 5,000/- whereas, for a large entity, the official fee is INR 10,000/-, when the application is filed physically. On the other hand, a discount of 10% is offered on the official fee where applications are filed through e-filing module. The trade mark forms and requisite fee in detail are set out under Schedule 1 of the Trade Mark Rules, 2017.
Trade Mark filing and registration procedure
A trade mark application may either be filed physically or through e-filing module. The trade mark filing and registration procedure is briefly discussed hereunder:
Filing: An application for registration of a trade mark may be filed with the Trade Marks Office in Form TM-A along with prescribed fees and requisite documents such as Affidavit of use, Priority documents, and Power of Attorney (where applicable). The e-filing module is accessible 24×7 and payment of official fees may be made through debit/credit card or net banking.
Formalities check: Once the application is filed with the TMO, it undergoes a scrutiny test and proceeds towards examination if all the details and documents submitted by the applicant are in order. In case of any discrepancy, the TMO issues an official letter requisitioning the applicant to furnish the requisite details or documents within 30 days from the receipt thereof.
Examination: Subsequent to the formalities check stage, the application undergoes examination and the examiner thoroughly reviews the application. In case the examiner has any objections against registration of the trade mark, he issues an examination report, reply to which is required to be submitted within one-month from the date of receipt of the same by the applicant (or its agent), failure to do so may result in abandonment of the application. In the event, there are no objections, the examiner accepts and proceeds to advertise the mark in the Trade Marks Journal. Once the mark is advertised in the Trade Marks Journal, it remains open for third party opposition for a period of 4 months and is granted registration if no opposition is filed within the stipulated period.
Hearing: The examiner reviews the response filed by the applicant and if he is satisfied with the response, he accepts the application for advertisement in the trade marks journal. In the event, the examiner has further objections against the registration of the application, he appoints the matter for a show cause hearing in order to provide an opportunity to the applicant to present oral arguments in favour of their mark. During hearing, the examiner may either accept the mark or refuse it.
Registration: A trade mark upon successfully sailing through the 4 months’ opposition period, is granted registration and the TMO issues an electronic registration certificate which is sent to the applicant (or its agent) via email. One may also obtain an e-copy of registration certificate from the official website of the TMO. A registered trade mark remains valid for a period of ten years from the date of application and may be renewed after the expiry of every 10-year period.
As per the current practice prevailing at the TMO, a trade mark is granted registration within 6-7 months from the application date, provided no objection or third party opposition is raised against the mark. A request for expedited processing of application in Form TM-M along with the requisite fees may also be filed to accelerate the registration procedure, however, this request needs to be filed before the examination of the application.