Trademark Application

A trademark (popularly known as brand name) in layman’s language is a visual symbol which may be a word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking. The legal requirements to register a trademark under the Act are: · The selected mark should be capable of being represented graphically (that is in the paper form). · It should be capable of distinguishing the goods or services of one undertaking from those of others. · It should be used or proposed to be used mark

Under modern business condition a trademark performs four functions 1. It identifies the goods / or services and its origin. 2. It guarantees its unchanged quality 3. It advertises the goods/services 4. It creates an image for the goods/ services.

It is provided under the Trade Marks Act,1999 that goods and services are classified according to the International Classification of goods and services. Currently schedule IV of the Act provides a summary of list of such goods and services falling in different classes which is merely indicative. The Registrar is the final authority in the determination of the class in which particular goods or services fall. The Schedule IV of the Act is annexed at the end of this questionnaire on trade marks. For detailed description of other goods and services please refer to the International Classification published by WIPO or contact the local office for assistance.

It identifies the actual physical origin of goods and services. The brand itself is the seal of authenticity. Ø It guarantees the identity of the origin of goods and services. Ø It stimulates further purchase. Ø It serves as a badge of loyalty and affiliation. Ø It may enable consumer to make a life style or fashion statement.

The registration of a trademark confers upon the owner the exclusive right to the use the trademark in relation to the goods or services in respect of which the mark is registered and to indicate so by using the symbol (R), and seek the relief of infringement in appropriate courts in the country. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc. Also, where two or more persons have registered identical or nearly similar marks due to special circumstances, such exclusive right does not operate against each other.

The register of trade mark currently maintained in electronic form contains interalia the trade mark the class and goods/ services in respect of which it is registered including particulars affecting the scope of registration of rights conferred; the address of the proprietors; particulars of trade or other description of the proprietor; the convention application date (if applicable); where a trade mark has been registered with the consent of proprietor of an earlier mark or earlier rights, that fact.

If it is a word it should be easy to speak, spell and remember. The best trademarks are invented words or coined words or unique geometrical designs. Please avoid selection of a geographical name, common personal name or surname. No one can have monopoly right on it. Avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super etc.) It is advisable to conduct a market survey to ascertain if same/similar mark is used in market.

Any person, claiming to be the proprietor of a trademark used or proposed to be used by him, may apply in writing in prescribed manner for registration. The application should contain the trademark, the goods/services, name and address of applicant and agent (if any) with power of attorney, the period of use of the mark. The application should be in English or Hindi. It should be filed at the appropriate office.

Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark. - An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service. - Letters or numerals or any combination thereof. - The right to proprietorship of a trademark may be acquired by either registration under the Act or by use in relation to particular goods or service. - Devices, including fancy devices or symbols - Monograms - Combination of colors or even a single color in combination with a word or device - S

For filing new applications there are prescribed forms depending on the nature of application such as Form TM-1, TM-2, TM-3, TM-8, TM-51 etc. Fees: Rs.4000/- · To file a Notice of Opposition to oppose an application published in the Trade Marks Journal (FormTM-5). Fees: Rs. 2,500/- for each class covered · For Renewal of a Regd. trademark (Form TM-12 ). Fees: Rs.5,000/- · Surcharge for belated renewal (Form TM-10).Fees: Rs. 3,000/- · Restoration of removed mark (Form TM-13) Fees: 5,000/- · Application for rectification of a registered trademark (Form TM-26) Fees: Rs. 3,000/- · Legal Certificate (Form TM-46) (Providing details of en

(1) The national statues i.e., the Trade Marks Act, 1999 and rules made thereunder . (2) International multilateral convention. (3) National bilateral treaty. (4) Regional treaty. (5) Decision of the courts. (6) Office practice reduced in Manuals and guidelines and rulings of the Courts (7) Decision of Intellectual Property Appellate Board. (8) Text books written by academician and professional experts.

Name: A name including personal or surname of the applicant or predecessor in business or the signature of the person e.g, the name Dhirubai Ambani can be trademarked 2. Word: A word which is not being directly descriptive of the character or quality of the goods / service. For example Google is a word which has been trademarked 3. Numbers: Alphanumeric or Letters or numerals or any combination thereof. For example 555 brand 4. Image: Image, symbol, monograms, 3-dimensional shapes, letters etc. For example the tick in Nike logo 5. Sound: Sound marks in audio format. For ex the sound in the ad jingle

Yes. But the basic principle is that the trademark applied for should not be substantially altered affecting its identity. Subject to this changes are permissible according to rules detailed in the subordinate legislation.

Yes. It can be removed on application to the Registrar on prescribed form on the ground that the mark is wrongly remaining on the register. The Registrar also can suo moto issue Notice for removal of a registered trademark?

The term of registration of trademark is 10 (Ten) years, and can be renewed for next 10 year. An application for renewal of a trademark can be filed within six months from the date of expiry of the registration of trademark.

Generally, one who has filed an application (pending registration) can use the TM (trademark) designation with the mark to alert the public of his/her exclusive claim. The claim may or may not be valid. The registration symbol, ®, shall only be used when the mark is registered.

A registered trademark has been approved and entered on the Trademark Register held by the Trademarks Office. Registration is proof of ownership. An unregistered trademark may also be recognized through Common Law as the property of the owner, depending on the circumstances. For a more detailed description read Trademarks explained.

Trademark registration can be a complex process; an experienced agent can save you time and money by avoiding pitfalls such as poorly prepared applications and improper research. However, the prime reason for hiring an experienced Agent is his ability to address concerns of the Trade Marks office. If you fail to respond correctly, your application will likely fail. For a more detailed description read Trademarks explained.