How to get a Trademark Registration in India?

The process of getting your trademark registered begins by filing your application. After applying, the registry will issue an official receipt with the filing date and number allotted to the application.

The application is then formally examined by the Indian Trademarks Office, as to its inherent registrability and/or any similarity with existing marks.

If an objection to registration is raised, an official examination report will be issued.

To overcome the objection, it is necessary to file a written response or present evidence of acquired distinctiveness and in most cases, an interview/hearing with the examiner is posted. The Registrar may require the applicant to file a statement of facts testifying to such a user with exhibits showing the mark as used.

On examination, if the trademark application is considered allowable, the trademark will be published in the Trademarks Journal.

If there are no oppositions within 3 months from the date of advertisement in the Trademarks Journal, then the trademark registration certificate will be issued.

Trademark Registration is a tedious process, and it takes around 18-24 months to obtain registration in a straightforward case, without any objections or oppositions. However, once the trademark application is filed, an application number is allotted immediately, and the priority starts from the date of application.

Once the trademark is registered, it is valid for a period of 10 years from the date of application. The registration can then be renewed indefinitely if the renewal fees are paid every 10 years.

What kinds of trademarks can be registered in India?

The possibilities are almost limitless. Trademarks may be one or a combination of words, letters, and numerals. They may consist of drawings, symbols, three- dimensional signs such as the shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or colors used as distinguishing features.

In addition to trademarks identifying the commercial source of goods or services, several other categories of marks exist. Collective marks are owned by an association whose members use them to identify themselves with a level of quality and other requirements set by the association.

Examples of such associations would be those representing accountants, engineers, or architects.

Certification marks are given for compliance with defined standards but are not confined to any membership. They may be granted to anyone who can certify that the products involved meet certain established standards.

The internationally accepted ‘ISO 9000’ quality standards are an example of such widely recognized certifications.

Can you get an International Trademark Registration?

Trademark registration is territorial in nature. Separate applications need to be filed in each country where you wish to register your trademark.

If you plan to sell and market internationally, it is essential to register your trademarks in those countries. Usually, the party who first registers a mark owns it. Therefore, it is important to register your trademarks in each country your company considers to be a potential and key market.

A national trademark registration stops at the border and does not afford rights to the owner of the trademark outside the country in which it is registered.

Most companies expanding into other countries often realize the value of registering their trademarks abroad once it is too late, that is, once they are faced with counterfeiters/imitators or once they are accused of infringing the rights of others. The risks of doing so are extremely high and the consequences may be extremely costly and detrimental to a company’s entire business and export strategy. It can be a severe financial liability to invest in a brand, promote it in the local market, then find that the brand cannot be registered and used internationally and must finally abandon that investment.

1. Registering a trademark abroad gives the applicant an exclusive right to commercialize its products in those markets.
2. This not only provides a solid foundation to stop counterfeiters but also ensures that the company enjoys exclusive rights over what may be one of its most valuable business assets.
3. Registering a trademark internationally also provides an opportunity to license the trademark to others or the basis for a company’s franchising or merchandising strategy.

Thus, the benefits of international registration and protection of one’s trademark clearly outweigh the costs of such registration.

What is an International Application under Madrid Protocol?

The Madrid System for the international registration of trademarks provides one single and cost-effective procedure for the registration of a mark in several countries and territories. India has joined the Madrid Protocol with effect from 8th July 2013.

At present, there are 91 countries which are members of the Madrid protocol as can be seen here:
http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf

To file an international application under the Madrid protocol, there should be a corresponding trademark application filed in India for the same mark in the same classes.

In a single international application under the Madrid protocol, several member countries may be chosen and designated for the protection of that mark. The filing fees will depend based on the number of classes for the mark as well as the countries designated.

The fees can be calculated using the online tool by choosing Office of origin as India, selecting the number of classes, and specifying whether the mark is in color:
http://www.wipo.int/madrid/en/fees/calculator.jsp

In addition to filing fees, a handling fee of Rupees 2,000/- is payable to the Indian Trademark Registry.
Upon applying, the mark is examined by each designated member country where registration is sought and then proceeds to registration.

An international registration under the Madrid Protocol is however dependent on the corresponding Indian application for a period of five years from the date of the international application.

If you wish to obtain registration in a country that is not a member of the Madrid Protocol, a separate national trademark application must be filed directly in the respective country.

Advantages of filing an International Application under the Madrid Protocol are:

1. Lower costs and fees payable as compared to individual foreign filings,
2. Managing renewals, change in address, change in ownership is easier and more cost-effective
3. Additional countries may be designated at a later stage.

What does a trademark do?

A trademark protects the owner of the mark by ensuring an exclusive right to use the mark to identify his goods or services, and/or to authorize another entity to use that mark in return for consideration.

The period of protection usually lasts for ten years, but a trademark can be renewed indefinitely beyond the time limit on payment of renewal fees.

Trademark protection is enforced by the Courts, which has the authority to prevent trademark infringement.

In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit.

Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive marks to market inferior or assorted products or services.

The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade.

What kind of protection does a Trademark Registration in India offer?

Trademark protection means that the trademarked goods/services cannot be commercially made, used, distributed, or sold without the trademark owner’s consent. These trademark rights are usually enforced in a court, which, in most systems, holds the authority to stop trademark infringement.

Conversely, a court can also declare a trademark invalid upon a successful challenge by a third party. A trademark owner has the right to decide who may – or may not – use the trademark.

The trademark owner may permit to, or license, other parties to use the trademark on mutually agreed terms. The owner may also sell the right to someone else, who will then become the new owner of the trademark.

How extensive is the protection under trademark registration in India?

All countries in the world register and protect trademarks. Each national or regional office maintains a Register of Trademarks which contains full application information on all registrations and renewals, facilitating examination, search, and potential opposition by third parties.

The effects of such a registration are, however, limited to the country (or, in the case of a regional registration, countries) concerned.

To avoid the need to register separately with each national or regional office, WIPO administers a system of international registration of marks. This system is governed by two treaties, the Madrid Agreement Concerning the International Registration of Marks, and the Madrid Protocol. A person who has a link (through nationality, domicile, or establishment) with a country party to one or both treaties may be based on registration or application with the trademark office of that country, obtain an international registration affecting some or all the other countries of the Madrid Union. At present, more than 60 countries are party to one or both agreements.

Why should I go for trademark registration of my company name/trade name?

Registrations of Company Names, Business Names, or Domain Names do not provide ownership or a monopoly right in a name as do trademark registrations. To protect the brand name, trademark registration is strongly advised.

The status of my trademark application is ‘Formalities Chk Fail’. What does it mean?

It is one of the initial stages of the trademark registration process where the status in the Trademark Registry website is shown as Formalities Chk Fail. This could happen in instances such as non-filing of the POA, non-filing of translation/transliteration when the trademark is not in English/Hindi, filing in the wrong class, etc. The reason for the Formalities objection should be ascertained and appropriate action should be taken for the application to move forward for registration.

The status of my trademark application is ‘Formalities Chk Pass’. What does it mean?

It is one of the initial stages of the trademark registration process where the status in the Trademark Registry website shows as Formalities Chk Pass. The Trademark Registry usually checks if the basic requirements are met such as: whether the POA has been uploaded (when filed through an agent) and whether appropriate translation/transliteration has been filed when the trademark is not in English/Hindi. When such basic requirements are not met, the status could be reflected as ‘Formalities Chk Fail’.

The status of my trademark application is ‘Marked for Exam’. What does it mean?

The status shows as ‘Marked for Exam’ when the trademark application has been assigned to an Examiner. The trademark would be examined as to its registrability under the various sections of the Trademarks Act. An examination report is then issued either accepting the trademark for publication or raising objections as to its registrability. At this stage, the applicant needs to wait for the examination report to be issued.

The status of my trademark application is ‘Exam Report Issued’/’Accepted’. What does it mean?

The status ‘Exam Report Issued’ or ‘Accepted’ is used by the Trademark Registry to indicate that the trademark application has been ordered for publication in the Trademarks Journal before registration. This status is used by the Registry when no objections are raised by the Examiner as to the registrability of the trademark or when the objections are overcome by way of written submissions or hearing. No action is required by the applicant at this point unless the application does not move forward for journal publication.

The status of my trademark application is ‘Objected’. What does it mean?

The status is shown to be as ‘Objected’ when the Examiner raises some objections regarding the registrability of the trademark. The examination report citing the objections can be viewed on the Trademark Registry website. To overcome the objections, a written response needs to be filed with the Trademark Registry within one month from the date of receipt of the examination report, failing which the trademark application may be treated as abandoned by the Registry. If the Examiner is not convinced with the written response, a hearing is posted for allowing arguments to be put forth in person.

The status of my trademark application is ‘Advertised before acc’ or ‘Advertised’ or ‘Accepted & Advertised’. What does it mean?

The status is shown to be as ‘Advertised before acc’ or ‘Advertised’ or ‘Accepted & Advertised’ when the trademark application is advertised/published in the Trademarks Journal. This is one of the final stages of the trademark registration process. Once the trademark is published in the Trademarks Journal, 4 months is given for any third party to oppose the registration of the trademark. If no oppositions are filed during the 4-month opposition period, then the trademark registration certificate is usually issued within 3 months thereafter.

The status of my trademark application is ‘Opposed’. What does it mean?

The status is reflected as ‘Opposed’ when a third party has filed an opposition to the registration of your trademark. The notice of opposition is sent by the Registry to the applicant or its agent. To contest the opposition, a counterstatement should be filed within 2 months from the date of receipt of notice of opposition, failing which the trademark application will be abandoned and cannot be revived. No extension of time is granted for filing the counter statement.

The status of my trademark application is ‘Send Back to EDP’. What does it mean?

When there are errors regarding data entry of applications that needs to be rectified, the application is sent to the EDP Section and the status is shown as ‘Send Back to EDP’. This could also happen in cases where the documents are not digitized properly. The status would remain as ‘Send back to EDP’ till these issues are rectified by the EDP Section.