The internet is full of information on Trademarks. But nobody is teaching you anything about how to actually apply for a Trademark.
This post is an attempt to make things easier for those who will apply for a TM for the very first time or anyone else interested.
Table Of Content
- Why is registration of a trademark necessary?
- Steps for online registration
- Steps to apply physically
- Crucial Points You Must Know Before Registering The Trademark
- Why is registration of a trademark necessary?
Trademark registration is nothing but the registration of your brand name. A brand’s identity is created by an inventor or owner of the product or a range of products and if anyone dares to use it or do business on that name then you can sue the person. In India the trademark can be any letter, symbol, logo, graphic design, sound mark, or maybe any word phrase.
According to Section 2 (zb) of Trade Marks Act 1999, trademark means the mark represented graphically and which is capable of distinguishing the goods and services of one person from those of others and may include the shape of goods, combination of colors and their packaging. A mark can include device, brand, label, ticket, name, signature, numerical, or any such combination.
Here’s a how-to guide on registering a trademark.
Now that your name is finalized you have to write a trademark application and fill the registration form for trademark registration which is TM-1 or TM-A. This form is available on the official website of Government of India http://www.ipindia.nic.in/.
- The most important step is that your computer should run on Internet Explorer in Windows 7 in “administrative mode” i.e right click on the internet explorer icon and click “Run as Administrator”. This step is crucial as the website is only compatible with this browser.
- The next step is to sign up and procure Class III or Class II digital signatures of the owner of the business from Indian certifying authorities and install a “signing component” in your computer.
- Now you have to select the type of applicant and enter code. To create a code, you will have to click on “search” and then “add new”. You will have to enter your body corporate details, for instance, the type of body corporate you wish to trademark and the address of the same etc.
- Once your code is generated, you have to fill the form and upload your digital signature.
- Once you have registered successfully, now the main process begins. You will have to log in and enter your wordmark, class, and goods description.
- Now the last step is to ensure that your trademark doesn’t match with any other trademarks. If it matches, then it would not be approved by the registrar. You can edit the drafted form till you have not digitally signed it. Once it is signed, it cannot be edited and needs to be re-drafted after trashing the previous one. After you received the acknowledgment you can start using the trademark symbol next to the brand name you own.
Any proprietor who is desirous of registering a trademark physically shall apply in writing to the registrar, in the trademarks registry office, in the manner prescribed in Section 18 of the Trademark Act, 1999. As per the First Schedule of Trademark Rules, 2017, enlists the amount of fee for various filings.
1. Examination of brand name registration application
After receiving the application the registrar checks that if the application is in compliance with the law, ie; it fulfills the conditions given in Section 18 of the Trademark Act 1999 which talks about the filling of a single application for a different class of registration, where to file the application, territorial limits of office of registry in case of single and joint applicants, etc.
2. Publication in Indian trademark journal
After examining the brand or logo, it is published in the Indian trademark journal. It is the journal in which the logo or brand name is published to get the comments and opinions of people. If no one raises the opposition within 90 days of publication then the logo or brand name proceeds to acceptance.
3. Issuance of trademark registration certificate
If the opposition is not raised against your logo or brand name within 90 days then your registration is accepted! And there you go, you got yourself the certificate of trademark registration.
4. Renewal of your trademark
You need to renew your trademark every ten years, failing of which will lead to the removal of your trademark from the trademark registry. The application of renewal of the trademark should be made under the form called TM-R along with the prescribed fees of INR 9000 for E-filing and INR 10000 for physical filing.
You can also find other fees and forms related information here – Form and Fees | Trade Marks.
Crucial Points You Must Know Before Registering Trademark
Here are some ways in which, in my opinion, you can secure your trademark from being objected.
1. Do conduct a thorough research
It is very important to conduct both word mark search as well as phonetic search in order to avoid the same or similar names of other brands to read or pronounce. Another research would be to conduct Public Search. As per Section 11 of Trade Marks Act 1999, if your trademark is identical with or similar to an earlier trademark; and is to be registered for goods or services which are similar to those for which earlier trademark is registered and which will create confusion among public or not similar to those for which the earlier trademark is registered in the name of a different proprietor will not be registered.
2. Do not use descriptive words
While choosing a trademark you need to understand that the name you choose should be legally valid. This means it should not contain any absolute grounds of refusal which are stated in Section 9 of Trademark Act, 1999. To name a few grounds it should not be descriptive in nature or deceive the public or even hurt religious sentiments. The words such as for example, ‘truck repair’ for an auto body shop will be rejected because the law does not allow the mark which exactly describes the nature of your business, products, or good.
3. Do not use the name of any geographical location or names and surnames.
Section 9 talks about the grounds for refusal of registration. If the trademark consists of any such grounds which are mentioned in Section 9 then the registration will be refused. Try to avoid using names, surnames, or names of any geographical places, creating confusion or obscene matter and all such things mentioned in said Section.
4. Do not make clerical errors
You need to keep in mind that you should write the perfect goods/services description. Classification of goods and services is laid down in the Fourth Schedule. Even if you are sure that your product falls under a specific class, try not to use common terms for it.
Edited by Om Patil