Trademark Registration – The Ultimate Step by Step Guide [Infographic]

Bala Nadar
06/06/2017
Protecting Brands & Business

Many brands in the world value their trademark more than their any other physical assets and want to protect it through; Trademark Registration.

This Infographic guide has everything you need to know about registering a Trademark in India (Step-by-step).

Trademark Registration

 

 

Trademark means a logo, brand name, product name, website name, word or punch line by which customers recognize or differentiate the products or services of one company from another.

 

 

Trademark registration means legally getting the right to use the brand name or trademark by getting a registration certificate from the Indian Trademark office.

 

 

A) Any word, title, symbol, label, name, signature, numeral or any combination thereof

B) Any Slogan or Punch Line used to describe a product/service in a better manner

 

 

The trademark can be applied by anyone who uses or proposes to use the brand name for commercial
purpose.

The trademark owner can be an individual, business organization, charitable trust or Government agency.

 

 

There are two types of Trademarks; Conventional Trademarks and Non-conventional Trademark

Conventional Trademark also known as a traditional trademark, is a regular set of trademarks consisting of:

  • Word Mark
  • Device Mark /Logo Composite Mark
  • Font or Letter Trademarks
  • Signature Trademarks
  • Slogan or Punchline Trademarks

Non-conventional trademark also known as a non-traditional trademark, is a new type of trademark which does not belong to regular category of trade mark, and is often difficult to register, but which may uniquely identify the origin of products or services.

  • Color Trademark – means a trademark in which color is used to uniquely identifying the commercial origin of products or services. Coca-Cola has its iconic red and white scheme trademarked.
  • Sound Trademark – sound clips that are source identifying may be protected as marks. Examples are Movie and TV studio sound clips. Sound trademarks also known as aural trademarks
  • Scent Trademark – means the scents which are unique in non- utilitarian products can be applied as Scent Trademarks. For example, scents are utilitarian for air fresheners and perfumes, but not for sewing thread. Hence, Scent Trademarks can be applied for sewing thread but not for air fresheners and perfumes.
  • Motion Trademark – where a series of motions by digital imagery are used for identifying source.
  • Hologram Trademark – Hologram means a three-dimensional (3D) image when used to identify the source or owner of the product or service can be applied as Hologram trademark.
 

 

Brand name is the most valuable asset of the Company. Many brands in the world value their trademark more than their any other physical assets

Brand value is derived only when the company has absolute right over the brand name through trademark protection.

Protecting the name is equal to protecting the business.

  • Protection against Copycats: Nobody will dare to copy your brand name once it is a registered trademark
  • Helps in expansion of business and growth
  • Trademark can be rented and royalty can be earned under licensing agreement. Franchising model solely depends upon trademark licensing.
  • Helps in image building and credibility in Market
  • Customers give more preference to registered brands with TM tag
 

 

Step # 1: Search in Google-

to check if there is a company or brand already existing in the Industry in which you are operating or planning to register a trademark.

Step # 2: Search for Website domain name-

for the word you wish to apply for trademark. Check, if the domain name with the extensions of .com, .in, .co.in is available for booking.

Step # 3: Search for Social media account/handles-

in major social media site like Facebook, Twitter, Linkedin, Google+ and You tube

Step # 4: Coined words (like mixing of two words)

Are highly recommended for successful trademark registration.

If you have done above 4 steps thoroughly and have chosen 2-3 names, 50% of your effort in selecting a valuable brand name is over.

Now, it is important to see if the selected name is legally registrable.

How do you know that?

Step # 5: Trademark Public Search at the Indian Trademark Database:

Before searching the availability of trademark in Indian Trademark database, you need to identify the class of trademark under which your business falls.

Now Click here to do

 

 

Trademark Class means a category of goods or services into which the applicant wants to register the trademark.

Trademark Classification means the process of identifying the exact class into which the products or services of the trademark applicant falls.

Broadly the Trademark classes fall under three categories.

  • Manufacturers: (Class 1 to 34), under this category the applicant/brand is involved in the process of manufacturing AND trading of tangible (visible) goods and products like pharmaceuticals, textiles, food grains, furniture making etc.
  • Traders (Class 35) under this category the applicant/brand is involved in the marketing or distribution of OTHERS goods and services. Shop owner, super markets, multi brand show rooms etc.
  • Service Providers (Class 35 to 45) under this category the applicant/brand is involved in providing intangible (Invisible) services like Legal services, Business Consultants, Architects, Fashion designers, Media services, Software, Healthcare, Education, Financial services etc.

Identifying under which exact class your business/product/service whose name is to be applied for trademark is important.

Wrong classification may lead to waste of time, money and losing of your brand name to your competitor.

It is important to know that very closely associated businesses may sometime fall under two different classes: Designing website and providing hosting services fall under Class 42, however domain registration services fall under Class 45.

One has to apply trademark under both these classes to get complete protection of the brand name

 


  TRADEMARK COPYRIGHT PATENT

Applies To

Words, brand names, logos, slogans

Photographs, books, movies, music, software code

Inventions & ideas

Applicants

Business & Product owners

Artists, Authors & Creative Developers

Inventors & designers

Ownership Without Registration

Yes, but rights are limited

Yes, but rights are limited

No

Validity

Indefinite, but to be renewed every 10 years

Lifetime of the author, plus 60 years

20 years

 

 

Service Mark (SM) means if a brand name is applied for trademark protection by any service provider whose services fall under any of the Trademark Classes between 35 to 45 may choose to use (SM) next to his brand name instead of TM. However, ™ is the most popularly known symbol hence Service sector business also use TM next to their brand name.

 

 

Grounds for refusal of Trademark – Brand names falling under following categories cannot be registered:

  • Generic/Descriptive Names: a word which is a popular term and is important part of the Industry in which you operate. Like Dosa as a brand name in Food Industry is not allowed. As Dosa is a Generic word in Food Industry.
  • Closely similar to existing trademark
  • Names similar to well known brands like TATA, Microsoft, Google etc. cannot be applied in any business category as they are household names
  • Names of national importance like Mahatma Gandhi, Jana Gana Mana etc.
  • Prohibited Trademarks listed under the Trademarks Act.
  • Words hurting religious sentiment, misuse of emblems etc.
 

 

  • Soft copy of the Logo
  • Authorisation letter or Power of Attorney in Form TM-48
  • MSMED Certificate or Startup India Certificate for special concession in Govt. fees
  • User Affidavit for continued use of trademark
  • PAN card of the Applicant
  • If Company is the Applicant Board resolution
 

 

Government fees for TM application is Rs. 4,500 for each brand under each class and typically the trademark attorney charges start from Rs. 1,499.

Rs. 4,500 is a Special Trademark Fees for Individuals, Proprietorship Firms and Small Businesses, for large businesses the Govt. fees is double is Rs. 9000

The Trademark filing can be completed in 24 hours. The final registration time is not fixed however it typically takes 10- 12 months (earlier 18-24 months)

Trademark Class means a category of goods or services into which the applicant wants to register the trademark.

 

 

Keeping an eye on the trademark filing status is important so as to take quick action on changes in status, or to intimate your attorney to take action on your behalf.

Even otherwise it is good to know the process so as to keep yourself updated about the application status.

Step #1) After Clicking the below button you will be taken to Trademark Registry Website

Step #2) Click on Trademark Application Number/Registered Trademark button.

Step #3) Enter Trade Mark/Application Number

Step #4) Enter the code shown and click on View button, you will find status

Also read the next section to know what does the Status exactly means.

 

 

Below are the status which you will typically find on your application from date of application till its registration. In normal case it takes 8 to 12 (for Applications before 2016 18 to 24 months) months for registration.

TM Application Status Time Frame Meaning of the Status Action to be taken by Applicant (If any)

New Application

First 1-2 months

For first couple of months the Application is termed as a New Application.

No Action required

Send To Vienna Codification

First 1-2 months

Vienna Codification is an international trademark classification system used to classify the trademarks into various classes, based upon its business.

This procedure facilitates to check International trademark searches and helps to maintain uniformity in cross border trademark applications.

No Action required

Send Back to EDP

First 1-2 months

EDP means Electronic Data Processing.

This means that the trademark application has been sent for data entry for digitalized record for the public/applicant to see on the Trademark portal.

No Action required

Validity

Indefinite, but to be renewed every 10 years

Lifetime of the author, plus 60 years

20 years

Formalities Check Pass

First 1-2 months

This is a stage when new application is internally verified by the Trademark system and approved as technically valid for further processing.

No Action required

Formalities Check Fail

First 1-2 months

If the new application is found to have any technical error then the same need to be altered at this stage.

Point of Action:
The Applicant /through Attorney need to make necessary corrections.

Marked for Examination

2 to 4 months

This is a stage prior to objection. Where the system assigns the application to an officer for checking whether the brand is objectionable or not.

No Action required

Objected

2 to 4 months

If the trademark examination officer finds that there is a resembling trademark (visually/phonetically), or has any other query, then an examination report is issued and the status is changed to Objected.

Mainly this is done to prove that the Trademark Registry has taken enough caution and reviewed the merit of the application before moving ahead with registration.

Point of Action:
The Applicant /through Attorney need to legally reply to the objection or queries raised.

Ready for Hearing Notice Alert

4 to 6 months

This is an indication that the Hearing date will be issued soon, however date is not yet fixed

No Action required

Hearing

6- 10 months

Trademark registry will fix up a personal hearing on the objection raised and the reply filed. At this stage, the Trademark Officer may ask for additional documents to substantiate the trademark application.

Point of Action:
The Applicant /through Attorney need to attend the hearing.

Advertised Before Acceptance OR Accepted & Advertised

10- 12 months

Advertised Before Acceptance means all requirements at the Registry end is satisfactory for the Registration of the mark.

At this stage the registry publishes the brand name in the Trademark Journal and provides 4 month time to public at large so that anyone who want to oppose the registration of the trademark

No Action required

Opposition

12- 14 months

Opposition is a stage where an existing brand name, registered or applied for registration can oppose the registration of the trademark.

Point of Action:
The Applicant /through Attorney need to legally reply to the opposition notice and attend the hearings.

Opposition Hearing

12- 24 months

Trademark registry will fix up a hearing based on the contentions made by both the parties and provide an opportunity to both the parties to personally represent their case. Then give its judgment as to acceptance of the opposition or vice versa. The parties may accept the judgment or appeal to the High Court.

Point of Action:
The Applicant /through Attorney need to attend the hearing.

Registered

12- 24 months

This status appears when the application is duly registered by the Trademark Registry.

Now you may use the symbol ® next to your brand name.

Abandoned

 

If the trademark is not registered due to no action was taken on objection or opposition, shall show the status as abandoned.

 

Rejected

 

If the trademark is not registered for any other reason other than abondentment.

 

 

 

Trademark lawyer or Attorney is a legal consultant who specializes in IPR laws and represents his or her clients in trademark offices and courts. They are also known as Trademark agents, and are important for correct trademark search and certification.

 

 

Trademark Registry Address & Contact details Jurisdiction Covered

Trademark Office Mumbai

Trade Mark Registry Mumbai
Boudhik Sampada Bhavan,
Antop Hill, S.M. Road, Mumbai – 400037
Phone: 022-24137701
Fax: 022-24140808
Email: mumbai.tmr@nic.in

Maharashtra, Madhya Pradesh, Chhattisgarh and Goa including Trademark filings from Mumbai, Pune, Nagpur, Thane, Nasik, Solapur, Indore, Gwalior, Raipur

Trademark Office Delhi

Trademarks Registry, New Delhi
Boudhik Sampada Bhawan, Plot No. 32,
Sector 14, Dwarka, New Delhi – 110075
Phone: 011-28032406 /100, 011-28032382
Fax: 011-28032381
Email: hodel.tmr@nic.in

Delhi, Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Uttarakhand, and Union Territories of Chandigarh including trademarks application from New Delhi, Kanpur, Noida, Srinagar

Trademark Office Ahmedabad

Trade Marks Registry, Ahmedabad
Boudhik Sampada Bhawan,
Near Chanakyapuri overbridge,
Besides AMC City Civic Centre,
Ghatlodia, Ahmedabad – 380061
Phone: 079-27601782
Fax: 079-27601779
Email: ahmedabad.tmr@nic.in

Gujarat and Rajasthan and Union Territories of Daman, Diu, Dadra and Nagar Haveli including Trademark filing from Ahmedabad, Surat, Jaipur

Trademark Office Chennai

Trade Mark Registry Chennai
Boudhik Sampada Bhawan,
G.S.T. Road, Guindy,
Chennai-600032
Phone: 044-22502044
Fax: 044-22502046
Email: tmrchennai@nic.in

Tamilnadu, Andhra Pradesh, Telangana, Kerala, Karnataka and Union Territories of Pondicherry and Lakshadweep Island including trademarks filing from Chennai, Bangalore, Hyderabad, Mysore, Amravati, Guntur, Coimbatore, Madurai, Salem, Tirupur

Trademark Office Kolkata

Trade Marks office Kolkata
Boudhik Sampada Bhawan,
CP-2 Sector V, Salt Lake City,
Kolkata-700091
Phone: 033-23677307
Email: ratan.shalya@nic.in

West Bengal, Arunachal Pradesh, Assam, Bihar, Orissa, Manipur, Mizoram, Meghalaya, Sikkim, Tripura, Jharkhand and Union Territories of Nagaland, Andaman &Nicobar Islands including Trademarks filing from Kolkata, Shillong, Ranchi, Patna

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