The Trademark Act 1999 defines a trademark as a visual or graphical representation of a name, logo, sign, device, numeric characters, or combination of colors utilized by businesses to differentiate their good and services from other similar businesses in the market. A trademark is an intellectual asset of a business that gives a unique identity to its products, goods, or services, and no deceptive similarity or confusion would be created among the customers.
In India, trademarks are registered and governed under the Trademark Act, 1999. The trademarks are registered by the Controller General of Patents, Designs, and Trademarks (Office of the Registrar of Trademarks), Ministry of Industry and Commerce, Government of India. The trademark registration has a fixed period of validity of 10 years from the date of filing of the application. After the expiration of 10 years, the owner can renew the trademark by filing a trademark renewal application for an extended period of another 10 years.
Trademark registration is important as it gives exclusive rights to the trademark owner to use the particular trademark to create goodwill in the market as well as legal protection against competitors. According to the Nice Classification, there is a total of 45 classes of trademark registration. Class 1-34 deals with various goods and Class 35-45 deals with various services. In case of trademark infringement, the offender will be punished with imprisonment of a minimum of 6 months to a maximum of years, and the minimum fine shall not be less than Rs 50,000 which may be extended up to Rs 2,00,000.
The step-by-step procedure to register a trademark in India is as given below:
STEP 1: Trademark Search
The applicant should conduct a trademark search to determine whether a proposed trademark is available for use. A trademark search can be done free of cost at the Indian Trademark Registry database. The applicant has to enter the wordmark/Vienna code/phonetic word along with the particular class to find out if the particular trademark is available to use for their goods/services or not.
STEP 2: File Trademark Application
The trademark registration application form is Form TM - A, which can either be filed online at the official website of IP India or by physical mode at the Trademark Registry office depending on the jurisdiction of the trademark. The head of the Trademark Registry office is in Mumbai and other branch offices are in Delhi, Kolkata, Chennai, and Ahemdabad.
STEP 3: Examination of Trademark Application
The Registrar/Examiner will conduct a mandatory examination of each trademark application for any discrepancies. The examiner might accept the application absolutely, conditionally, or reject it. Section 9 of the Trademark Act 1999 deals with absolute grounds of refusal for registration, whereas, Section 11 deals with relative grounds of refusal. If the application is accepted absolutely then the application will be published in the Trademark Journal, if accepted conditionally then the applicant will be given a fixed period of one month to correct the objections as per the examination report. If the application is rejected then the applicant can file for a hearing before the examiner. The examination process might take between 12-18 months from the date of applicated filed.
STEP 4: Publication
Once the trademark application is accepted, the same is published in the Trademark Journal for a period of 4 months from the date of acceptance. The aim of this publication is to give a chance to the general public to file any opposition regarding the registration of that particular trademark. Any aggrieved party can file an opposition against the registration of a published trademark, within its time period via Form TM - O. If an opposition is filed, then a fair hearing will be held in the High Court depending upon the jurisdiction.
STEP 5: Registration Certificate
The final process of the registration of a trademark is the issuance of a registration certificate under the seal of the Trademark Office. The applicant will be provided with a registration certificate which determines the protection and exclusive rights for that trademark are given to the owner for a period of 10 years, after which it can be renewed with a renewal application.
Documents needed for registration of trademark:
It is not mandatory to submit the original documents for trademark registration. The scanned copies of the original documents will suffice the requirements.
Required documents are -
Duly signed Form- 48 - authorisation form from the applicant to his/her trademark attorney to file the application.
Copy of identity proof - passport, aadhar card, PAN card, etc
Copy of the proposed logo
Copy of address proof - electricity bill, phone bill, etc
Udyog Aadhaar Registration Certificate - only for small enterprises like partnership firms, LLP, individuals
Partnership Deed or Incorporation certificate
Digital Signature Certificate (DSC) - if an applicant is e-filling