FAQs for Trademark

FAQs for Trademark

1. What is trademark? What all can be registered as trademark? What are its advantages/objectives?

Answer: Trademark (symbolizing a mark in trade) means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours;..”. Essentially it is anything which identifies a brand to a common consumer.

“Mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.

Below are some examples of trademarks:

1. Distinctive General Word: Apple
2. Fanciful designation: Kodak
3. Distinctive Personal Names: Ford
4. Slogan: Drink it to believe it (Pepsi), Hum hain na! (ICICI bank limited)
5. Device:

6. Number: the 4711 cologne
7. Picture:  (Lacoste logo)

Registering your trademark helps you secure exclusivity over your mark throughout country/region of registration. It gives you legal rights of injunction and compensation over third party infringers, and in turn helps you create a brand value.

2. What does and signify, when can we use them?

Answer: is used to indicate that the trademark is unregistered but this mark is used for promote goods. can be used even for trademarks for which registration is not applied to claim use over it.

is used to represent a registered trademark/ servicemark that provides the applicant complete ownership and legal rights over the trademark/ servicemark.

3. Who can apply for trademark? Where should trademark application be filed?

Answer:

An application can be made for registration of trademark actually used or proposed to be used by any person claiming to be proprietor of the trademark. In case of a prior user of the mark, the concerned person is required to submit an affidavit along with evidences to support his claim of priority. In India, for facilitation of the registration of the trademarks, Trademark registry operates from five locations i.e. Delhi, Mumbai, Ahmadabad, Kolkata, and Chennai. In case of Indian applicants, jurisdiction is decided based on the principal place of business of applicant and in case of foreign applicants, jurisdiction is based on where applicant’s agent or attorney is situated.

More info about jurisdiction and locations of Trademark registry can be obtained from by visiting http://ipindia.nic.in/tmr_new/location_jurisdiction.htm.

4. What are the general stages of trademark registration?

1. An optional initial trademark search (identical search or similarity search) may be conducted on the government portal.
2. Once there is a go ahead for trademark filing, an application for Trademark will be made through relevant forms provided by the trademark office/ Registrar of Trademarks.
3. The application is then formally examined by the Indian Trade Marks Office, regarding the mark’s registrability and/or any similarity with existing marks. The mark is examined basically on three grounds i.e. distinctiveness, descriptiveness and similarity to the prior marks. To qualify for registration, mark should be distinctive, non-descriptive, and there shouldn’t be any similar prior marks.
4. Post examination process, if the trade mark application is considered allowable, the trademark will be advertised in the Trade Marks Journal.
5. If an objection is raised, an official examination report will be issued to the owner of the mark. To overcome the objection, the trademark holder needs to file a proper legal reply to the Trade Mark Registry in order to overcome the same.
6. A reply has to be made to the trademark office in lieu of the reports that may be accepted or may be followed by a hearing. The applicant or agent if appointed is required to respond to the examiner’s objection(s) within a period of one month from the date of receipt of Examination Report. Failure to respond to examination report within this specified period can lead to abandonment of application
7. If the trademark office is satisfied that the trademark request complies with all the necessary provisions under the act, the mark is advertised before acceptance. The Registry may also call holder for personal hearing regarding the acceptability of the mark.
8. Once the mark is advertised in trademark journal, it is open for a period of 4 months for third parties to oppose.
9. If no opposition is received during the specified period, the Trademark is deemed to be registered.

5. Is the registration of trademark compulsory?

Answer: No. Registration of a trademark is not compulsory. However, the registration is the prima facie evidence of the proprietorship of the trademark under registration. However, it is to be noted that no suit can be instituted for infringement of unregistered trademarks. For unregistered marks, action can be brought against any person for passing off goods or services as the goods of another person or as services provided by another person.

6. Can a registered trademark be amended at later date?

Answer: Yes, the filed mark is allowed to be amended as per the provision of Section 22 of the Trademarks Act, which allows the amendment of the mark provided it does not amount to a substantial change in the character of the mark as such. Any superficial or insignificant character or feature of the said mark, is allowed to be amended, if a request filed in the prescribed format along with 16 copies of the amended label mark.

7. What are the modes of filing trademark internationally? Can a foreign applicant claim the priority based on earlier application?

Answer: One can directly file a trademark in the jurisdiction of interest with or without taking priority of domestic mark. Another mode of international registration of trademark is facilitated through Madrid Protocol which acts as a vehicle to enable registration in multiple countries taking priority of one of the countries. This priority has to be claimed within six months. Please note that not all countries are members of Madrid Protocol and allow filing through this system. List of jurisdiction that can be accessed through Madrid Protocol for filing trademarks is available at this link:
http://www.wipo.int/treaties/en/ShowResults.jsp?treaty_id=8

8. Once registered for what period of time, a trademark is effective? Can a trademark registration be renewed?

Answer: The registration of a trademark is valid for a period of 10 years. It can be renewed every 10 years, perpetually. In India, renewal request is to be filed in FORM TM-R within one year before the expiry of the last registration of trademark. The renewal fee for physical filling is 10,000 while for e-Filling is 9,000. If renewal fee is not paid till the expiration of last registration, surcharge has to be paid along with prescribed fee accompanied to form TM-R. If renewal fee along with surcharge is not paid till the expiry of six months after expiration of last registration, trademark is liable to be removed. Once removed, restoration of trademark can be requested in form TM-R along with prescribed fees and applicable renewal fees (physical filling: 10,000, e-Filling: 9000). TM-R can be filed within one year from the expiration of last registration of the trademark

9. Is the trade mark liable for removal on the ground of non-use?

Answer: Yes, a registered trademark can be removed on the basis of non use. Except as excused in clause 3 of section 47 of trademarks act, 1999, a trade mark may be removed on the ground of non-use if:
1. That the trade mark was registered without any bona fide intention and was not used till a date three months before the date of the application for removal; or
2. Trademark was not used for a continuous period of five year from the date of registration of trademark and application was made after three months from the expiry of five years.

10. Is the sound or smell registrable as trademark? How are these marks specified?

Answer: Yes, sounds or smells are registrable as a mark. However, they should be capable of being reproduced graphically and should be distinctive. For sound marks the reproduction of the same has to be submitted in the MP3 format not exceeding thirty seconds’ length recorded along with a graphical representation of its notations. Smell can be represented as chemical formula along with the sample. Eg. the 4711 cologne

11. Is a three-dimensional mark registrable?

Answer: Yes, a three-dimensional mark is registrable.

12. What is classification of goods adopted in India?

Answer: International Classification of goods and services (Nice Classification) is adopted in India.

13. What are the grounds for refusal of registration of trademark?

Answer: Section 9 of the trade marks act, 1999 provides absolute grounds and section 11 provides relative grounds for refusal of registration of India. Trademark laws mandates trademark to be distinctive and non-descriptive in order to get registered. Rationale behind this provision is that non-distinctive or descriptive marks can’t be granted monopoly being generic to the trade and are open for public use without any exclusive rights over the same. Some of the examples of non-distinctive or descriptive marks are give below:
1. Dalal street for financial services
2. Best restaurant for food services
3. Strong furniture for furniture
4. High tech for technology related goods/services

However, if a non-distinctive mark acquires a distinctive identity in the market due to prolonged use or business growth, then the restriction of section 9 gets lifted on such mark. Example- Reliance

14. Can a registered user restrain third party from using identical or similar mark if third party is continuous and prior user of the mark?

Answer: It shall depend on the circumstances of the matter. But ordinarily a registered user can’t restrain third party from using identical or similar mark if third party has been continuously using the mark in relation to the same goods or services for which mark of registered user is registered provided third party has been using the mark from a date prior to date of use of registered mark or date of registration, whichever is earlier.

15. Before applying for registration, where can search be done to check if identical or similar marks already exist?

Answer: In case you wish to carry out your own search (identical as well as similarity), following are the recommended steps for the same:
At the first step, you may check your mark’s availability on a free government portal using the following steps:
a) Go to the government search portal: http://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx
b) Select the relevant class of search from a list of 45 different business classes listed here:http://164.100.176.38/tmrpublicsearch/classfication_goods_service.htm

For Wordmark:
a) Search using the “Contain” in the drop-down instead of “Start With” to have a broader search.
b) Please note that Trademark Registry will also object if the name is similar sounding. Thus, for better results, search similar sounding words as well. Example: A keyword like Kryzal can have following terms that are similar sounding: Crizal, Cryzal, Creezal, Crisal, Crysal, Creesal, Krizal, Kreezal, Krisal, Kreesal, Krysal.
c) Also note that the website often encounters downtime error, and sometimes shows “no record found” while that is inaccurate. And thus a minimum of 2 time confirmation is recommended if such a scenario occurs.
d) Please note that the normal update in the portal is done on an average period of one month. Thus recent filings will not reflect in the search.
e) If you find any result similar to your mark and the same/ similar class or same similar business description, the name is recommended to be changed to avoid any objection/opposition during the trademark registration process.

For Logo:
a) For a logo, Vienna code classification search is to be carried out. The relevant Vienna code class can be searched on this interface: http://www.wipo.int/classifications/nivilo/vienna/index.htm by clicking on the search button (top left) and then enter the keyword (top right), followed by browse through the category to identify relevant Vienna Classification.
b) Once the relevant Vienna code is found out, please enter the same in the Search interface
using dropdown to select Search Type as “Vienna Code” instead of “Wordmark”
c) Enter the Relevant Vienna Code in the following format: 1.1.1 will become 010101 while
1.2.12 will become 010212.
d) Enter the relevant class and search. Relevancy criteria will be similar to the wordmark