Trademark Registration

Overview of Trademark Registration

Trademark is not used to market anything. It is the identity of a brand.

Nothing is more detrimental to your brand than seeing its name used by other businesses, which is why trademark registration is essential to protect your intellectual property. As per data, more than 2,25,000 trademark infringement cases are pending in India. Though registering a trademark in India is not mandatory but, it is crucial to protect your brand name. Over the years, businesses have realized the importance of registering a trademark and as a result, the application for trademark registration has risen to 4,66,580 in 2022-2023 as compared to 4,47,805 in the year 2021-2022.

Registering a trademark in India involves a series of steps like completing a trademark search, filing the application with the Trademark Registrar, allotting of a trademark application number, Vienna Codification, trademark examination, journal release, and finally, trademark registration. Benefits of registration include uniqueness, proof of validity, infringement measures, border safety, and security for debt.

Trademarks must be unique and capable of distinguishing goods or services. Non-traditional logos like sound, shape, and colour names are also registrable. The registering process is important as it works on a first-to-file system, taking up to 3 years to finish.

What is a Trademark?

A trademark is a special symbol, design, name, or combination of any denoting a special product that identifies and distinguishes the source of the goods from one person to another. It is the type of intellectual property that requires protection to safeguard the identity of a brand and to prevent unauthorized use by others.  Whether you are:

• Individual
• Sole Proprietorship
• Partnership Firm
• Limited Liability Partnerships
• Indian or Foreign Company
• Trust
• Society

You can apply for trademark registration in India

Difference between ™ (Trademark) symbol and the ® (Registered Trademark)

Benefits of Trademark Registration in India

By registering a trademark, brands can ensure exclusive use of their brand, prevent infringement, and enjoy several legal and financial advantages.

Requirements for Trademark Registration in India

The process of registration of a trademark in India has several requirements, including a unique and distinctive brand, classification based on goods or services, application entry, examination, release, and registration.

1. Trademark: It can be a name, image, phrase, design or a mix of these that identifies a business or product. It must be unique and different from other registered marks and it should not resemble with any existing marks to avoid confusion and infringement.

2. Classification: In India, trademarks are registered under the International Classification of Goods and Services (ICGS) system, known as the Nice Classification. This classification divides goods into 34 categories and services into 11 categories. For example, Class 25 is for clothing, footwear, and headgear, while Class 35 covers advertising and business services. Proper classification ensures that the trademark is protected in the right category and avoids conflicts with similar trademarks in other sectors. 

3. Application: The trademark registration process begins with the filing of an application with the Indian Intellectual Property Office (IPO). The application includes:

1. A copy of the trademark logo or design (if applicable)
2. A description of the trademark
3. Proof of use or intent to use the trademark (such as the date of first use)
4. Personal identification details (e.g., PAN card, Aadhar card)
5. Power of Attorney (Form-48) if filed through a representative or agent

4. Examination: After the submission of the application, the IPO will conduct an examination to verify whether the trademark meets all the criteria for registration. The trademark is checked and if the trademark passes the examination, it is published in the Trade Marks Journal for public review.

5. Registration: Upon successful examination and the there are no objections during the publication period, the trademark is registered successfully. Certificate of Registration is issued to the applicant giving legal protection and exclusive rights to the owner.

Eligibility Criteria of Trade Mark Registration Online

 You must meet the following standards to be eligible for trademark registration.

1. Distinctiveness of the Trademark

• The trademark must be distinctive and capable of identifying the goods or services of one business, making them distinguishable from others in the market.
• Generic, descriptive, or commonly used terms are not eligible for registration as they fail to distinguish the goods or services.

2. Non-Conflict with Existing Trademarks

• The trademark must not conflict with any existing registered trademarks. A comprehensive trademark search should be conducted to check for similar or identical trademarks.
• If a mark is too similar to an existing one, it may lead to rejection due to potential confusion among consumers.

3. Use in Commerce or Intent to Use

• The trademark should either be in actual use in connection with goods/services or intended for future use.
• If the trademark has not been used yet, the applicant must declare an intent to use it in commerce. However, the mark must be used within five years of registration to avoid cancellation.

4. Eligibility of the Applicant

• The applicant can be an individual, private limited company, partnership firm, LLP, or other legal entity like associations or trusts.
• The applicant must have the legal right to use the trademark or be the owner of the brand associated with the trademark.

5. Compliance with Legal Restrictions

• The trademark must comply with the Indian Trade Marks Act of 1999 and should not fall under any prohibited categories.
• Prohibited marks include those that are scandalous, obscene, or deceptive or those that could potentially mislead the public.

6. Correct Classification of Goods/Services

• Trademarks must be registered under the appropriate class based on the nature of the goods or services. India follows the Nice Classification, which includes 34 classes for goods and 11 for services.
• Ensuring the correct class is chosen is crucial as it defines the protection scope of the trademark.

7. Logo or Mark Should Be Unique

The trademark (whether a word, logo, design, or combination) should be unique and original. If it’s a logo or design, it must not resemble any existing logos, symbols, or government emblems.

8. Proof of Use or Evidence of Intent

• While filing a trademark, applicants may need to provide evidence of the first use of the trademark, especially if the application claims prior use.
• Alternatively, a statement of intent to use is sufficient if the trademark is yet to be used in commerce.

9. Submission of Required Documentation

The trademark application must be accompanied by necessary documents such as:

• Identity proof of the applicant (e.g., PAN card, Aadhar card).
• Logo/design of the trademark (if applicable).
• Form-48 (Power of Attorney) if a trademark agent is representing the applicant.
• GST registration (if applicable) and proof of use (e.g., bills, advertisements).

10. Timely and Correct Fee Payment

• Applicants must pay the prescribed application fee for trademark registration. The fees vary based on the type of applicant, such as individual, MSME, or corporate entities.
• Online payments are commonly accepted through the official portal of the Indian Intellectual Property Office (IPO).

11. No Prior Registration of Similar Marks

A trademark should not be identical or substantially similar to a registered trademark. If an identical mark exists for the same or similar goods or services, the application is likely to be rejected.