How to file a Trademark Application in India

What is a trademark?

A trademark is a distinctive mark in the form of the word, symbol, name, sound, numerals, wrapper, packaging labels, tagline, logo or a combination of these used to identify a good or service and to distinguish it from other similar goods or services originating from different businesses. Many companies use these marks to advertise their product, making the mark recognizable and turning it into a brand.The Trademark Act of 1999and the newTrademark Rules of 2017is relevant here and all the matters related to the trademark are dealt here.
How applying for registration of a Trademark is useful to the owner?

Trademark registration is not mandatory and there is another way to protect your product that is by establishing prior use. However, in a growing and globalized market like India, the need to protect the business from illegal copying or competition is especially strong. Trademark registration provides numerous benefits such as legal right of exclusivity for use of the mark to the owner of the trademark, itcan be sold, licensed or assigned by the owner just like any other form of asset, it alsoguarantees the identity of the origin of goods and services andserves as a badge of loyalty and affiliation. A trademark registration may enable the consumer to make a lifestyle or fashion statement and stimulates further purchase. It is an important asset for a business as it contributes to the goodwill generated and refrain others from using the trademarked name or logo with regards to goods and services it is registered. Filling Trademark registration also ensures that the name one want to trademark is not already registered or somebody is not using it prior to him.

Who can make application for registration of a trademark?
Any person (individual, company, proprietor or legal entity) can apply for trademark who claims to be the owner of the trademark. It takes just a few days to apply for trademark registrations, and once applied the applicant can start using “TM” symbol. Afterward, the trademark registry takes 18 to 24 months to complete formalities. Once the trademark is registered and registration certificate is issued the owner can start using the ® (Registered symbol) next to the trademark. The registered trademark is valid for 10 years from the date of filing, which can be renewed from time to time.

Where to file the application for registering a trademark?
The applicant for registration of trademark needs to file the application at the appropriate trademark registration office under whose jurisdiction the applicant’s primary place of business is located. In cases where the business is located outside India, the applicant needs to file the registration at the trademark office under whose jurisdiction the office of the applicant’s agent is located. To get more clarity about the jurisdiction visit IP INDIA website, state wise jurisdiction is available there.

Before actually filing the trademark one need to accumulate diverse documents and there are certain preliminary aspects also that need to be taken care of. That is to say that before filling trademark application one need to do a bit of homework and be prepared with all the answers required while filing an application for registration. In this article, I will be giving a detail on Step by step process of filing an application for registering a trademark.

What basic things does one need to do before filing an application for a trademark?

STEP 1-Choosing The Right Class.
The first step in selecting a trademark starts from finding the right class or choosing the class you trademark belongs to. There are a total of 45 classes of trademarks available in India which you can find here, 34 of the classes are for goods and the rest 11 classes are of services. Choosing the right class is very necessary to avoid rejection of your application, or even if you manage to get it registered in a wrong class you wouldn’t be able to change it i.e. if you have registered under a goods class you won’t be able to deal in services. It is imperative to take help from someone who is an expert in the field of IP for ascertaining the proper class.

STEP 2-Selecting A Distinctive Trademark.
Selecting a trademark might seem easy but the actual task is a bit complicated. There are tons of articles explaining an efficient way to select a trademark and make it stand out from the crowd. It is necessary to make your mark a distinctive one, and cross-check its originality with the internet or other useful sources (Online and Offline check). Various trademarks filing firm would also do that for you if you want to hire one. Even a deceptively similar trademark would not do, and it will be a waste to file the application which is going to be opposed or rejected. Besides that one also needs to take care of the various legal sanctions applicable to selecting a trademark. The various restrictions in selecting a trademark are as follows:

1.A mark which is deceiving in nature or causing confusion in the minds of public;
2.A mark Which can hurt the religious sentiments of certain class or section of citizens of India;
3.A mark which comprises any obscene or scandalous matter;
4.A mark which is against the provisions of Indian Emblems and Names Act (Prevention Of Improper Use), 1950;
5.A mark which has a negative connotation in India;
6.If the proposed mark is a foreign word it is a must to translate it in English to ascertain its distinctiveness.

Once you ensure that you have a distinctive mark, you can move on to next step of preparing your application.

STEP 3-Preparingthe Trademark Application.
Filling for TM registration can be done online or offline. The application for registration is provided as Form TM-A, in the first schedule of trademark rules 2017, required to be filed. You can find the application online here. The particulars that one needs to fill can be viewed in the right application after downloading it. In order to further the digital India scheme the online filing of TM is made available at 10% discount on the offline filing cost. It saves cost and time. In the new trademark rules of 2017 there are various changes from the old rule of 2012, most significant one is the reduction of number of forms related to filing of trademark. The process has been simplified by introducing 8 new exhaustive forms covering all the issues, while earlier the number of forms used to be 74. There is much information to be provided in the application, an expert’s help in filing one is advisable. Various requirements before filing are;
1.The name, address and nationality of the applicant. Names of all the partners in cases of partnership firm. Also mention whether any minor is a partner. If the applicant is a company, the country or state of incorporation
2.A list of goods and/or services for which registration is sought for.
3.Soft copy of the trademark to be registered.
4.Translation of foreign words into English in the trademark.
5.Date of first use of the trademark in India, if at all used, an affidavit of use is required in cases where use is claimed.
6.Power of attorney simply signed by the applicant executed in 100 Rs. stamp paper. (No legalization or notarization is required). The power of attorney can be submitted later with no additional cost.
7.In cases of a priority application certified copy of the priority application as filed in convention country needs to be filed.

Once you have all the requisite documents and the application filled in order, the next step would be to file the application at the proper office of trademark registry.

STEP 4-Filing the Trademark application for registration.
TM Filing is a process of filing trademark registration application, by way of submitting the legal forms and other documentation to the registry authority. the details about the proposed trademark and trademark owner and the goods and services related to the trademark needed to be mentioned in a proper manner while submitting the application to the authority. The application form TM-A needs to be filled correctly and all information must be provided with extra caution as it can result in rejection of your application.

It is also pertinent to note that if the trademark is multi class, that is for the purpose of getting one's trademark/service mark registered under two or more specified classes of products/services, information of all the classes involved must be provided. The single class trademark application is filed for registering one's trademark/service mark under any specified class of goods/services. Online filing can be done here. Besides the office of trademark registry is in 5 states in India, you can find the jurisdiction on IP INDIA website to ensure that application is filed at the appropriate office. The requisite fees for applying for trademark manually are INR 10000 and INR 9000 when taking the online route. However, the fee for registering a trademark for a startup/individual/small enterprise is half of the normal fees.

Once the application is submitted and the receipt is generated, the applicant is expected to keep checking the status of the application and remove any difficulty or address to the objections arising thereof. The application status can be checked at the IP India website.

STEP 5–Check the application progress.
·Examination of application.
After the filing the applicant gets an allotment number or application number which he will be using for every future reference, he is also eligible to use the mark TM once the application is filed.From here on the application moves in registry office and authorities check whether all formalities have been met on not, they also ascertains its distinctiveness. After this, they issue the examination report and in case there’s no objection they approve it to be advertised in trademark journal. However, if there is any objection the applicant is allowed to submit his statement addressing that concern within one month of publication of examination report, and if the applicant fails to reply to the objection within that time the application is thrown out of the office of the registry. The applicant will also be getting a chance to discuss it with the authority. After that, the application can be withdrawn, abandoned, or the applicant is given a chance to remove the error. If after this the registrar finds the application proper he allows it to be advertised in trademark journal. The applicantalso has the option to appeal against registrar decision in Intellectual Property Appellate Board (IPAB).

·Advertisement in the journal.
Once the registrar or IPAB approve the application it appears in the trademark journal available in IP India website. There the trademark is supposed to stay for 4 months to give the public opportunity to oppose the application. If the application is opposed the applicant is bound to file the counter-statement within 2 months to the registrar. The process of addressing an opposition is dealt in a different article, however, the result can be either in favour of the applicant which means successful registration or in favour of opposing party that means rejection of registration. Once the Registrar rules in favour of applicant he will approve the trademark for the register and issue a registration certificate.

·Issuance of the registration certificate.
If the application remains unopposed for the duration of 4 months then the authority approves the trademark to the register and issue a registration certificate. Once the authorities check it for everything, they proceed with issuing the registration certificate and the trademark gets successfully registered. The applicant is allowed to use “®” symbol after that.

The validity of Trademark Registration.
Once registered, the trademark is valid for the next 10 years and can be renewed after that.

It is a good idea to register your trademark. It will ensure you against an infringement suit, it adds a lot of value to your brand and acts as a notice to your competitors and the public of your rights. It helps to strengthen the legal protection of your mark. The investment incur in the filing of a trademark is way less in comparison to the potential cost of not investing in a TM registration. It can secure the applicant both from economic loss and from the tedious legal proceedings, and in turn, saves a lot of time for the entrepreneur and businessman in this busy world.