Have you ever felt the urge to purchase a product purely because of its association with a brand? The modern consumer in India is well aware of various marks, logos and signs used by various businesses and easily tends to recognise, and associate, such businesses by such marks, logos, and signs. What Indian consumers have lesser awareness of, however, is that such marks, logos, and signs are trademarks, and represent the intellectual property of the businesses they are associated with.
A trademark is a form of intellectual property which identifies the goods or services of a business (by indicating the source of such goods/services) and distinguishes them from the goods/services of competitors in the market. Since the valuation of any modern business is done both in economic terms and in terms of its ‘brand-equity’ (or ‘brand-identity’), having a trademark significantly helps businesses engage with customers, trade partners and the general public; establish brand recognition/association; and loyalty for their goods or services (and thereby increase profits and compete with contemporaries). Thus, it is advisable for any person/entity seeking to operate a business in India to register a trademark in India. Unfortunately, since many businesses are seemingly unaware of how to register a trademark in India, a primer on trademark registration is provided below, which deals with common queries regarding how to register a trademark name and logo in India and how to register a trademark in India as a startup, and outlines the steps and documents involved in the process.
What is Trademark?
The process of registration of a trademark is conducted in accordance with the Trademarks Act, 1999 (“TMA, 1999”) and the Trade Mark Rules, 2017 (“Rules, 2017”) framed thereunder. As per the statutory definition under Section 2(zb) of the TMA, 1999, a trademark is a mark which is capable of: being represented graphically (viz. any symbol word, logo, name, device, label) including but not limited to the shape of goods, their packaging and combination of colours; and is capable of distinguishing the goods/services of its proprietor from those of others. A trademark should have been used or should be proposed to be used in a way that indicates a connection in the course of trade between the goods or services of a proprietor.
Documents Required for Trademark Registration
1. Power of Attorney (PoA)
Although any individual or entity can file an application for registration of a trademark, it is advisable to engage a competent and experienced trademark counsel, or agent, to prepare and file a trademark application in India on one’s behalf. This is important to ensure that a trademark application is prepared comprehensively and filed precisely. In order to engage a trademark counsel/agent for filing of trademark, a PoA document (in the prescribed format) is needed to be signed by the applicant and submitted along with the trademark application (to authorize the relevant counsel or agent for filing/prosecuting the trademark application).
2. Trademark Application
The trademark registration process primarily involves preparing and filing a trademark application before the Indian Trade Marks Registry (“Registry”). Such application should depict the mark and detail the goods/services for which registration is sought and contain particulars like the date of the earliest use of the mark (if any) and name/ address of the applicant and trademark counsel/agent (if any).
Kinds of Trademark Application
An ordinary trademark application can be filed for a single class of goods or services in India, or in more than one class of goods and services in accordance with Section 18(2) of the TMA, 1999.
A convention application (also called ‘priority application’) is an application for registration of a trademark which can be filed claiming priority from a notified convention country in accordance with Section 154 of TMA, 1999. As per the relevant provision, if any trademark application is filed in a convention country, and thereafter, its applicant files a priority application for registration of the same trademark in India within six (6) months (from the date of the application filed in the convention country) then the priority application filed in India will be registered as of the same date on which an application was filed in the convention country. A priority application can also be filed for a single class or multiple classes of goods/services.
Apart from the aforementioned applications, trademark applications can also be filed in India for series trademarks, collective trademarks, and certification trademarks.
3. User Affidavit
A trademark application can be filed along with a claim of prior use of a trademark, or on a proposed-to-be-used basis. The TMA, 1999 mandates that when a trademark application is filed with the claim of prior use, the applicant must file an Affidavit of Prior Use/User Affidavit (which primarily comprises a written undertaking from the applicant that the prior ‘usage date’ claimed in the applicant’s trademark application is true and correct and not a false date). A User Affidavit must necessarily be submitted along with documentary evidence attesting to and showing the use of a mark from the ‘usage date’ claimed in the application.
Steps to register a Trademark
The following steps are involved in the process of trademark registration in India:
Before applying for registration of any trademark, it is useful (and recommended) to conduct a trademark search to identify if any similar or identical third-party trademarks already exist in the trademarks register (maintained by the Registry).
If there are many similar/identical marks to a proposed trademark, it runs the risk of being refused by the Registry or opposed by the proprietor(s) of such similar/identical mark(s). Thus, a trademark search allows a potential applicant to obtain a preliminary understanding of their chances of obtaining a registration for a trademark and to avoid filing an application for a trademark that has relatively lesser chances of being granted registration (and avoid unnecessary costs). A trademark search can be conducted by visiting the official website of the Trade Marks Registry or through third-party specialized software. It is beneficial to seek a professional opinion to ascertain the chances of registrability of a mark and for suggestions on alternative avenues in case of various pre-existing similar/identical trademarks.
After conducting a trademark search to ensure that the trademark application has no foreseeable impediments, the potential applicant can proceed to file a trademark application with the appropriate Registry office (in Hindi or English language) in the prescribed form and with the prescribed fee. An application can be filed physically before the Registry, or through electronic filing. Of the two, electronic filing is a preferable option, as it is user-friendly, time efficient, and cost-effective (since there is a 10% reduction in the official fee if the application is filed online).
Subsequent to the filing of a trademark application, it is examined by an Examiner (of trademarks) for any procedural or substantive irregularities/deficiencies. After examination, the Examiner might absolutely accept a trademark, issue an acceptance subject to certain conditions, or raise an objection.
A trademark is published and advertised in the Trademark Journal if accepted unconditionally by the Examiner. If any objection is raised during the Examination of the application, the conditions to be fulfilled or the objections raised in the Examination Report issued by Examiner must be met or responded to by an applicant within one (1) month or any further period of time (if granted by the Examiner).
If the Examiner accepts the applicant’s response to an objection or where the conditions for acceptance of a trademark are fulfilled by an applicant, the Examiner will proceed to publish and advertise a trademark in the Trademark Journal. In the alternative, if the Applicant’s response is unacceptable to an Examiner, the applicant can request a hearing to be granted. Subsequent to the hearing, if the Examiner feels that a trademark should be allowed registration, it will be advertised in the Trademark Journal. In the alternative, the trademark application will be rejected by the Examiner.
Publication in Trademark Journal
The publication of a trademark in the trademark journal is a process whereby any party having an objection to the registration of the published trademark has an opportunity to oppose the same. A trademark is published for a period of four (4) months during which a party can file a notice of opposition in a prescribed form and with the prescribed fee.
Once a trademark application passes the four (4) month advertisement phase unopposed, it is granted registration and an official registration certificate bearing the seal of the Registry is issued to the proprietor of the trademark.
Trademark registration is valid for a period of ten (10) years and may be renewed every ten (10) years thereafter. Accordingly, trademark registration can be protected perpetually by the proprietor of a trademark. The application for renewal of the trademark can be made at any time not more than one (1) year before the expiration of the last registration of the trademark.
As modern businesses must invest considerable time and effort in building a brand (with respect to their goods and services), any appropriation and misuse of such brand by an unauthorized third party are inherently undesirable, and moreover, damaging to the goodwill and reputation of a business.
Thus, it is helpful if a business has the foresight to register a trademark, especially since registration of a trademark grants its proprietor of a brand/trademark the exclusive use of a trademark; and the option of initiating statutory proceedings against any person/entity which uses the proprietor’s brand/trademark in an unauthorized manner. Fortunately, trademark registration procedures are quite streamlined in India and with the assistance of a qualified counsel, it is easy for any organization or business to register a trademark and to avail of statutory rights and remedies.
Frequently asked questions
1. What is the eligibility to apply for a trademark in India?
The TMA, 1999 allows any individual or entity (such as a company, limited liability partnership, HUF, sole proprietorship, etc.) which claims to own a trademark to apply in writing in the prescribed manner (detailed above) for trademark registration.
2. How to register a trademark in India as a startup?
The process of registration of trademark in India for a startup or micro, small and medium enterprises (“MSME”) is the same as the process outlined above, with one added advantage i.e. a fifty per cent waiver on the official fee for filing a trademark application. However, it is mandatory to submit a copy of the MSME registration certificate in order to claim this waiver.
3. What kind of marks can be trademarked in India?
Although the average Indian applicant is commonly concerned with how to register a trademark name and logo in India, it is important to understand that a trademark (as mentioned above) is not just confined to a name or logo. A trademark may comprise any distinctive word (whether invented or even any arbitrary dictionary word if not directly descriptive of goods/services the mark is filed for), letters, numbers, image symbols, a combination of colours, shapes, 3-D marks, or even a sound or smell.
4. Can you use a mark without registering it?
While trademark registration is not compulsory, it is greatly beneficial – since registration is prima facie proof of the ownership of a trademark and vests the owner of the trademark with the exclusive right to its usage. Moreover, upon registering a mark, a proprietor can take legal action against any person or entity which is unauthorizedly using the registered mark (or any other mark deceptively and confusingly similar thereto) in respect of identical/similar goods/services. It is pertinent to note that the right to initiate proceedings for infringement of a trademark is a statutory right and is only available to a proprietor if they have a trademark registration.
5. How are the ™ and ® symbols different and when is it appropriate to use them?
The ™ symbol is used to signify a mark that is unregistered but being used by an individual/entity to promote the goods/services of such individual/entity. However, the ® is used to signify a registered trademark.