Trademark registration in india procedure and fees


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Trademark registration in india procedure and fees

  1. 1. Legal Risk Management LLP TRADEMARK REGISTRATION IN INDIA- PROCEDURE AND FEES In India, the right to proprietorship of a trade mark may be acquired by either registration under the Trade Marks Act, 1999 or by use in relation to particular goods or service. CONDITIONAL PRE-REQUISITES BEFORE A MARK IS SOUGHT TO BE REGISTERED AS A TRADE MARK ● If it is a word mark, or if it is a mark containing at least in part a word, then that word ought to be easy to speak, spell and remember. ● Invented words or coined words that cannot be found in a dictionary as such form the best trade marks of all, since they can seldom be used as a generic word for any purpose. ● One should always be careful to avoid selection of a geographical name precisely for the same reason. ● It is in the best interest of a person not to select as marks descriptive or generic names or names that describes quality of a good such as best, perfect etc., or marks which have become customary in the current language or in the established practices of related trade. ● The mark should not consist exclusively of the shape of goods which results from the nature of the goods themselves, or the shape of goods which necessary to obtain a technical result or the shape which gives substantial value to the goods. ● If the mark is of such a nature as to deceive the public or cause confusion or contains any matter likely to hurt the religious susceptibilities of any class of Indian citizens or any scandalous or obscene matter, it may be refused registration. ● An action that will always satisfy the combined tests of both prudence and sound business sense will be to conduct a thorough market survey and a search at the Trade Mark Office before seeking to get a mark registered, so as to know whether similar mark or marks have already been registered or filed for registration. MARKS THAT CAN BE ADOPTED AS TRADE MARK ● Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for related trade to adopt as a mark. ● An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service. ● Letters or numerals or any combination thereof. ● Devices, including fancy devices or symbols ● Monograms ● Combination of colors or even a single color in combination with a word or device ● Shape of goods or their packaging
  2. 2. Legal Risk Management LLP ● Marks constituting a 3- dimensional sign. ● Sound marks when represented in conventional notation or described in words by being graphically represented. ● All of the aforesaid marks have to be sufficient for the purpose of identification of and distinguishing the goods, in relation to which they are being used, from other goods. TYPES OF TRADE MARKS THAT CAN BE REGISTERED AND CLASSIFICATION THEREOFAs per the provisions of the Trade Marks Act 1999, following are the types of trade marks thatcan be registered in India: ● Product trademarks associated with particular good(s). ● Service trademarks associated with a particular kind of service such as insurance, building construction etc.The Fourth Schedule of Trade Mark Rules, 2002 provides a comprehensive classification ofthe different types of trade marks associated with different goods and services that can beregistered in India. WHO CAN MAKE AN APPLICATION FOR REGISTRATION OF A TRADE MARK  Any person who claims to be the proprietor of a trademark used or proposed to be used by him can apply for the registration of the mark for goods as well services.  The application for registration has to be made in writing to the Registrar of Trade Marks and it has to be filed in the office of the Trade Mark Registry under whose jurisdiction the principal place of the business of the applicant in India falls. In case the principal place of business is outside India, then the application can be filed in the office of the Trade Mark Registry, under whose jurisdiction the place that has been mentioned in the ‘address for service’ section of the application (usually office of the lawyer appointed by the person) is located.  In case of a company about to be formed, anyone may apply for a trademark registration in his name for subsequent assignment of the registration in the companys favor. WHO CAN USE A TRADE MARK  The right to use a mark can be exercised either by the registered proprietor or a registered user or anybody else who has been duly authorized by the registered proprietor or a registered user.
  3. 3. Legal Risk Management LLP LEGAL REQUIREMENTS FOR REGISTRATION OF TRADE MARK IN INDIA ● The selected mark should be capable of being represented graphically (that is in the paper form). ● It should be capable of distinguishing the goods or services of one undertaking in relation to which it is being used from those of others. ● It should be used or proposed to be used in relation to goods or services for the purpose of indicating a connection in the course of trade between the goods or services and some person having the right to use the mark with or without revealing identity of that person. DURATION OF TRADE MARK PROTECTION AVAILABLE IN INDIA  Term of registration of a trademark is ten years, which may be renewed for a further period of ten years on payment of prescribed renewal fees.  However, non-usage of a registered trademark for a continuous period of five years is a valid ground for cancellation of registration of such trademark at the behest of any aggrieved party. HOW CAN A FOREIGN NATIONAL REGISTER A TRADE MARK IN INDIA: CONVENTION APPLICATION AND INTERNATIONAL TREATIES  Under Section 154 of the Trademark Act, 1999, India has declared certain countries as convention countries (Paris Convention, 1883), which affords to the citizens of those countries similar privileges as granted to the Indian citizens. A person or company from a convention country may, within six months of filing an application in his home country, apply for registration of the trademark in India. If such a trademark is accepted for registration, such foreign national will be deemed to have registered his trademark in India, from the same date on which he or she had filed the application in the home country.  Where the applications have been made for the registration of trademark in two or more convention countries, the period of six months would be reckoned from the date on which the earlier or earliest of those applications was made.  Although the recovery of damages for infringement of a trademark is possible only if the infringement takes place after the date of filing application for registration with the concerned trademark office in India, yet the deemed seniority in making application in home country may entitle the applicant to initiate an action in India for injunction, delivery of impugned labels and so on.
  4. 4. Legal Risk Management LLPIN CASE OF A FOREIGN CORPORATION, IS IT NECESSARY FOR THE PRODUCTS OR SERVICES TO BE SOLD IN INDIA BEFORE SEEKING TRADEMARK REGISTRATION?No, Indian trademark law allows filing of a trademark application in India on an ‘intent-to-use’basis. However the registered proprietor of the trademark in India has to commence use of themark within 5 years and 3 months of the date of registration. Otherwise the registered trademarkis open to the challenge of invalidation proceedings. THE PROCEDURAL FORMS FOR MAJOR TRADEMARK TRANSACTIONSThe First Schedule to the Trademark Rules, 2002 prescribes the different procedural forms andnecessary amounts of fees required for all trademark-related transactions, of which someexamples have been given below:  For filing new applications- There are prescribed forms depending on the nature of application such as Form TM-1, TM-2, TM-3, TM-8, TM-51 etc.  To file a Notice of Opposition to oppose an application published in the Trade Marks Journal- (FormTM-5).  For Renewal of a Regd. Trademark- (Form TM-12).  Surcharge for belated renewal - (Form -10)  Restoration of removed mark - (Form TM-13)  Application for rectification of a registered trade mark - (Form TM-26)  Legal Certificate - (Form TM-46)  Official search request for trademark - (Form TM-54)  Preliminary advice of the Registrar as to the registrability of a mark - (Form TM- 55).  Copyright search request and issuance of certificate - (Form TM-60) NECESSARY SPECIAL DOCUMENTS FOR TRADE MARK REGISTRATION  Proprietorship concern: Full name and address of the proprietor and true copy of identity and address proof.  Partnership concern: Full name and address of all partners and true copy of related documents.  Company concern: full name and address of all directors and true copy of related documents.  If one has claimed that the proposed mark is used since before application in another country, then evidence for such claim has to be provided.
  5. 5. Legal Risk Management LLP  Label of the proposed Trade Mark (Standard Label size 9cm x 5 cm) has to be provided. DIFFERENT STEPS FOR REGISTRATION OF A TRADEMARK1. The first step is conducting a trademark search so as to ensure that the logo or name inrespect of which you intend to register a trademark is not identical to an existing logo or name. Acomprehensive search can be conducted through the Trademarks Registry, although there areother sources (available free or on a commercial basis, such as Trademark Registration Services)which can also help you in getting started.2. Note that a trademark can be revoked even after it is granted, if somebody successfullychallenges it on the ground that it is confusingly similar to an already registered trademark.Hence, it is advisable to hire a trademark attorney with some experience for conducting thesearch, in order to ensure that your business logo or name is not confusingly similar to an alreadyregistered trademark. This will minimize chances of your trademark being revoked subsequently,after it has been granted.3. Next, the trademark application in the prescribed format under the Trademarks Rulesneeds to be made to the Trademark Registry.WHERE TO FILE FOR REGISTRATION OF TRADEMARKThe application must be filed at the office of the Trademark Registry which jurisdiction to dealwith it. So far, there are six registry offices, as per the official website of the Registrar of TradeMarks, mentioned as follows:Trademarks JurisdictionRegistryTrade Marks Maharashtra, Madhya Pradesh and GoaRegistryMumbaiIntellectualPropertyOffice,Antop HillPost Office,S.M.Road,Antop Hill,Mumbai-400037Trade Marks Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, DelhiRegistry, and ChandigarhDelhi
  6. 6. Legal Risk Management LLPDelhiIntellectualPropertyOffice PlotNO.32,Sector 14,Dwarka, NewDelhi-110075Trade Marks Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal,Registry, Manipur, Mizoram,Meghalaya, Sikkim, Tripura,Nagaland, Andaman & NicobarKolkata IslandsKolkataIntellectualPropertyOffice CP-2,Sector V, SaltLake City,Kolkata-700091Trade Marks Andhra Pradesh, Kerala, Tamil Nadu, Karnataka, Pondicherry, LakshadweepRegistry,ChennaiIntellectualPropertyOfficeG.S.T. Road,GuindyChennai-600 032Trade Marks Gujarat, Rajasthan,Damman, Diu, Dadra and Nagar HaveliRegistry,AhmedabadAhmedabadNationalChambers,15/27,1st floor,Ashram road,Ahmedabad-380 009
  7. 7. Legal Risk Management LLP 4. The application must be made in respect of one or more of the various categories of goods and services as classified under Schedule IV of the Trade Marks Rules, 2002. If the application is in respect of one class, the fee is INR 3500. It is also possible to make an application for your product under more than one class heads. However, if the application is in multiple classes, it is more expensive, the fee being INR 3500 multiplied by the number of Classes. Hence, one must identify the category/categories under which you want to apply. 5. The application must be in the prescribed format. For example, the simplest kind of application would be an application to register a trade mark for a specification of goods or services included in any one class, which is required to be made in Form TM-1. In case the goods or services fall within different classes, a single application can be made, but it must be as specified in Form TM-51. 6. The application must be filed by the applicant or his agent. The agent must be a legal practitioner or a person registered as a trademarks agent. 7. An applicant may apply for an expedited examination procedure for the scrutiny of his trademark application, stating reasons as to why such procedure is necessary. Expedited scrutiny is not a right, but depends upon the satisfaction of the Registrar. Further, it is more expensive, requiring payment of five times the normal application fee is to be paid for this purpose. The fee is refunded if the expedited scrutiny is refused by the Registrar. 8. After the application has been filed, the Trademarks Registry shall search whether an identical mark or a mark which is deceptively similar to the mark applied for, already exists, in respect of the same goods and services or similar goods and services. 9. The trademark application shall be published in the Trade Marks Journal within six months of its acceptance of by the Registrar.After this stage, there is an elaborate opposition process in place under Indian trademark law,which is explained below. The opposition process is important as it prevents others fromacquiring a trademark in respect of an already existing brand name. For company managers,strategists and advisors, it is a useful legal tool to avoid risk of brand dilution, and hence anaspect of legal liability management. The detailed opposition procedure is at the end of this post.In short, it is a lengthy and multiple step procedure involving numerous exchanges between theobjector and the applicant.  If no objection is filed, or if the objection is dismissed by the Registrar, he shall enter the trademark in the register and a Registration Certificate shall be issued.  The decision of the Trademark Registry is appealable to the Intellectual Property Appellate Board.  The trademark is valid for ten years, but may be renewed afterward. (Renewal fees typically range between INR 2500 to INR 5000, except for certification marks). DETAILED OPPOSITION PROCEDURE FOR TRADEMARK REGISTRATION
  8. 8. Legal Risk Management LLP(Each stage of filing requires a fee prescribed under the Trademarks Rules to be paid, typicallyranging from INR 500 to 2500). 1. The application may be opposed within three months of application (which is extendable by a further period of up to one month) by filing what is known as a notice of opposition, in a prescribed format, and by paying a fee. 2. Upon receiving the notice of opposition the applicant may reply with a counter-statement within two months of receipt (extendable by a maximum period of one month). 3. The opponent is required to file evidence within two months of receipt of the counterstatement (extendable by a maximum period of one month). If he serves no evidence, his opposition will be considered abandoned under the law. 4. If the applicant has filed evidence, the applicant has two months to file evidence in support of his application (extendable by a maximum period of one month). 5. The opponent now has one month the option to file his reply under the (extendable by a maximum period of one month). After this stage, no evidence is admissible, except by special permission of the Registrar. 6. The Registrar then gives notice of a hearing within three months of completion of receiving evidence. The hearing should be after a period of at least one month of the delivery of notice. Parties that wish to attend are required to inform the Registrar of their intention. There is a procedure for seeking an adjournment, in case a party is unable to attend at the requisite date. This part needs to be carefully complied with by both parties, especially the applicant, because if the applicant has not specified his intention to attend the hearing, and is not present at the adjourned date of hearing, his application can be deemed to have been abandoned by the Registrar. Similarly, if the opponent does not specify his intention to attend, and if he is absent on the date of hearing, his objection may be considered dismissed. The efforts of the affected party are in vain if the Registrar dismisses the application or objection, without hearing them. APPROXIMATE TOTAL COST INVOLVED IN TRADE MARK REGISTRATIONThe exact cost involved in the registration of a trademark will depend on the following variables: ● The number of trademarks one registers – (e.g., the name of the brand, the company name, the business logo) ● The number of classes under which one registers each logo ● The course taken by the opposition process (i.e. the existence of opposition, number of opponents and the number of replies filed, the number of one month extensions sought over the maximum period, for each step of the opposition process) ● The amount of lawyer’s fees for the filing process and the trademark search.
  9. 9. Legal Risk Management LLPNevertheless, heres an approximate estimate -If an application is for a single name or logo for goods or services under one class only, then theapplication will cost around INR 10,000 as the fee component for application, if one files for aword mark (that is, comprising of text) and a graphic mark under two classes.INR 1000 for a counter-affidavit in reply to an opposition.INR 5000 to INR 15000 on the lawyer’s fees.In addition to this, the trademark search, that is, the first step which is conducted before filing theapplication, will cost around INR 500.Hence, the approximate total cost ought to range between INR 16500 to 26500.