Trademark

Trademark | sagar savale
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Trademark
What is a Trademark?
 A Trademark generally refers to a “brand” or “logo”.
 Trademark registration can also be obtained for a business name, distinctive catch
phrases, taglines or captions.
 Properly used and promoted, a Trademark may become the most valuable asset of a
business. Trademarks such as Coca Cola, HP, Canon, Nike and Adidas serve as an
indication of origin of the goods as well as an indication of quality.
 It is also essential to obtain trademark registration for the business name/trade name
under the Trademarks Act. Registration of a company or business name under the
Companies Act does not in itself give protection against others who might commence
using identical or similar marks.
Use of TM, SM and ® symbols
 'TM' stands for Trademark and 'SM' stands for Servicemark. The use of TM and SM
symbols notifies the public that the company is claiming exclusive ownership of the
trademark and can generally be used by one who has filed a trademark application.
 The ® symbol, can be used only once the trademark is registered and the registration
certificate is issued. Also, you may use the registration symbol only in connection with
the goods and/or services in respect of which the trademark is registered.
The registration process is the same for both trademarks and servicemark
Trademark Services
 L.R.SWAMI CO. offers a comprehensive range of trademark services which include:
 Trademark Search
 Opinion on registrability of trademark
 Filing and prosecuting trademark applications
 Responding to office actions
 Handling trademark opposition proceedings
 Dispute resolution and litigation

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 Advice on validity of registrations
 Advice on infringement and passing off
 Issuing legal notice (cease and desist letters)
 Publishing caution notice
 Trademark watch and monitoring services
 Renewal of trademarks
 Trademark due diligence
 Drafting license agreements, franchisee agreements and assignment deeds
Trademark Search
 Before adopting a trademark, a trademark search is highly recommended, as this will give
an indication of any existing trademarks which have been applied for/or registered in the
Trademarks Registry.
 L.R.SWAMI CO. provides trademark search services in India, assisting clients in the
selection of brand names and ascertaining whether any identical or similar trademarks are
already existing in the records of the Trade Mark Registry.
 The cost of conducting a trademark search is quite insignificant in comparison to the
efforts and costs involved in rebranding due to infringement of others rights.
 Therefore, a trademark availability search is highly advisable before huge amounts of
money and time are invested in a trademark and the guidance of an experienced
trademark attorney are extremely worthwhile.
 In order to conduct a trademark search, kindly provide us with the following simple
information:
 Trademark to be searched
 Goods/Services in respect of which the trademark is to be searched
 The trademark search results are reported within 1 or 2 business days.
Classes of goods and services
 Before filing a trademark application, it is necessary to identify the classes in which you
wish to seek protection for your trademark.
 An application should be made in the relevant classes of current goods/services as well as
in classes where there is intent to use. All goods and services are divided into 45 classes.

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 The 9th
edition of the NICE international classification system is followed in India.
 The following list gives general information about the goods and services covered in each
class.
Trademark Classification of Goods and Services in India
Products
Class 1 Chemicals used in industry, science and photography, as well as in agriculture,
horticulture and forestry; unprocessed artificial resins, unprocessed plastics;
manures; fire extinguishing compositions; tempering and soldering preparations;
chemical substances for preserving foodstuffs; tanning substances; adhesives
used in industry.
Class 2 Paints, varnishes, lacquers; preservatives against rust and against deterioration
of wood; colorants; mordants; raw natural resins; metals in foil and powder
form for painters, decorators, printers and artists.
Class 3 Bleaching preparations and other substances for laundry use; cleaning,
polishing, scouring and abrasive preparations; soaps; perfumery, essential oils,
cosmetics, hair lotions; dentifrices.
Class 4 Industrial oils and greases; lubricants; dust absorbing, wetting and binding
compositions; fuels (including motor spirit) and illuminants; candles and wicks
for lighting.
Class 5 Pharmaceutical and veterinary preparations; sanitary preparations for medical
purposes; dietetic substances adapted for medical use, food for babies; plasters,
materials for dressings; material for stopping teeth, dental wax; disinfectants;
preparations for destroying vermin; fungicides, herbicides.
Class 6 Common metals and their alloys; metal building materials; transportable
buildings of metal; materials of metal for railway tracks; non-electric cables and
wires of common metal; ironmongery, small items of metal hardware; pipes and
tubes of metal; safes; goods of common metal not included in other classes;

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ores.
Class 7 Machines and machine tools; motors and engines (except for land vehicles);
machine coupling and transmission components (except for land vehicles);
agricultural implements other than hand-operated; incubators for eggs.
Class 8 Hand tools and implements (hand-operated); cutlery; side arms; razors.
Class 9 Scientific, nautical, surveying, photographic, cinematographic, optical,
weighing, measuring, signalling, checking (supervision), life-saving and
teaching apparatus and instruments; apparatus and instruments for conducting,
switching, transforming, accumulating, regulating or controlling electricity;
apparatus for recording, transmission or reproduction of sound or images;
magnetic data carriers, recording discs; automatic vending machines and
mechanisms for coin-operated apparatus; cash registers, calculating machines,
data processing equipment and computers; fire-extinguishing apparatus.
Class 10 Surgical, medical, dental and veterinary apparatus and instruments, artificial
limbs, eyes and teeth; orthopedic articles; suture materials.
Class 11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying,
ventilating, water supply and sanitary purposes.
Class 12 Vehicles; apparatus for locomotion by land, air or water.
Class 13 Firearms; ammunition and projectiles; explosives; fireworks.
Class 14 Precious metals and their alloys and goods in precious metals or coated
therewith, not included in other classes; jewellery, precious stones; horological
and chronometric instruments.
Class 15 Musical instruments.

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Class 16 Paper, cardboard and goods made from these materials, not included in other
classes; printed matter; bookbinding material; photographs; stationery;
adhesives for stationery or household purposes; artists' materials; paint brushes;
typewriters and office requisites (except furniture); instructional and teaching
material (except apparatus); plastic materials for packaging (not included in
other classes); printers' type; printing blocks.
Class 17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials
and not included in other classes; plastics in extruded form for use in
manufacture; packing, stopping and insulating materials; flexible pipes, not of
metal.
Class 18 Leather and imitations of leather, and goods made of these materials and not
included in other classes; animal skins, hides; trunks and travelling bags;
umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 19 Building materials (non-metallic); non-metallic rigid pipes for building; asphalt,
pitch and bitumen; non-metallic transportable buildings; monuments, not of
metal.
Class 20 Furniture, mirrors, picture frames; goods (not included in other classes) of
wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber,
mother-of-pearl, meerschaum and substitutes for all these materials, or of
plastics.
Class 21 Household or kitchen utensils and containers; combs and sponges; brushes
(except paint brushes); brush-making materials; articles for cleaning purposes;
steelwool; unworked or semi-worked glass (except glass used in building);
glassware, porcelain and earthenware not included in other classes.
Class 22 Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not
included in other classes); padding and stuffing materials (except of rubber or
plastics); raw fibrous textile materials.
Class 23 Yarns and threads, for textile use.

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Class 24 Textiles and textile goods, not included in other classes; bed and table covers.
Class 25 Clothing, footwear, headgear.
Class 26 Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and
needles; artificial flowers.
Class 27 Carpets, rugs, mats and matting, linoleum and other materials for covering
existing floors; wall hangings (non-textile).
Class 28 Games and playthings; gymnastic and sporting articles not included in other
classes; decorations for Christmas trees.
Class 29 Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked
fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products;
edible oils and fats.
Class 30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and
preparations made from cereals, bread, pastry and confectionery, ices; honey,
treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments);
spices; ice.
Class 31 Agricultural, horticultural and forestry products and grains not included in other
classes; live animals; fresh fruits and vegetables; seeds, natural plants and
flowers; foodstuffs for animals, malt.
Class 32 Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks
and fruit juices; syrups and other preparations for making beverages.
Class 33 Alcoholic beverages (except beers).

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Class 34 Tobacco; smokers' articles; matches.
Services
Class 35 Advertising; business management; business administration; office functions.
Class 36 Insurance; financial affairs; monetary affairs; real estate affairs.
Class 37 Building construction; repair; installation services.
Class 38 Telecommunications.
Class 39 Transport; packaging and storage of goods; travel arrangement.
Class 40 Treatment of materials.
Class 41 Education; providing of training; entertainment; sporting and cultural activities.
Class 42 Scientific and technological services and research and design relating thereto;
industrial analysis and research services; design and development of computer
hardware and software.
Class 43 Services for providing food and drink; temporary accommodation.
Class 44 Medical services; veterinary services; hygienic and beauty care for human
beings or animals; agriculture, horticulture and forestry services.
Class 45 Legal services; security services for the protection of property and individuals;

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personal and social services rendered by others to meet the needs of individuals.
Selecting a good trademark
 A trademark must be chosen carefully. If you are launching a product and adopting a new
trademark, please bear in mind that the scope of legal protection you would obtain
depends on the type of trademark chosen.
 The most common mistake is to choose a word that is descriptive of the goods or
services. People do this in the belief that the consumer will know straight away what the
product is or the service rendered. The same result can easily be obtained by combining a
distinctive and fanciful trademark with a word which indicates the goods or services. E.g.
Kodak film.
 Descriptive trademarks are difficult to register and enforce. Although it may be easier to
market such products at inception, such trademarks are offered the least amount of
protection and therefore, in the long term, it would be difficult to stop your competitors
from using the same or similar trademarks.
 A better strategy would be to adopt a coined word, which has no reference to the
goods/services upon which it is used. E.g. Canon
 Another option is to adopt an arbitrary word, which has no relevance to the
goods/services upon which it is used. E.g. Apple computers; Lotus software
 The more distinctive a trademark is, the broader will be the available scope of protection.
GUIDELINES TO BE FOLLOWED:
 AVOID Superlative or Laudatory words E.g. Premium, Gold, Deluxe
 AVOID Descriptive words E.g. Coffee shop for coffee bars; Cooler for Refrigerators
 AVOID trademarks Confusing Similar to existing trademarks
 AVOID words which have direct reference to the Character or Quality of
the product/service. E.g. Best Choice, Easy Cook, Super

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 AVOID Common Personal Names or surnames. Such names are registrable only if it has
acquired distinctiveness through advertisements and long use Well known geographical
names such as SWISS chocolates or U.S.A. pizza are also not registrable.
 There are also other factors to be considered in the adoption of trademarks, which is
beyond the scope of this text.
Requirements for filing a trademark application
 The name, address and nationality of the applicant. If the applicant is a partnership firm,
the names of all the partners. Also mention whether any minor is a partner.
 If the applicant is a company, the country or state of incorporation.
 A list of goods and/or services for which registration is required.
 Soft copy of the trademark to be registered.
 If the mark contains or consists of non-English words, a translation of those words into
English is required.
 If the application is to claim priority from an earlier filed convention application, details
of that application is also required (application number, filing date, country and
goods/services). A certified priority document or its duly notarized copy is to be
submitted. If the certificate is not in English, a certified/notarized English translation is
also required. If it is not readily available, the application can be filed based on the basic
application number, date of the application and country of the application. A copy of the
priority document can be submitted within 1 month from the filing date of the
application.
 Date of first use of the trademark in India, if at all used
 Power of attorney simply signed by the applicant (no legalization or notarization is
required). For Indian clients, power of attorney to be executed in 100 Rs. stamp paper and
signed by the applicant. The power of attorney is not required at the time of lodging the
application and can be submitted later with no additional cost.
Trademark Registration Process
 Upon filing of the application, the registry will issue us with an official receipt with the
filing date and number allotted to the application. The application is then formally

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examined by the Indian Trade Marks Office, as to its inherent registrability and/or any
similarity with existing marks. If an objection to registration is raised, an official
examination report will issue. To overcome the objection, it is necessary to file a written
response or presenting evidence of acquired distinctiveness and in most cases, an
interview/hearing with the examiner is posted. The Registrar may require the applicant to
file an affidavit testifying to such user with exhibits showing the mark as used.
 If, following examination, the trade mark application is considered allowable, a Letter of
Acceptance (TLA order) will issue, after which the trademark will be published in the
Trade Marks Journal. If there are no oppositions within 4 months from the date of
advertisement in the Trade Marks Journal, then the trademark registration certificate will
issue.
 Trademark Registration is a tedious process and it takes around 18-24 months to obtain
registration in a straight-forward case, without any objections or oppositions. However,
once the trademark application is filed, an application number is allotted immediately
and the priority starts from the date of application.
 Once the trademark is registered, it is valid for a period of 10 years from the date of
application. The registration can then be renewed indefinitely as long as the renewal fees
are paid every 10 years.
International Trademark Registration
Trademark registration is territorial in nature. Separate applications need to be filed in each
country where you wish to register your trademark.
If you plan to sell and market internationally, it is essential to register your trademarks in those
countries. Usually, the party who first registers a mark owns it. Therefore, it is significant to
register your trademarks in each country your company considers to be a potential and key
market. A national trademark registration stops at the border and does not afford rights to the
owner of the trademark outside the country in which it is registered.
Most companies expanding into other countries often realize the value of registering their
trademarks abroad once it is too late, that is, once they are faced with counterfeiters/imitators or
once they are accused of infringing the rights of others. The risks of doing so are very high and
the consequences may be extremely costly and detrimental to a company’s entire business and
export strategy. It can be a severe financial liability to invest in a brand, promote it in the local

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market, then find that the brand cannot be registered and used internationally and have to finally
abandon that investment.
 Registering a trademark abroad renders the company an exclusive right to commercialize
its products in those markets.
 This not only provides a solid foundation to stop counterfeiters but also ensures that the
company enjoys exclusive rights over what may be one of its most valuable business
assets.
 Registering a trademark abroad also provides the opportunity to license the trademark to
others or may be the basis for a company’s franchising or merchandising strategy.
 Thus, the benefits of international registration and protection of one's trademark
clearly outweigh the costs of such registration.
International Application under Madrid Protocol
India has joined the Madrid protocol with effect from 8th July 2013. The Madrid system for the
international registration of trademarks provides one single and cost-effective procedure for the
registration of a mark in several territories.
At present, there are 91 countries which are members of the Madrid protocol. The following link
shows the members of the Madrid system:
http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf
In order to file an international application under the Madrid protocol, there should be a
corresponding trademark application filed in India.
In a single international application under the Madrid protocol, several countries may be
designated which are members of this system. The fees will depend based on the number of
classes and countries designated.
The fees can be calculated using the online tool by choosing Office of origin as India, selecting
the number of classes and specifying whether the mark is in colour:
http://www.wipo.int/madrid/en/fees/calculator.jsp
In addition, a handling fee of Rs. 2,000/- is payable to the Indian Trade Mark Registry.
Upon filing the application, the mark is examined by each designated member country where
registration is sought and then proceeds to registration.
An international registration under Madrid protocol is however dependent on the corresponding
Indian application for a period of five years from the date of international application.

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If you wish to obtain registration in a country which is not a member of the Madrid protocol,
separate national trademark application has to be filed directly in the respective country.
Advantages of filing an International Application under Madrid protocol
 Lower costs compared to individual foreign filings
 Managing renewals, change in address, change in ownership is easier and more cost-
effective
 Additional countries may be designated at a later stage
Salient features
 Multi class applications are allowed in India. However, statutory filing fees will be
applicable for each class.
 Classification of goods and services is according to NICE classification (45 classes).
 Prior use of the trademark is not mandatory for filing. Therefore, applications can be filed
on a 'proposed to be used' basis.
 Power of attorney is required (if filed through an agent/attorney)
 Applications are examined as to registrability and availability based on existence of prior
filed applications. Once accepted, it is published in the Trademarks Journal and an
opposition may be filed by a third party within 3 months (extendable by one month). If
no opposition is filed, the registration certificate is issued thereafter.
 A trademark may be subject to removal on the grounds of non-use, if it is not used for a
continuous period of 5 years.
 The registration is valid for 10 years from the date of application and can be subsequently
renewed every 10 years by payment of renewal fees.
 Priority can be claimed provided the application is filed within 6 months from the date of
the filing in the convention country
SAGAR KISHOR SAVALE
avengersagar16@gmail.com

Trademark

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