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Trademark is a brand, trade name or name associated with a service or product of an individual, firm, entity or company. It is a unique mark through which the consumers identify a product or service. It differentiates the product manufactured or service provided by an individual, firm, entity or an entity.
In India, trademarks are regulated under the Trademarks Act, 1999 (‘Act’) and Trade Marks Rules, 2017 (‘Rules’). When a trademark is registered under the Act, it is protected from infringement which means that a third party cannot use the registered trademark for their products or services without authorised permission.
Meaning of Trademark: A trademark is defined under Section 2(m) of the Act as a mark that includes a brand, device, heading, ticket, label, name, word, signature, letter, the shape of goods, numeral, packaging or combination of colours or any such combination. Trademark is a visual symbol or logo used to indicate the source of the products or goods. The symbol or logo can be a word, signature, number, geometrical figure, monogram, a combination of words and numerical, a combination of colours with a logo, or it can even be a sound mark.
Who Can Apply for Trademark Registration?
Individua, partnership firm, trust, society, company and / or any other entity can apply for trademark registration in India. An individual is the owner of a trademark that he/she creates and uses for his/her services or products. A company or entity will be the owner of the trademark when the trademark is used to represent the goods or services of that company.
Procedure for Trademark Registration
Step 1: Trademark search First of all before applying for trademark registration, the owner (applicant) must conduct a trademark search on the online the website of the Controller General of Patents, Designs and Trademarks. The trademark search is an essential step before applying for registration as the Registrar will reject the application if the proposed trademark is similar or resembles another registered trademark. For conducting trademark search you will require two informations (i) name of the trademark (ii) trademark class under which the product / services of the applicant are covered.
Generally, Examiner of Trademarks issue objections under section 9 and 11 of the Trademark Act. In case same / similar name visually / alphabetically / phonetically does not exist then the Applicant may go ahead and file the application. Else may go ahead with applying the same.
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WHAT IS FORMALITY CHECK FAIL IN TRADEMARK REGISTRATION PROCESS?
The application has to comply with respect to all the formalities, Nice Classification of goods and services, descriptiveness, distinctiveness and clarity etc.
Publication in trademark journal–if the trademark application is accepted by the trademark Examiner, then the application details will be posted online including the mark, class name, goods/services, date of application, name of the applicant with address, information about Proposed to be Used or priority claim, and the name of the Trademark Registration Jurisdiction in India where the application has been filed.
Registration – After the publication of the mark in trademark journal and if no opposition was filed within 4 months from the date of publication of the mark in the trademark journal, the issuance of trademark registration certificate will send to Applicant or to the Trademark Agent/Trademark Attorney via email.
If the reply to Formality Check Fail is not filed within the prescribed period, then trademark application gets rejected/ abandoned. Hence, the trademark applicant should to check the status of the trademark application at the regular interval.
This Article is describing the Trademark Application status of "Formality Check Fail".
What do you mean by "Formality Check Fail"?
The Trademark Application status "Formality Check Fail" means the Registrar will examine the Application at the preliminary level. Here the Registrar will check the basic information and supporting documents deposited with the Trademark application with the Indian Trade Marks Registry offices online or offline.
Reasons for "Formality Check Fail" of Trademark Application: –
While making a Trademark application one has to select the category under which the application is to be filed. The categories are divided into four parts which are;
1. Individual/Sole Proprietor
2. Startup
3. Small Enterprise
4. Others
Hence, if the proper category is not selected then the Trademark application status falls under the "Formality Check Fail".
1. Incorrect Name of Applicant
2. Incorrect Address of Applicant
3. Incorrect Country of Applicant
4. Incorrect Jurisdiction of Applicant
5. Incorrect Email Address of Applicant
6. Incorrect Nature of Applicant
Example: if Applicant is Indian Private Limited Company, then the Nature of Applicant will be Body Incorporate & Legal Status of Applicant will be an Indian private limited company
1. Incorrect Legal Status of Applicant
2. Incorrect Category of Mark
3. Incorrect Trade Mark
4. Incorrect Image Description
5. Incorrect Image Description
If mark in a language other than Hindi or English, example. Bengali
1. Then the Applicant have to provide
2. Transliteration of the mark in roman script: -
3. Translation of the mark in English: -
If the Applicant fails to comply the above formalities, then the Trademark application status falls under the "Formality Check Fail".
Incorrect class of goods or service
The Indian Trade Mark has divided the goods and services into 1 to 45 classes. The correct class needs to be selected at the time of filing a Trademark Application.
Example: if Applicant is Indian Private Limited Company manufacturing or dealing in pharmaceutical goods then Class should be 5 & Description of goods should be pharmaceutical preparations. if the Class is correct but description of goods is not as per the Nice Classification (NCL) or vice versa, established by the Nice Agreement (1957), is an international classification of goods and services then the Trademark application status falls under the "Formality Check Fail".
Improper Uploaded Documents:
The timeline of Trademark Registration Process can further stretch if all the required documents are not submitted/Uploaded Documents. This includes putting up an application with important documents like such as Power of Attorney, user affidavit" & proofs in support of claim for User Date, supporting documents for claiming a rebate on application fees i.e., start-up or Msme Certificate, etc.
It might happen the Uploading Documents are corrupted/not proper and the Examiner is unable to open/ view/ unreadable to them. In such cases the examiner marks the Trademark Application status as "Formality Check Fail" and asks to submit the documents again.
Improper Information:
All the required information in the application must be filled properly as required. For example, the translation and transliteration must be provided if the brand name is in a language other than English or Hindi. The name, address and other details of the applicant must be as per the Power of Attorney; the user date must be mentioned properly, It is recommended that mark images have a length of no less than 250 pixels and no more than 944 pixels, and a width of no less than 250 pixels and no more than 944 pixels. Mark images should have little or no white space appearing around the design of the mark., etc.
Trade Mark and logo are different:
If the logo and the provided Trade Mark are different from each other and the words mentioned in the logo do not match with the Trade Mark, then the Examiner marks the status as "Formality Check Fail". Hence, both the logo and the brand/ Trade Mark must correlate with each other.
Actions to take
The ministry will issue a notice for "Formality Check Fail" along with reasons issuing the same. The applicant has to file the "Formality Check Fail" reply within 30 days from the date of receipt of the notice. Ministry will mark the application as abandoned upon not receiving the response within the specified period (within 30 days from the date of receipt of the notice).
If the ministry is satisfied with the reply, then it will process the application for the next stage. If the reply is not satisfactory then ministry may again mark the status as "Formality Check Fail".
Conclusion
One can avoid this stage by filling the correct & proper information in Trademark Application. To process smoothly trademark must be filed through Trade Mark Agent or Attorney. But sometime, due to technical reasons, one may come across this stage. It is simple to file the reply for the "Formality Check Fail" by clearing the issues raised by the ministry.
Frequently Asked Questions About Formality Check Failures in Trademark Registration
Registering a trademark is an important step in protecting your brand identity. However, the trademark registration process can be complex and confusing, and it's not uncommon for applicants to encounter issues along the way. One such issue is a formality check failure. In this article, we'll answer some frequently asked questions about formality check failures in trademark registration.
Q: What is a formality check?
A: A formality check is a review of the trademark application to ensure that it meets all the necessary requirements. This includes verifying that the application is complete, that the fees have been paid, and that the required documents have been submitted.
Q: What is a formality check failure?
A: A formality check failure occurs when the trademark application does not meet one or more of the necessary requirements. This can include missing or incomplete information, incorrect filing fees, or failure to submit required documents.
Q: What happens when a formality check fails?
A: If a formality check fails, the Trademarks Registry will issue a formal notice of objection. The applicant will be given a specified time frame to address the objection and provide the missing or corrected information. Failure to respond within the specified time frame can result in the application being abandoned.
Q: How can I avoid a formality check failure?
A: To avoid a formality check failure, it's important to carefully review and double-check your trademark application before submitting it. Make sure that all required information is included and that any supporting documents are properly prepared and submitted. It's also a good idea to work with a trademark agent or attorney who can guide you through the application process and ensure that your application meets all the necessary requirements.
Q: Can I appeal a formality check failure?
A: Yes, it is possible to appeal a formality check failure. If you believe that the objection is unfounded or that you have provided the necessary information, you can file an appeal with the Trademarks Registry. However, it's important to note that the appeal process can be lengthy and expensive, so it's best to avoid a formality check failure in the first place.
In conclusion, a formality check failure can be a frustrating setback in the trademark registration process. However, by carefully reviewing your application and working with a trademark agent or attorney, you can avoid common mistakes and increase your chances of a successful registration. If you do encounter a formality check failure, it's important to address the objection promptly and provide the necessary information to avoid abandonment of your application.
How a Trademark Agent or Attorney Can Help You Navigate Formality Check Failures in Trademark Registration
Registering a trademark is an important step in protecting your brand identity, but the trademark registration process can be complex and overwhelming. One common hurdle that applicants face is a formality check failure. This occurs when the trademark application does not meet all of the necessary requirements, such as missing information, incorrect filing fees, or failure to submit required documents. In this article, we'll explore how a trademark agent or attorney can guide you through the formalities check process and help you avoid common pitfalls.
1. Expertise: A trademark agent or attorney has extensive knowledge and experience in the trademark registration process. They can guide you through the process and advise you on the necessary steps to take to avoid formality check failures.
2. A thorough review of your application: Before submitting your application, a trademark agent or attorney will carefully review it to ensure that it is complete and meets all the necessary requirements. This can include verifying that the application is properly filled out, that the filing fees have been paid, and that all required documents have been submitted.
3. Assistance with filing: If any issues are identified during the review process, a trademark agent or attorney can assist you with correcting the issues and ensuring that the application is properly filed.
4. Prompt response to formal notices of objection: In the event of a formality check failure, the Trademarks Registry will issue a formal notice of objection. A trademark agent or attorney can help you respond to the objection promptly and provide the necessary information to avoid abandonment of your application.
5. Legal advice: A trademark agent or attorney can offer legal advice on trademark infringement, licensing, and other related issues. They can help you protect your trademark rights and take legal action if necessary.
In conclusion, a formality check failure can be a frustrating and time-consuming setback in the trademark registration process. However, by working with a trademark agent or attorney, you can avoid common mistakes and increase your chances of a successful registration. They can guide you through the process, review and file your application, and respond promptly to any formal notices of objection. Don't let formality check failures stand in the way of protecting your brand identity - consult with a trademark agent or attorney today.
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Trademark Status and its meaning
Trademark application status can be easily tracked online using the governmental portal. But to have an exact idea of your trademark status it is important to know what exactly each status mean.
Various Trademark Status are as follows:
Trademark Status Formalities Check Pass
Application has been filed correctly.
Trademark Status Formalities Check Fail
Application is not filed correctly and there is some mistake in the same. Sometimes amendment form is required to be filed. TM-F is required to be filed to correct the error.
Trademark Status Send To Vienna Codification
If Application contains logo then it’s data is sorted as per Vienna codification.
Trademark Status Marked for Exam
Application will be checked by the Examiner of Trademarks.
Trademark Status Awaiting reply to examination report
In case there is any objection under section 9 or section 11 of Trade Marks Act, then the reply to objection / examination report is required to be filed.
Trademark Status Objected
Application has been objected by the Trademark Registry and reply to examination report has been filed.
Trademark Status Exam Report Issued
Application has been accepted or other query has been raised by the examiner of trademarks.
Trademark Status Ready for Show Cause Hearing
Application has been fixed for hearing.
Trademark Status Abandoned
If response is not filed within the given time frame it is marked as abandoned.
Trademark Status Advertised bef acc
Published in the Trademark Journal without acceptance and subject to any third party opposition.
Trademark Status Accepted & Advertised
Published in the Trademark Journal with user evidence.
Trademark Status Opposed
Opposition to Trademark Application filed by Third Party.
Trademark Status Registered- Trademark has been registered successfully.
Trademark Status Refused
Application is refused by the department. Invalid- Application fees not received.
Trademark Status Withdrawn
Trademark Application is Withdrawn by the Applicant himself.
Trademark Status Send Back to EDP
Trademark Application has been sent back for proper data entry or to digitize the application.
Trademark Status Send to PRAS
Pre-Registration Amendment section. If you have filed any amendment to your Trademark Application, then PRAS will deal amendment.
Trademark Status Rectification Filed
Rectification application filed by a Third Party to remove the Trademark Application from the Register of Trademarks.
Trademark Status Accepted
Trademark accepted without evidence pending publishing in Journal.
Trademark Status Cancelled
Trademark has been cancelled.
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Trademark Registration Process and its various stages
Application Filing : Status “New Application” indicates that the application has been received and is under process at initial stage.
Sent to Vienna Codification: The Vienna Code Classification is a well-recognized standard for logos and their constituent parts. Based on the type of figurative components in the logo, the Code is given.
Formalities check pass : Passing the formalities check implies that the Trademark Registry has accepted all first or preliminary documents and information provided with the application.
Formalities check fail: The status will reflect “Formalities Check Fail” if the Trademark Registry discovers any problems or conflicts with the documentation and/or information provided by the applicant. This can be as a result of the incompleteness or ambiguity of the previously supplied documents and/or information.
Marked for exam: Following a preliminary review, if the trademark receives a “Formalities Check Pass,” it will be forwarded to a trademark examiner who will carefully review all the supporting documentation and the application to make sure it is complete in every way.
Objected: If the trademark is given this status, it signifies that the examiner has voiced some concerns about the mark and its registration. In this situation, a response must be provided to the examination report within one month after its release. The trademark status will reflect “Refused in trademark registration” if the response is not provided within the allotted time.
Refused or abandoned: The examiner will mark the application as “Refused” if he is dissatisfied with the response to the Examination Report or even after a Show Cause Hearing.
Advertised before acceptance : There are instances where the trademark status is listed as “Advertised before Accepted.” This indicates that the Trademark Registrar is not yet persuaded of the trademark’s identity.
Accepted and advertised: At this point, the Trademark Registrar has approved the trademark’s nature and has granted permission for it to be registered in the Trademark Journal since it is sufficiently distinctive to be identified as a trademark.
Opposed: The general public has three to four months after it is advertised and published in the Trademark Journal to respond with any opposition to the trademark. Any such opposition submitted after the designated time will not be taken into account. The status of the trademark, however, will appear “Opposed” in trademark registration where there is resistance from a third party.
Withdrawn: The applicant may decide to contest the objection once the trademark status is “Opposed.” The trademark application may be voluntarily withdrawn if the applicant decides not to pursue the matter further. “Withdrawn” will be the trademark’s status.
Registered: The Trademarks Registry issues a certificate of registration to the applicant in relation to his or her application when the trademark application has passed all stages of examination and the “Accepted and Advertised” stage. The status is also updated at the same time on the website.
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How to file reply to a trademark objection?
After filing of Application for trademark registration, Registrar of Trademark may raise an objection under section 9 and/or section 11 of the Trade Mark Act. The article explores what steps need to be taken in case a trademark is objected.
An objection is one of the initial stages in the registration process. It can be filed by either the Examiner/Registrar. An Examiner/ Registrar may file an objection under Section(s) 9 (Absolute Grounds of Refusal) and 11 (Relative Grounds of Refusal) of the Act on primarily two grounds –
Objection under Section 9 relates to generic name or the mark is a common name related to trade, good/services, cannot be distinguished with goods/services of others.
Objection under Section 11 relates to the similar / same trademarks/names registered and/or under the registration with Registrar of trademark.
Applicant need to file reply to the objection within 30 days from the date of objection raised.
If the objection is raised under section 9 then the broadly reply should be based upon the facts and circumstances under which applicant has adopted the said trademark. In the reply applicant should also mention since when he is using the said trademark. Further, applicant should also clearly mention how the trademark applied by the applicant is not a
generic name or the mark is a common name related to trade, good/services, can be distinguished with goods/services of others.
If the objection is raised under section 11 then the reply should be based upon the facts and circumstances under which applicant has adopted / created the said trademark. He should also specify the facts which can prove how cited marks are different from the applicant’s mark. In the reply applicant should also mention since when he is using the said trademark.
After filing of reply the registrar of trademarks will evaluate the reply and thereafter either he will accept and advertise the application in journal or he will fix the application for show cause hearing.
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What is Trademark Opposition, Procedure for Trademark Opposition in India
Any trademark can be opposed after the same is accepted and advertised by the Registrar of Trademarks within 4 months of its advertisement in trademark journal.
Any person can file an opposition for registration of the trademark published in the Trademark Journal. The opposition is to be filed to the Registry of Trademarks, where the trademark registration application is filed. When the trademark registry receives any kind of opposition to the trademark, it will conduct a hearing to decide the matter.
The Trademark Act, 1999 and the Trade Marks Rules, 2017 provides the process of trademark opposition.
Initiation of Trademark Opposition
Section 21 of the Trademarks Act, 1999, provides that any person/ companies /individuals/trusts/partnership firm can file a notice of opposition to the Registrar. Thus, any aggrieved third party can raise opposition to trademark registration.
Grounds for Trademark Opposition
The grounds on which a person can file opposition for trademark registration are:
- The trademark is identical or similar to an already existing registered trademark.
- The trademark is descriptive in nature.
- The trademark is devoid of distinctive character.
- The trademark is customary in the present language or the established practices of business.
- The application for trademark registration is made with bad faith.
- The mark is prevented by law or contrary to the law.
- The trademark is likely to cause confusion or deceive the public.
- The trademark contains matters likely to hurt the religious feelings of any section or class of people.
Trademark Opposition Process
The process of trademark opposition are as follows:
First Step : Issuing / filing Notice of Trademark Opposition
Any person can file for trademark opposition to the Registrar within 4 months from the date of advertisement of the registration application in the trademark journal by giving a notice in Form TM-O and payment of Govt fees of Rs. 2700/-.
The notice should contain the application (trademark registration application) details, opposing party details and grounds of opposition. The Registrar should serve the copy of the notice of opposition to the applicant (person who filed the trademark registration application).
Counterstatement for Notice of Trademark Opposition
The applicant must file his/her counterstatement to the notice of opposition to the Registrar in Form TM-O within 2 months of receiving the copy of the notice of opposition stating his/her facts alongwith govt fee of Rs. 2700/-. The Registrar will serve the copy of the counterstatement to the opposing party.
Suppose the applicant does not file the counter statement within 2 months of receiving the notice of opposition, the Registrar will consider that the trademark registration application is abandoned and thus will not proceed to register the trademark.
Evidence For and Against Trademark Opposition
Evidence under Rule 45 by the Opponent
The opposing party shall provide evidence supporting his/her notice of opposition to the Registrar within 2 months of getting the copy of the counterstatement filed by the applicant. The opposing party should also send all copies of the evidence to the applicant and original copy of the evidence affidavit and exhibits to the Registrar of Trademarks. There is no Govt fee payable for filing evidence under Rule 45.
Evidence under Rule 46 by the Applicant
Upon receiving the copy of evidence from the opposing party, the applicant should file his/her evidence in support of the trademark registration application within 2 months. The applicant must send his/her evidence to both the Registrar and the opposing party. There is no Govt Fee payable in support of this evidence.
Evidence under Rule 47 by the Opponent
The opposing party can file further evidence within 2 month of receiving the evidence copies of the applicant. The opposing party must submit further evidence to both the Registrar and the applicant.
Hearing and Decision Concerning Trademark Opposition
The Registrar, after the receipt of evidence by both parties and further evidence of the opposing party, will give notice to both parties of the first date of hearing. If the opposing party is not present on the hearing date, the opposition will be dismissed, and the Registrar will register the trademark.
If the applicant is not present on the hearing date, the registration application will be treated as abandoned and dismissed. The Registrar will consider the written arguments submitted by both parties to the proceeding.
After hearing both parties and considering the evidence submitted by them, the Registrar will decide whether to proceed with the trademark registration or reject the trademark registration application. The decision of the Registrar will be communicated to both parties in writing at the address provided by them.
Conclusion of the Trademark Opposition Process
When the Registrar decides in favour of the applicant, the trademark will be registered and will issue the trademark registration certificate. When the Registrar decides in favour of the opposing party, then the trademark registration application will be rejected.
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Filing of Rectification and its process
Rectification is a process through which one can challenge the registered trademark. When any aggrieved person initiates rectification following is the process to be followed.
Step-1: The aggrieved party needs to file for rectification against the registered application/proprietor of the trademark. In the rectification, aggrieved party needs to mention the reasons for rectification with it then submit the same to the Registrar along with the prescribed fees i.e. Rs. 2700.
Step-2:The Registrar will send the notice to the trademark holder for the same and ask to file a counter statement against the rectification filed by the aggrieved. Registered owner of the trademark has to filed counter statement alongwith govt Fee of Rs. 2700.
Step-3: Both parties have to file evidence affidavits under rules 45, 46 and 47 with their relevant evidence documents to prove their case.
Step-4: After submission of the documents by both the parties, the Registrar or the Appellant Board verifies it and hears the parties accordingly. Later, at its discretion, the decision could be to rectify, add, remove or cancel the trademark.
Consequences of Trademark Rectification on Trademark
Immediately after filing the rectification, the status of impugned trademark will be shown as Rectification Filed. A registered trademark can be removed by an application filed by an aggrieved person although the due process and related evidence are taken into consideration before concluding any fact regarding the trademark. Any trademark which is not being used for 5 years or where the trademark registered has no honest utilization in the market for three years or above would be liable for removable from the Trademark Register. It is also observed as any trademark which is registered shall be used accordingly and maintains its image in the market. The absence of all the above-mentioned elements would result in the cancellation of the Trademark or elimination for a few years.
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Trademarks are special unique signs that are used to identify goods or services of a certain company. They can be designs, pictures, signs or even expressions. It is important because it differentiates your products from the competitions. It can be associated with your brand or product. Trademarks are classified as intellectual property and therefore is protected from infringement. Trademarks and its rights are protected by the Trademark Act.
To get the protection of trademark rights one has to register the trademark. It is important to register your trademark because it prevents others from copying your mark and misrepresenting other products with your mark. Trademarks help the customers to recognise the brand and the brand value in one look such as the logo of a tick sign for Nike or a jumping wildcat for Puma etc.
Unlike patents, trademark does not have a definite limitation period. Where a patent expires in 20 years a trademark registration expires after 10 years of its registration, but unlike patents, a trademark can be renewed again for another 10 years. This process can be indefinitely done, meaning as long as you keep renewing the trademark it will not expire and will continue to be under the protection of the Act.
1. Trademarking a Brand Name
By trademarking your company’s name, you are protecting the brand, its reputation, and your ideas, all of which you undoubtedly invested a great deal of blood, sweat, and tear working on. And while the procedure for trademark registration itself will take time in all areas considered, nothing would be worse than not protecting your brand and potentially be faced with an infringement lawsuit from a larger company.
The process of brand trademark registration in India is now possible and convenient through the trademark registration IP India portal and you can trademark any one of the below things or even a combination of the following:
– Letter
– Word
– Number
– Phrase
– Graphics
– Logo
– Sound Mark
– Smell or a mix of colors2. Trademark Registry
The trademark registry was established in 1940 then came the Trademark Act which was passed in 1999. Currently, the trademark registry works as the operation or functional body of the Act. As a functioning body, the trademark registry implements all the rules and regulation of the trademark law in India.
The Head Office of the trademark registry is in Mumbai, and it has branch offices in Delhi, Ahmedabad, Chennai and Kolkata. A trademark is registered under the Trademark Act, 1999 and then entered into the Trademark Registry. In this process, the registry will check whether the registering mark meets all the conditions of the Act before registering it.
3. Who Can Apply For a Trademark?
The trademark owner can apply for trademark registration. In the Trademark Registration form, the person whose name is mentioned as the applicant will be declared as the owner of the trademark once the trademark is successfully registered. Any individual, a company and an LLP can be an applicant and may file the application for the registration of the particular trademark.
4. How to Register a Trademark?
Registration of Trademark is done by the Registrar Office of Trade Marks. When you plan on registering a trademark there are a few steps involved.
Choosing a trademark:
Remember to choose a unique and distinctive mark which will represent your company. The other important point is identifying which class you belong to. Currently, there are 45 classes of goods and services under which the trademark can be registered. Classes 1-34 are for goods and classes 35-45 are for service.
Mark search:
Once you have chosen your mark it is advisable to conduct a trademark search to check whether your chosen mark is similar to an already registered mark. You can either do this yourself by going to the online website of the Controller General of Patents, Designs and Trademarks. On the website, you can find an option to do a public search. Once you click on this option you need to choose your class and search the online database.
The other option is to get legal services, although you will have to pay for it is the safer option. Overall legal services will cost lesser in case your trademark is objected against. Not only will they do the search, they will also help you with the whole process.
Filing application:
You can file one application for multiple classes or series trademark, or collective trademark. For this, you have to fill in form TM-A . This form allows you to register the trademark beyond one class. Filing of this form has two separate cost brackets:
Rupees 9,000 (online)
If you are not a start-up, small enterprise or an individual you will fall under this bracket. You have to pay rupees 9,000 for e-filing of the from or Rupees 10,000 if you file the form in person with the Office of Trade Marks.
Rupees 4,500 (online)
If you are an individual, small enterprise or a start-up then you fall under this bracket. Rupees 4,500 is the charge for e-filing of the form or Rupees 5,000 if you file the form physically.
While filling the form make sure not to make any mistakes, this may lead to delays or even rejection of the application. You have to fill in all the details and also add a picture of the trademark with the dimensions of 9 by 5 cms. You may be required to attach five duplicates of the same. The full file must be then submitted with two duplicates when filing.
You can file it online or by yourself or by an agent, whichever is convenient for you. Confirmation of filing will be done immediately if done online, if done physically it may take up to 15-20 days. Cleartax experts will help you with filing a trademark application and ease the process for you. Click here to know more.
5. Online Trademark Registration Procedure
Step 1: Surf internet for a brand name that is “wacky-enough”
This is simply a short and best way for any newcomer to get a catchy, trendy, and an interesting brand name. Picking up a brand name that is wacky and quirky is definitely a wise move since most of the generic names would already be in someone’s hands. Moreover, zeroing in on a particular name requires a quick research process to ensure yourself that you are not picking a brand name that is already in use. The best part here is that you can invent or coin some words with a mix of generic words to create a unique brand name for yourself.
Step 2: Preparing a trademark application
The following supporting documents together with the application have to be submitted for online trademark registration:-
– Business Registration Proof: On the basis of your registered business (for eg: sole proprietorship and so on), an identity proof of the company’s directors and an address proof have to be submitted. In case of sole proprietorship business, ID proof of the proprietor viz. PAN card or Aadhaar card could be submitted. Whereas, in the case of companies, the address proof of the company needs to be submitted.
– Soft copy of the trademark.
– The proof of claim (which is applicable) of the proposed mark can be used in another country.
– Power of attorney to be signed by the applicant.
Step 3: Filing the application of brand name registration
Manual Filing and e-Filing are the two different ways for filing the trademark registration application (form TM-A). If you choose ‘manual filing’ then you have to personally move and handover your application for the registration to the Registrar Office of Trade Marks situated in the major cities of India like Delhi, Mumbai, Kolkata, Ahmedabad, and Chennai. After that, you have to wait for at least 15 -20 days to receive the receipt of the acknowledgment.
But in the case of an e-filing system, you will receive your receipt of acknowledgment instantly on the government website. Once after receiving your acknowledgment, you are eligible to use your TradeMark (TM) symbol beside your brand name!
Step 4: Examining the process of the brand name application
Once the application is dispatched, the Registrar of Trademark will check out whether you have followed certain terms and that your brand name complies with, the existing law. Moreover, there should not be any similarity or identical with any existing or pending brands for the registration. This is the reason why we preferred you to choose a quirky brand name!
Step 5: Publication of your brand in the Indian Trade Mark Journals
After the process of examination, the Registrar of Trademark will publish your brand name in the Indian trademark journal. This is certainly the most important part of the trademark registration and there should not be any opposition within 4 months from the date of publication. When there is no opposition, the Registrar of Trademark will proceed towards issuance of Trademark Registration Certificate.
Step 6: Trademark Opposition
If there is any opposition by a third party within 4 months of the trademark publication in the trademarks journal, the Registrar of Trademarks will give you a copy of the notice of the opposition. You need to reply to the opposition notice by filing a counter-statement within 2 months of the receipt of the opposition notice. If you do not submit the counter statement within 2 months, the trademark application will be considered to have been abandoned and rejected.
However, if there is no opposition within 4 months, this step will not apply to you, and your brand name is proceeding towards acceptance for the issuance of Trademark Registration Certificate.
Step 7: Hearing on Trademark Opposition
This step will not apply to you, if there is no trademark opposition.
However, if your trademark is opposed by a third party and you send your counter-statement within 2 months, the Registrar of Trademarks will send your copy of the counter-statement to the third party opposing trademark registration.
Evidence must be submitted by you and the third party in support of your case. The Registrar will give you and the third party an opportunity of hearing after submission of evidence. After hearing both the parties and considering the evidence, the Registrar will pass an order of acceptance or rejection of the trademark application. If the Registrar of Trademark accepts your trademark application, then he will process to issue registration.
Step 8: The trademark registration certificate issuance
The Registrar will accept your trademark application if there’s no opposition being raised within the stipulated period of 4 months or on acceptance of your trademark application after trademark opposition hearing. Wow! And this will be the happiest moment for you as the Registrar issues the Registration Certificate with the Trademark Registry seal.
Right from the moment you have been issued with your certificate, you can use the registered trademark symbol (®) beside your brand name.
6. Status of application
Once you have received the confirmation of the filing of the application you will get an allotment number. You can check the progress of the application online with this allotment number. This will take time, if there is no problem with the filing then you will get to know whether your application is approved or rejected in 18-24 months. If there is a problem then this may take longer.
Files are prioritised according to the filing date, therefore the longer it takes the more priority your application gets. The other perk about filing the application is that even if it hasn’t been approved you can use the TM symbol next to your mark, once you have received your allotment number.
7. Registration
Once your trademark is approved the registry will give you a Trademark Registration Certificate. This will officially confirm that your trademark has been registered and is now protected. The registration will be valid for 10 years from the date of the filing of the application. Trademark registration can be renewed after this period. Renewal can be done indefinitely.
Please Note: A registered trademark is only protected and valid in India and does not warrant any international status or protection.
8. Trademark Registration Fees
Trademark Registration Fees for Individuals / MSME / Start ups – Rs.4500 (online)
Trademark Registration Fees for Companies – Rs. 9000 (online)
9. Top 8 Things You Need to Know Regarding Trademark Registration
A trademark can be one of your company’s most valuable assets. It is a form of identification and contributes significantly towards building the company’s public image. A trademark is a visual symbol – a word, name, numbers, label, logo, a combination of colours etc. It is a mark of uniqueness and helps the customers identify a particular brand or company.
The Trademark Act, 1999, governs the laws related to trademarks and their registration.The trademarks in India are registered by the Controller General of Patents, Designs and Trademarks, (Office of the Registrar of Trademarks), Ministry of Industry and Commerce, Government of India.
Take a look at the top 8 things you need to know about trademark registration:
1. Visual Representation
The types of trademarks you can get registered are quite varied. Here are a few types:-
– Word Marks
– Service Marks
– Logos and Symbols
– Shape of Goods
– Series Marks
– Collective Trademarks
– Certification Mark
– Geographical Indicators
– Pattern Marks
– Sound Marks
– Colour Marks
– Three Dimensional Marks2. Intangible Asset
Consider the fact that your business builds a reputed name and turns out a successful brand. A trademark, being a type of intellectual property, brings heaps of benefits to the company. Once a trademark is registered, it becomes an intangible asset that can be traded, franchised, commercially contracted and distributed.
3. Protection Against Infringement and Other Legal Protection
The owner of a registered trademark can exercise his legal rights in case there is any infringement with regard to the owner’s logo, brand, a slogan that has an active trademark against it. The owner has the right to sue any third party that uses the trademark without the prior permission of the owner of the trademark.
4. Trademark Search
A trademark search is usually carried out to check if a particular trademark already exists. The search can be conducted through the government’s Indian Trademark Registry database or a third-party service provider website.
5. Class Selection
The goods and services here are classified into 45 different sectors. Each sector is referred to as a class. Every logo or brand name is to be registered under the appropriate class at the time of application. Out of the 45 different classes, 34 of those classes comprise of product classes, and the remaining 11 are for service.
6. Voluntary, not Compulsory Registration
The registration of a trademark is done on a voluntary basis. However, if a trademark is registered, it holds concrete evidence that the ownership of the trademark belongs to the person who has taken the effort to register it. All legal decisions will be in favour of the party that had the trademark registered.
7. Validity
A registered trademark has a period of validity that stretches up to 10 years before it has to be renewed again. However, the renewal process may be initiated only within one year before the expiry of the registered trademark. If one fails to do so, the trademark will be removed. Even on removal, the trademark can be reinstated through what is known as restoration of the trademark in the prescribed form.
8. Trademark Symbols
Trade Mark (TM) and Service Mark (SM)
This symbolises that the trademark has not yet been registered, but an application for the same is pending. It is put up to warn third parties lest they infringe upon the same. There is no specific legal significance as such because the application has not yet been approved by the authorities.
R (®) Symbol
On the approval of the trademark application, you, as the proud owner of the newly registered trademark, are empowered to display the ® symbol next to the trademark. This symbolises that the trademark is officially registered, that infringement of any kind by a third party will be punishable by law.
It is not mandatory to display the ® symbol. However, it protects the owner of the trademark in a way that, should anyone rip-off the actual product, on suing the third party for infringement, he has a right to recover all the profits that were lost. This is because the court requires the owner to prove that the infringer was aware of the fact that the trademark was registered and yet went ahead to use it without any prior permission.
C (©) Symbol
The © symbol is generally used to signify copyright that the owner has over some creative work. This includes:
– Artwork- Photography
– Videography
– Literary Works
– SoftwareThe © symbol is valid for a lifetime. The symbol is used with the copyright holder’s name and the year of the first publication in the country where the work was copyrighted. All in all, there is a lot that one must be aware of when it comes to trademarks and their registration. The process, in itself, is quite tricky, which is why the applicant must carry out proper research concerning the same. Therefore, registering your trademark has benefits aplenty provided it is done with due care.
10. Benefits of Trademark Registration in India
Trademark is a unique symbol or sign which may be a label or numeral or combination of colours for identification of your goods or services. You can obtain a trademark registration under the Trademarks Act, 1999.
Trademark enables you and a third party to distinguish your products and services from those belonging to your competitor. However, it would be helpful to keep in mind that geographical names, common names, common trade words and common abbreviation cannot be registered as a trademark.
Apart from being unique, a Trademark should be easy to use, make your products marketable and create brand recognition for your products. Trademark registration has several advantages and benefits to the owner:
Legal protection: Upon trademark registration, Trademarks are classified as intellectual property and are therefore protected from infringement. Trademark registration also confers an exclusive right to the use of the trademark in relation to the “Class” of goods or service it represents. Once you have filed the trademark application, the Symbol “TM” can be used with your products. The symbol “R” can be put into use only after you have obtained registration of your trademark. Further, you can use the ® symbol only for the goods and/or services listed in the registration certificate.In the case of unauthorised use of a registered trademark, you can seek relief for infringement in appropriate courts in the country.
Product differentiation: Trademark registrations are distinct to the goods or services they represent. Trademark will enable differentiation of your product as against the products of your competitors. Also, since trademark registration will be valid for the entire class of goods or services so represented, it will help in distinctly identifying your products. Customers uniquely identify products carrying different trademark, thus creating a customer base for your product.
Brand recognition: Customers associate a product’s performance, quality, features, and so on with the company making such products. They identify the product generally by the logo, which would be a registered trademark. Trademark registration facilitates brand recognition for your goods and services. It also creates goodwill associated with the brand. Thus, your brand is recognised as well as carries a market value over time. Brand recognition welcomes new customers while retaining loyal customers.
Creation of an asset: Trademark registration creates an asset for a business enterprise. Trademark is recognised as an intangible asset for accounting and income tax purposes. Trademarks are intellectual property and carry a value associated with the products they represent. Trademarks can be sold, franchised, assigned or commercially exploited in any other manner. You can recognise the value or cost associated with trademarks in the books of accounts, and also claim a deduction for depreciation and recognise income from the same.
Business valuation and goodwill: Trademarks registered and associated with your products enhance your overall business value, goodwill and net worth in the industry. Your trademark communicates your quality assurance, distinct features of your products and your organisation’s mission. Trademarks contribute to the growth of your business. They help retain loyal customers and protect the goodwill of your business.
Trademark recognition: Trademark registered in India is valid for 10 years from the date of filing of an application. However, the trademark can be further renewed. In a case where you want to use your trademark outside India or expand your business outside India, you need approval or trademark registration in the respective countries. In such cases, your trademark registration and business in India acts as a base to obtain registrations outside India.
Business expansion: A trademark establishes a connection between the customers and the products of an enterprise. With efficient or unique products, you can create a customer base. Your trademark helps you in retaining and expanding the customer base. Registration of your trademark confers exclusive rights of use for 10 years and protects your business revenues. Business enterprises can leverage the benefits of a customer base by introsducing new products and expanding their business.
11. Frequently Asked Questions
Can foreign applicants also apply for the registration of their trademarks in India?
Under the Madrid Protocol ( the Madrid Agreement Concerning the International Registration of Marks dated 1891 which entered into force on December 1, 1995, and came into operation on April 1, 1996), an international trademark application may be filed through the trademark office of the applicant. This trademark office is also known as the Office of Origin. The Office of Origin receives the application and then forwards it to the WIPO.
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IMPORTANCE AND BENEFITS OF TRADEMARK REGISTRATION AND HOW TO CONDUCT TRADEMARK SEARCH AND LEGAL REMEDY IN CASE OF VIOLATION OF TRADEMARK
Trademark is a unique name, word, phrase, symbol, logo, or combination of these, used by businesses/service provider to identify and distinguish their products or services from those of others. In India, the legal definition of a trademark is governed by the Trade Marks Act, 1999. Trademarks are important for businesses because they help to establish brand recognition and loyalty among customers. They also serve as a means of protecting a business’s intellectual property by preventing others from using a similar mark that could cause confusion among consumers. In India, registering a trademark provides legal protection to the owner of the mark, allowing them to take legal action against anyone who infringes on their rights. It also gives the owner exclusive rights to use the trademark in connection with their products or services, which can help to prevent others from using the same or similar mark. Overall, having a registered trademark in India can provide businesses with a number of benefits, including protecting their brand and reputation, preventing confusion among consumers, and establishing a legal basis for enforcement against infringing parties. Registering your trademark in India can provide numerous benefits for your business. Here are some of the key benefits of registering your trademark :
1. Legal Protection: Registering your trademark provides legal protection to your brand and prevents others from using the same or similar mark. If someone else tries to use your trademark without your permission, you can take legal action against them.
2. Exclusive Use: Registering your trademark gives you the exclusive right to use your mark in connection with your products or services. This can prevent others from using your mark and diluting its value.
3. Brand Recognition: A registered trademark can help build brand recognition and awareness among consumers. It can also differentiate your products or services from those of your competitors.
4. Increased Value: A registered trademark can add value to your business, as it is considered an intangible asset. This can be useful if you plan to sell your business in the future.
5. International Protection: If you plan to expand your business internationally, registering your trademark in India can help protect your brand in other countries through international treaties and agreements.
6. Deterrent Effect: A registered trademark can deter others from infringing on your mark, as they know that you have legal protection and can take action against them.
Conducting a trademark search is an important step before applying for a trademark registration in India. Here’s how to conduct a trademark search in India:
1. Visit the Trademark Registry website: The first step is to visit the official website of the Trademark Registry of India.
2. Conduct a basic search: Conduct a basic search using the Trademark Registry’s online search engine to determine if a similar mark has already been registered or applied for. This will help you to determine if your proposed trademark is available for registration.
3. Conduct an advanced search: If your initial search does not yield any results, you can conduct an advanced search using the Trademark Registry’s online search engine. This search will provide more detailed results and will include marks that are phonetically or visually similar to your proposed trademark.
4. Hire a professional: If you are not confident in conducting the search yourself, you can hire a professional trademark attorney or agent to conduct the search on your behalf. They will have access to more advanced search tools and will be able to provide you with a comprehensive search report.
5. Analyze the search results: Once you have conducted your search, analyze the results to determine if your proposed trademark is available for registration. If there are no conflicting marks, you can proceed with filing a trademark application in India.
Trademark infringement occurs when someone uses a registered trademark without the permission of the owner, or in a way that is likely to cause confusion among consumers. Here’s what you need to know about trademark infringement in India:
1. Legal Action: If your trademark has been infringed upon, you can take legal action against the infringing party in India. You can file a suit for infringement in a court of law, seeking an injunction against the infringing party, damages, and costs.
2. Proof of Infringement: In order to prove infringement, you will need to show that the infringing mark is similar to your registered trademark, and that it is being used in connection with similar goods or services.
3. Remedies: If infringement is proven, remedies can include an injunction to stop the infringing use of the trademark, damages for any losses suffered, and costs incurred in bringing the legal action.
4. Criminal Action: In some cases, trademark infringement can be a criminal offense in India, punishable by imprisonment and/or fines. 5. International Protection: If your trademark is registered internationally, you can seek protection in India through international treaties and agreements. Failing to protect your trademark in India can result in significant risks for your business.
Here are some of the key risks of not protecting your trademark:
1. Loss of Brand Identity: If you do not protect your trademark, others may use it without your permission, which can result in confusion among consumers and a loss of brand identity.
2. Dilution of Brand Value: If your trademark is used by others without your permission, it can lead to dilution of your brand value, as the mark becomes less distinctive and recognizable.
3. Loss of Customers: Confusion among customers due to the use of a similar mark can result in loss of customers and ultimately, loss of business.
4. Legal Issues: If you do not protect your trademark, you may be vulnerable to legal issues such as infringement or passing off, which can be costly to resolve and damage your reputation.
5. Difficulty Expanding Internationally: If you plan to expand your business internationally, not protecting your trademark can make it difficult to protect your brand in other countries.
6. Loss of Intellectual Property Rights: Failure to protect your trademark can result in the loss of your intellectual property rights, which can be a valuable asset for your business.
Trademark disputes can arise when two parties claim the right to use a similar or identical trademark. Here’s how to resolve trademark disputes in India:
1. Negotiation: The first step in resolving a trademark dispute is to attempt to negotiate a settlement between the parties. This can involve a discussion between the parties or the use of a mediator to facilitate the negotiation.
2. Filing a Lawsuit: If negotiation and a cease and desist letter do not resolve the dispute, the owner of the trademark can file a lawsuit against the infringing party. This can result in an injunction to stop the infringing use of the trademark, damages for any losses suffered, and costs incurred in bringing the legal action.
3. Alternative Dispute Resolution: Parties can also opt for alternative dispute resolution methods like arbitration or mediation to resolve the trademark disputes.
4. Cancel or rectify the registered trademark: In case of a dispute over a registered trademark, a party may apply for the rectification or cancelation of the registered trademark of the opponent.
5. International Protection: If the dispute involves an international trademark, the parties can seek resolution through international treaties and agreements.
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