How to get Trademarks Registered and Why to Register
The Indian Trademarks Act, 1999 defines a trade mark as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.” A mark can include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any such combinations. In simpler words, a trademark is a mark which helps your customer identify and relate to your goods or services.
The law relating to trademarks in India is governed by the Indian Trademarks Act, 1999 which replaced the Trade and Merchandise Act 1958 to honor India’s commitment to TRIPS. TRIPS is an international agreement entered into by the members of World Trade Organisation in the year 1994.
The following is the procedure one needs to undergo to register their trade mark with the Registrar of Trademarks.
1st Step: Search
Firstly, the availability of a particular trade name or brand name shall be checked by moving a search application. However, no search is exhaustive or complete in nature. We will come across only those names, which are closely similar to the proposed trademarks.
An application in Form TM-54 shall be made to the registrar. The result of the search shall be communicated within 30 working days.
2nd Step: Application in TM-1
After the completion of search an application in form TM-1 shall be made for the registration of the trademark or the service mark.
Once the Application is filed, within 60-90 days, an additional representation along with the authority seal and tm no. will be received.
3rd Step: Examination Stage
Once the additional representation is received, within 90 days an examination report will be received. In this report, it will be informed whether the particular trademark is similar or identical to other registered trademarks. The registry has certain absolute grounds to refuse registrations for instance if the mark is obscene or scandalous, or if the mark would hurt the religious sentiments of certain class of people etc. There are also relative grounds for refusal such as the mark is identical or similar to an existing trademark or it violates an existing copyright, or the mark is an attempt of passing off etc. A suitable reply shall be given for the same if any objections are raised in the examination report within a period of 30 days from the date of receipt
After the examination report, the application shall go through the following stages before registration:
- Enquiry or hearing by the Registrar
- Advertisement in the trademark journal for a period of 90 days
- Opposition (if any)
The registration of a trademark is valid for a period of ten years from the date of application after which it needs to be renewed by payment of renewal fees. Renewal of trademark can be done for an indefinite number of times.
However, if the registry refuses the application or anybody raises an opposition to registration, the applicant and the opposer if any are given opportunity to present their case and then a decision is taken as to registration of the mark by the Registrar of Trademarks. An appeal from such proceedings lies with the Intellectual Property Appellate Board.
In India, it is not mandatory to register a trademark. It is left to the choice of the owner of such trademark to register it or not. Nevertheless, it is advisable to register your trademark to protect the goodwill you have earned with the said trademark.
When it comes to any product or service, customers relate to the mark and only the mark as in many cases they do not know the team that works behind the said mark to give them the products. A trademark serves as a link between the product owner/ service provider and the end user/customer. A trademark recognizes the goods and its origin and guarantees its unchanged quality in the products/services. The trademark helps the owner of a business convey to his/her customers the uniqueness and distinctiveness of their products/services.
This being the case, the customer may easily be deceived by a similar or identical looking product which has a similar trademark on it.
In such a situation, if a person has a registered trademark, he may file a suit of infringement and restrain the deceptive party from further using his trademark. On the other hand, if the mark has not been registered, it does not mean the law does not offer protection to the genuine mark owner. It protects the interests of the owner of the mark in the form of passing off. The owner of an unregistered trademark needs to file a suit claiming that the other person has tried to pass off his goods using the unregistered trademark. However, for a passing off suit, the owner of the mark needs to show misrepresentation done by the other person and the damage done to his goodwill or business. In case of a passing off, the defendant will have many opportunities to escape liability such as if he is able to prove he has taken sufficient steps to differentiate his mark from the original mark and he has taken steps to establish details about the origin of his product. While in an infringement suit for a registered trademark, the owner of a registered trademark must just show that the other person has infringed on his mark. There is no further need to prove damage incurred by him.
Registration of a trademark gives you exclusive rights to the said mark and can ensure protection from competitors who attempt to steal your hard-earned reputation with the said mark. Also, in case of expansion within the country or abroad, a registered trademark makes the process easier. It is simpler to carry the goodwill already created in your current territory to a fresh territory rather than starting from scratch.
In conclusion, I would suggest that any business that has a trademark related to its goods or services should register the same as it is the identity of the business.
- Indian Trade Marks Act, 1999