Trademarks

Eligibility Criteria:To qualify for trademark registration, a mark must be:

 Unique: The mark must be distinctive and uncommon in the relevant market.
 Non-descriptive: The mark must not describe or explain the goods or services it
stands for.
 Distinctive: Consumers should be able to distinguish the goods or services in the
market.
Other eligibility criteria include: Non-deceptiveness, Non-offensiveness, Non-
similarity, Availability.
Other requirements include:
 Providing the name, nationality, and address of the applicant
 Completing the application form
 Filing the application form
 Trademarks can be registered for both goods and services. The procedures for
registering trademarks are governed by national and regional IP authorities' rules
and laws.
 The most important eligibility criteria for trademark registration is distinctiveness.
A trademark must be distinctive, which means it should not be similar to any
existing trademarks. The purpose of trademark registration is to protect the unique
identity of a brand and prevent others from using it
Who Can Apply for a Trademark: In India, anyone can apply for a trademark,
including individuals, companies, charitable organizations, and proprietorship firms.
To register a trademark, you can:
 Search for trademarks
 Prepare an application with the help of a trademark attorney
 File the application
 Have the government process the application
To apply for a trademark, you can:
 Log in to the official website of trademark registration in India
 Click the Trademarks tab
 Click Public Search
Select a search criteria, such as wordmark, Vienna code, or phonetic
To register a trademark, you may need to submit the following documents:
1. Identity proofs
2. PAN card
3. Aadhar card
4. Certificate of incorporation
5. Company logo (if applicable)
6. Address proof.

Who can apply for trademark registration in India? Trademark registration is open
to individuals, companies, proprietorship firms, partnerships, LLPs, Indian and
foreign companies, trusts, and societies.
Acts and Laws:The Trademarks Act of 1999 governs trademark laws in India. The act
allows for the registration of any mark that can differentiate one person's goods or
services from another.
Here are some other things to know about trademark laws in India:
 Infringement
The Indian Trademark Act of 1999 protects against trademark infringement. This
means that trademark owners can take legal action against those who use or imitate
their trademarks without authorization.
 Opposition
Any individual or business can file a trademark opposition application to challenge
other trademarks.
 Removal
If a trademark is not renewed within the stipulated time period, it will be automatically
removed from the Register of Trademarks.
 Cancellation
Trademark cancellation involves removing the mark from the Trademark registrar's
records.
 Cybersquatting
Unlike many developed countries, India has no law that can protect domain
names. However, cybersquatting cases are resolved under the Trademarks Act 1999.
 Registration
Trademarks help customers identify brands and increase brand value. To register a
trademark with protection, one must get it registered.
Designation of Trademark Symbols:
The three most common symbols associated with trademarks are:
 TM
A little capital letter that indicates that the preceding mark is an unregistered
trademark. TM stands for marks that represent goods. If your mark covers both
goods and services, use TM.
 ℠
A little capital letter that stands for service mark. SM stands for service mark and is
used for common law trademarks that represent services. SM is often seen in
superscript.
 ®
A circled R that stands for registered trademark. ® stands for marks registered with
the USPTO.
The appropriateness of one or more of these marks depends on the nature of the
goods or services sold and the status of the trademark application with the USPTO.

Note:In summary, the trademark symbol (™) is used for unregistered or pending
trademarks, while the registered trademark symbol (®) is used specifically for
marks that have been officially registered.
Classification of Trademarks:
Trademark Class for Goods
 A finished product is classified on the basis of its purpose and function if the
product is not a part of any other class.
 Multipurpose products can be classified into multiple classes that relate to their
functions. If the functions are not mentioned in other classes, then it is
classified on the basis of the mode of transport or the raw materials.
 Raw materials or semi-finished products are classified based on the material
they are made of. If the product is made of multiple materials, it is classified on
the basis of the predominant material.
Trademark Class for Services
 Trademark class for services is classified on the basis of branches of activity, as
specified in the headings and explanatory notes.
 Rental services are classified in the same class.
 Advice or consultation-related services are classified based on the subject of the
advice, consultation, or information.
Trademark classification is a way to organize documents, such as trademark and
service mark applications, based on the description and scope of the types of
goods or services to which the marks apply.
In India, there are 45 classes of trademarks:
1–34: Products
35–45: Services
Here are some examples of trademark classes:
Class 1: Chemicals
Class 2: Paints
Class 3: Cosmetics and cleaning goods
Class 4: Lubricants and fuels
Class 5: Pharmaceuticals
Class 6: Metal items
Class 7: Machinery
Class 8: Hand tools

Other types of trademarks include:

 Normal trademark: A word, device, or any other combination
thereof
 Series mark: A type of trademark that typically has a common
syllable or number as a prefix or a suffix
 Collective trademark: A mark linked with a group of people and
not one single product or service
 Color trademark: A combination of colors that represent the
goods and services
Registration of a Trademark is Not Compulsory:
 No, registering a trademark is not compulsory in India. However, it is
advisable to do so to protect your business interests and get priority in
using a specific mark.
 Registering a trademark provides legal protection, exclusive rights, and a
strong legal foundation for your brand. It offers a legal protection against
the misuse or copying of a company's name or logo.
 It also grants the trademark owner exclusive nationwide ownership of the
mark, which can be legally upheld in courts of law.
 However, an “unregistered trademark” has no legal protections.
 Sections 34 and 35 of the Trademark Act of 1999 protect the rights of
unregistered trademarks by declaring that a prior user of a trademark has
precedence over later users.
NOTE:
No. Registration of a trademark is not compulsory. However, the registration
is the prima facie evidence of the proprietorship of the trademark under
registration. However, it is to be noted that no suit can be instituted for the
infringement of unregistered trademarks.
Validity of Trademark:
 In India, trademarks are valid for 10 years from the date of
application. Trademarks can be renewed indefinitely, every 10 years, by
paying the prescribed fee and form.
 The registrar will give a six-month window before the 10-year mark to submit
for renewal.
 Trademarks can last forever if they are used and renewed on time.
 In most countries, including the United States, Canada, and the European
Union, a trademark registration is initially valid for 10 years.
What is trademark expiry date?

The validity period of trademark in India is for a period of 10 years as per section
25 in the Trade Marks Act, 1999.
Can a trademark be renewed?

 There's no limit to the number of times you can renew your trademark. You
can and should continue to renew your registration every 10 years.
 As long as you're still using the trademark in commerce and in the ways
described in your registration.
Types of Trademark Registered in India: According to IndiaFilings, here are some types of
trademarks that can be registered in India:
Product mark, Service mark, Collective mark, Certification mark, Shape mark, Sound mark,
Pattern mark, Word mark, Device mark, Series trademark.
Other types of trademarks include:
I. Color trademark
II. Smell marks
III. Shape of goods
IV. Three dimensional trademark
 Word marks, which include one or more words, letters, numerals, or anything written in
standard character like brand name, slogan, or tagline
 Sound marks, which are used when a specific sound performs the purpose of uniquely
classifying the source of a product or a service
 The purpose of the trademark is the same, irrespective of its type.
 Registered trademarks offer greater protection and legal remedies to the owner, but the
registration process can be expensive and time-consuming.
 Unregistered trademarks are cost-effective and flexible, but offer limited protection and
legal remedies.
The different types of trademarks as provided by the Trademark Act in India are as
follows:
1) Product Mark. One of India's most substantial types of trademarks is the Product
mark. ...
2) Service Mark. ...
3) Collective Mark. ...
4) Certification Mark. ...
5) Shape Mark. ...
6) Pattern Mark. ...
7) Sound Mark.
Trademark Registry:
Documents Required
 Incorporation Certificate. If the trademark is registered under a company or LLP.
 Partnership Deed. If the trademark is registered under a partnership firm.
 PAN Card. Of the authorized signatory.
 Aadhaar Card. Of the authorized signatory.
 Form-48 Signed. ...
 Logo. ...
 MSME Certificate.
 The government fees for trademark registration is Rs. 9000 per application per class
for company. The government fees for trademark registration is Rs. 4500 per
application per class for individual.
Can I register a trademark without a company?
Yes, you can register a trademark without a company. An individual or a sole proprietor
can register a trademark for their personal name, products, or services in the same way a
company can.15 Jul 2020

Process for Trademarks Registration:The process for trademark registration in India is as

follows:
 Determine eligibility
 Search for trademarks
 File an application
 Examine the application
 Publish in the trademark journal
 Respond to opposition
 Pay fees
The trademark registration process also includes:
Examination
The registry may ask the applicant to provide proof to support the application. This may
include invoices, accounts, and proof that contains the name of the owner and brand
name.
Hearing
A trademark hearing allows the applicant to defend themselves against objections raised
by the examiner.
Inspection
If the trademark registrar discovers any similarities or other technical concerns, they will
send it to the applicant for a show cause. The applicant must file a show cause within 30
days. If it is still not sufficient, a hearing will be held to decide the merits of the application.

Prior Art Search:A prior art search is an initial step in the patent process that involves
looking for all prior arts that are relevant to a technological innovation. It is used to
determine if an invention can be patented.

Prior art is any evidence that shows an invention or technology exists before the filing
date of a patent application. This can include:
 Patents, Patent applications, Scientific articles, Technical papers, Product manuals, Public
demonstrations, Any publicly available information.
 To perform a prior art search, you can use relevant keywords and technical terms, as well
as patent classifications, related to the invention. You can then search for relevant
patents in free patent databases like Google Patents, USPTO, Espacenet, and WIPO.
Famous Case Law: Coca-Cola Company vs. Bisleri International Pvt. Ltd:

https://jlrjs.com/wp-content/uploads/2023/05/73.-Anumay-Sethi.pdf
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