TradeMark Registration in India

A trademark is a word, sign, design, symbol, or combination thereof that identifies a specific product. A trademark registration in India is something that differentiates a product or service from all others of its kind and helps consumers differentiate the goods or services associated with a specific brand. Like Amazon brand registry India.

 

Process of trademark registration in India: 

(1) Trademark Search:

For trademark registration in India, the primary purpose of the trademark is to differentiate your goods or services from others, offering consumers a unique identity to associate with your brand, so it should be ensured that your desired trademark is unique and does not conflict with existing trademarks. This can be done through the official website of intellectual property in India.

 

(2) Filing of a Trademark Application:

After the completion of the trademark registration in India search, the process of filing the application for registration starts. The application must be filed in Form TM-A online from IP India’s official website.

 

(3) Examination:

After filing the trade mark registration in India application, the applicant will be examined by the registrar, who will prepare an examination report in writing and send a copy of the report to the applicant within 30 days from the date of receipt of the application in form TM-A to know whether the registrar wants to reject or accept the application and shall also include the reason by which he came to such a decision.

The applicant must file a reply, stating all the defenses along with evidence against the objection raised by the trademark office, within 30 days from the date of receipt of the examination report. If the applicant fails to reply within the above-mentioned period, the application will be abandoned.

 

(4) Publication:

Upon approval by the trademark officer, your trademark gets published in the official trademark journal. This publication serves as a public notice and provides an opportunity for the public to file an opposition to the trademark registration in India if they have a reason to believe that the mark infringes on their rights.

 

(5) Opposition proceedings for trademark registration in India:

During the 4-month opposition period, any party with valid grounds can file a notice of opposition against the trademark registration in India with the trademark officer. If an opposition is filed, the Trademark Registry will conduct proceedings to resolve the dispute between the parties.

 

(6) Trademark Registration in India Certificate Issuance:

If no opposition is filed within the period of 4 months or if the opposition proceedings are resolved in favor of the applicant, the trademark is registered. The registrar shall issue a certificate of trademark registration in India, granting exclusive rights to the trademark owner for the specified goods or services.

 

(7) Trademark Renewal:

In India, a registered trademark is valid for ten years from the date of application. After the expiration of 10 years, you need to renew the trademark registration in India by paying a renewal fee.

 

Documents for trademark registration in India?

The following documents are required for trademark registration in India:

Applicant Details:

• Name, address, and nationality of the applicant.
• If the applicant is a company, partnership, or other legal entity, provide details such as the CIN number, registration number, address, and type of entity.

 

Trademark Details:

• A clear representation of the trademark to be registered (logo, wordmark, or combination thereof).
• Description of the goods or services for which the trademark will be used, and also mentioned the class of goods or services.

 

Power of Attorney:

A power of attorney (POA) authorizes a trademark agent or trademark attorney to file trademark India application on behalf of the applicant.

 

Trademark Usage Proof:

If the trademark has been used before the date of filing the application, provide evidence of such use, e.g., invoices, marketing materials, and product packaging, to establish prior use.

 

Declaration of Trademark Ownership:

A declaration of ownership of the trademark signed by the applicant confirms that they are the rightful owner of the trademark.

Identity Proof:

Identity proof of the applicant, such as an Aadhar card, voter ID card, or driver’s license.

Address Proof:

Address proof of the applicant, such as electricity bills, bank statements, or a rent agreement.

Partnership Deed:

If the applicant is a partnership firm, provide a copy of the partnership deed.

Incorporation Certificate:

If the applicant is a company, provide a copy of the certificate of incorporation (CIN number), which is issued by Register trademark India.

 

What’s the difference between TM and R trademark registration in India?

In India, “TM” and “R” symbols are used to denote different stages of trademark protection:

TM Symbol:

The TM symbol is used when a trademark owner files an application for trade mark registration India with the Registrar of Trademarks. The TM symbol indicates that a trademark registration in India application already exists and serves as a warning for infringers, copycats, duplicators, and counter-fitters.

 

Trademark owners use the ™ symbol after a text, logo, design, or picture that they claim is their own but that has not been legally registered with a regulatory authority. Usually, businesses will use the TM symbol to indicate their first usage or that they have applied for its registration. A trademark owner can use the TM symbol only after filling out the trademark application India with the Registrar of Trademarks.

The trademarks are classified into 45 classes, indicating the goods or services to which the mark is applied.

Classes 35–45 indicate services, and

Classes 1-34 indicate goods.

Some trademark owners use the TM symbol when a trademark application is filed under the 1-34 class, while others use the SM symbol for the trademark application filed under the 35-45 class.

 

R ® Symbol Trademark Registration in India:

The “®” symbol generally denotes a registered trademark. It shows that the trademark has been officially registered with the Trademarks Registry.

The use of the “®” symbol is reserved for trademarks that have undergone the registration process and have been approved by the Trademarks Registry. It recognizes that the trademark owner has exclusive rights to use the mark in connection with the specified class of goods or services.

As compared to the “TM” symbol, the “®” symbol provides stronger legal protection and remedies against unauthorized use, including the ability to take legal action against infringers and seek damages for infringement.

 

Merits of Trademark Registration in India:

Legal Protection: The most important benefit of trademark registration in India is that it provides legal protection. If your trademark is registered, you have the exclusive right to use it in relation to the goods or services for which it is registered. In cases of trademark infringement, you can take legal action to stop the misuse of the trademark.

 

Brand Protection: A registered trademark is an effective instrument for protecting your brand’s identity. They give your products or services a unique identity, distinguishing them from others in the market.

 

Business Growth: A registered trademark can help in the growth of a business. It can create trust and goodwill among customers and help expand the customer base. A well-known trademark can often drive more business your way.

 

Asset Creation: Trademark registration in India creates an intangible asset, i.e., intellectual property, for a company. A registered trademark is a right that can be sold, franchised, or contracted.

 

Global Trademark Registration: If you have a registered trademark in India and wish to protect it in other countries, the trademark registered in India can be used as the basis for trademark registration in other countries.

 

Consumer Trust and Loyalty: Customers feel more confident about the quality of products or services for which a trademark is registered. This trust and loyalty can lead to an increase in the customer base.

 

Effective Communication Tool: A trademark can communicate your brand message effectively. It can convey intellectual and emotional attributes and messages about you, your company, and your company’s goodwill.

 

Use of the ® symbol:

Once your trademark is registered, you can use the ® symbol, which signifies that your logo or brand is registered with the trademark registry.

Prevention of Misuse: Trademark registration in India prevents other traders from using your trademark unlawfully. No one else can use a deceptively similar trademark as yours for the goods or services for which your trademark is registered.

Infringement Protection: In cases of trademark infringement, a suit can be filed. If the trademark is registered, then the legal battle becomes easy as the registered proprietor gets the legal advantage.

 

What is trademark registration in India infringement?

Trademark infringement is an important issue in the world of business and intellectual property. It occurs when a party uses a trademark that is identical or similar to another party’s registered trademark in connection with goods or services, which may lead to consumer confusion.

 

Types of trademark infringement:

Direct Infringement: This occurs when a party uses a trademark that is identical or similar to another party’s registered trademark for similar goods or services without authorization. Direct infringement is the most straight forward type of infringement and typically involves clear copying or imitation of the trademark.

 

Examples of direct trademark infringement include:

Counterfeiting: Producing or selling counterfeit goods that bear an identical or substantially similar trademark to a registered mark, with the intention to deceive consumers.

 

Use by an unauthorized person: violation of a trademark only happens when the trademark is used by a person who is not authorized by the holder of the registered trademark owner If the mark is used with the authorization of the holder of the registered trademark, it does not constitute infringement.

 

Copying: logo, symbol, or brand name that closely resembles a registered trademark, leading to consumer confusion.

 

Parallel Imports: Importing goods bearing a trademark from another jurisdiction without the trademark owner’s consent, which is leading to confusion or dilution of the brand.

 

Indirect Infringement:

Indirect infringement means actions that indirectly result in trademark infringement, such as aiding or abetting another party’s infringement or engaging in activities that create conditions favorable to infringement. They can be more challenging to prove than direct infringement, but they may still result in liability under certain circumstances.

 

Contributory Infringement:

Contributory infringement means the provision of support or assistance to someone engaged in trademark infringement. Assistance here may entail providing goods or services to the person who is misusing the trademark. The key element for contributory infringement is knowledge, meaning that the assisting party must know or have reason to know their goods/services would be used with respect to trademark infringement

For example, supporting an infringing party can come in the form of:

Selling parts or commodities to a counterfeiter who uses them to make items that bear a trademark.

Supplying hackers with tools, that are used as software development kits (SDKs) for developing applications capable of infringing on copyrights.

 

Vicarious Infringement:

A direct financial benefit must thus be derived from such control by the vicarious infringer over the act(s) giving rise to liability under this section, and such act(s) must be unauthorized by the copyright owner. Even if one does not directly participate in an infringed activity but has power over such activities and reaps profits from them; they can still be held liable for trademark violation.

 

What are the defences against trademark infringement?

According to several authors, there are various defenses against trademark infringement, and they include the following:

Fair Use: This refers to non-commercial use cases such as news reporting, commentary, criticism, scholarship, and research, and in general is not considered an infringement of trademarks. However, it should also be noted that under certain circumstances, commercial use of another person’s trademark may still be found to infringe even where it falls within the ambit of fair use.

Lack of Confusion: The alleged infringing mark might not be considered an infringer if it is used in a way that does not confuse consumers about the source of goods or services. To utilize this defense, one must provide evidence indicating that the two marks cannot lead to any confusion since they share traits like names that look alike, are handled at almost the same places, and are mostly targeted at similar people.

Abandonment: If a company has not utilized its brand name for three consecutive years, then it can be regarded as abandoned, hence free for anyone to take up.

Genericism: With the passage of time, public usage may turn a previously strong trademark into a generic one, thereby losing its distinctiveness and becoming coterminous with the product or service itself; examples are “escalator” and “zipper,” which used to be trademarks but have now been rendered non-distinctive as a result of becoming generic.

 

Parodies:

Sometimes, using another party’s trademark in any humorous context as part of a parody could be argued to be no infringing since it is outside what was intended to be covered by the law on trademarks.

Prior Use: If you can demonstrate that your use of the trademark predates the registrant’s use, this may serve as a valid defense against claims of infringement.

Functionality Doctrine: If the allegedly infringing feature performs a useful function rather than serving only as an identification of the source for goods, then it is not protectable by trademark laws.

Descriptive Fair Use: In general, describing characteristics or features of goods or services using descriptive terms, even if they coincide with registered marks, does not constitute an infringement.

Nominative Fair Use: Nominative fair use arises when referencing trademarked product names in order to describe them accurately, make comparisons, and offer compatibility information.

 

Penalties for infringement of trademarks:

103. Penalty for applying false trademarks, trade descriptions, etc.-

Any person who

(a) falsifies any trade mark, or

(b) falsely applies to goods or services any trade mark, or

(c) makes, disposes of, or has in his possession any die, block, or machine. Plate or other instrument for the purpose of falsifying or of being used for falsifying, a trade mark, or.

(d) applies any false trade description to goods or services, or

(e) applies to any goods to which an indication of the country or place in which they were made or produced or the name and address of the manufacturer or person for whom the goods are manufactured is required to be applied under section 139, a false indication of such country, place, name or address, or

(f) tampers with, alters or effaces an indication of origin which has been applied to any goods to which it is required to be applied under section to be done,

(g) causes any of the things above-mentioned in this section to be done.

He shall, unless he proves that he acted without intent to defraud, be punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with a fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees.

Provided that the court may, for adequate and special reasons to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees.

 

Civil Remedies:

Civil remedies are also available to aggrieved persons seeking relief from trademark registration in India infringement. Courts may grant injunctions restraining further infringements, and accounting for profits derived from unauthorized activities.

 

Additional Penalties:

Apart from statutory provisions, courts retain discretion to enhance sentences based on various factors. Like the gravity of the offense, previous convictions, social impact, etc. Furthermore, customs authorities might seize.

 

Remedies against infrigeration:

In cases of trademark infringement in India, affected parties may seek various remedial measures under the Trade Marks Act, 1999. Some common remedies include:

Injunction: a court order prohibiting the infringing person from continuing the illegal activity. Such orders aim to preserve the aggrieved party’s rights. Preliminary injunctions, issued during ongoing litigation, and permanent injunctions, granted after trial completion, help stop infringing behavior immediately or permanently.

 

Damages: Compensatory damages reimburse the plaintiff for actual harm suffered due to the infringement. Punitive damages penalize egregious conduct and act as a deterrent against future misconduct. Calculating damages can prove challenging.

 

Account of Profits: Instead of claiming direct damages, the plaintiff can request accounting for profits earned by the infringing party. Here, the burden shifts to the defendant to prove legitimate expenses. Attributed to generating revenues from sales incorporating the infringed trademark registration in India. Accounting for profits ensures that wrongdoers do not profit from their illicit activities

 

Statutory Damages: To simplify calculating damages, especially where quantifying losses becomes difficult, Indian courts allow statutory damages ranging from minimum of 50,000 to maximum of to 200,000 per type of goods or service involved in the dispute. Statutory damages provide flexibility to judges when assessing suitable compensation and encourage swift resolution of trademark conflicts.

 

Delivery Up / Destruction: Infringing materials pose risks to the marketplace, necessitating removal or disposal. Delivery up refers to surrendering all infringing items to the rightful owner or destroying them under supervision. Similarly, destruction entails eradicating seized material entirely.

 

Anton Piller Order: Anton Piller Orders empower plaintiffs to search premises controlled by suspected infringers. Seize relevant documents, records, or other tangible evidence supporting their claims.

 

Summary Judgments: When clear-cut instances of trademark infringement exist, summary judgments enable quick resolutions without lengthy trials

 

Trademarks vs. Copyrights vs. Patents Trademarks, Copyrights, and Patents all Protect Different Types of Intellectual Property

Trademarks:

Protect brand names, logos, and other distinctive features that identify businesses. Ensure consistency and customer recognition.  Registered trademarks have stronger legal protection than unregistered trademarks. Never expire if properly maintained.

Patents protect new inventions or improvements, such as processes, devices, products, or materials. By offering innovators a temporary monopoly on their creations, patents encourage innovation and prevent others from copying their ideas. To get a patent, applicants must prove that their invention is original and useful. Not something that would have been obvious to someone in their field. If approved, patents last for 20 years from the filing date. They are often used to protect industrial machinery, computer software, and medical discoveries.

 

Copyrights:

Copyrights protect original works such as writings, plays, music, artwork, movies, recordings, and broadcasts. They are automatically granted upon creation without needing to register. Copyright holders have the exclusive right to copy, modify, perform, display, distribute, adapt, or sell their works. The fair use doctrine allows limited use of copyrighted works under specific conditions. Copyrights generally last for the author’s life and an additional 60 years after their death.

 

What is a trademark renewal?

Trademark renewal involves extending the lifespan of a registered trademark past its initial registration period. In India, trademarks have an initial registration duration of 10 years from the date the application was filed.

 

What is the process for trademark renewal in India?

It involves the following key steps:

Trademark renewal can be done either 6 months before its expiration date or within the 6-month grace period afterward. It is important for trademark owners to take action during this timeframe to ensure their trademarks remain valid and protected.

 

Application:

For any trademark to be renewed in India, the owner must send a renewal application to the Trademarks Registry. This application has to be completed on the given form and you must pay the appropriate renewal fee.

To renew your trade mark. You are required to pay a fee to the Trademarks Registry along with your renewal application. The amount of fee depends upon several factors, like if you are an individual or a small business, etc.

Once you file your trademark for renewal and pay the requisite fee,. The Trademark Registry ensures that it meets all legal requirements.

When your request for trademark renewal is approved,. The Trademarks Registry will issue you a renewal certificate showing that registration of your mark has been extended.

 

What are the merits of the renewal of a trademark?

Renewing trademarks has benefits for trademark owners as it guarantees continuity of intellectual property protection and value. Some advantages of renewing trademarks include:

Trademark Protection: Renewal maintains protection over their intellectual property through the validity of the registration. Further legal rights against third-party infringements.

The owner renews his trade mark in order to avoid infringing parties. They can seek legal measures, including injunctions, to prevent further infringement. Damages to compensate for any losses incurred due to unauthorized use.

 

By renewing their trademark registration in India, enterprises can maintain a competitive advantage over other businesses. This ensures consumer acceptance and brand recall, as companies are legally entitled to use it for their goods and services.

Rebranding a trade name makes it more attractive when licensing or franchising opportunities arise. For instance, once a trade mark is properly registered and protected, the owner may enter into licensing agreements. Third parties to exploit new revenue streams and extend the brand’s presence in different marketplaces.

Renewing your trademark registration in India in multiple countries will prolong its protection period in each of these outlined nations.

 

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