Index

1. What Is A Trademark And Why Is It Important? 
2. What Are The Steps To Register For A Trademark? 
3. What Documents Are Required To Register A Trademark? 
4. What Is The Vienna Classification And How It Affects Trademark Applications ?
5. How To Respond If Your Trademark Application Receives An Objection Notice?
6. What Are The Most Common Reasons For Trademark Objections? 
7. What Is A TM-16 Form And How Do You File It? 
8. How Long Does The Trademark Registration Process Take?
9. What Is Expedited Trademark Registration? 
10. What Are The Benefits Of Expedited Trademark Registration?

What Is A Trademark And Why Is It Important? 

A trademark is a symbol, phrase, word, or design that identifies and distinguishes a company’s goods or services from others. It serves as a unique marker of identity, allowing consumers to easily recognize a brand.

Trademarks are important for several key reasons:

1. They protect a company’s brand identity and reputation. Registering a trademark prevents others from misusing or exploiting it.
2. They build trust and differentiate a business from competitors. A trademark conveys a certain standard and quality of the product that consumers can easily identify.
3. They provide legal protection against infringement. Trademark owners have the right to sue violators for unauthorised use.
4. They add value and recognition to a company. Well-established trademarks make it easier to raise funds, expand into new markets, and find partners.
5. They safeguard a company’s intellectual property rights. Trademarks are a form of intellectual property that can be legally protected and owned.

What Are The Steps To Register For A Trademark? 

The trademark registration process in India is handled by the Registrar of Trademarks, which is part of the Office of the Controller General of Patents, Designs and Trademarks. Here is a step-by-step guide on how to register a trademark in India:

1. Before applying, thoroughly search the existing trademark database to ensure your proposed mark is unique and not already registered or similar to an existing one. This helps avoid potential conflicts and objections later.
2. Prepare the trademark application with details like the trademark, owner’s name and address, trademark class, date of first use, and description of goods/services.
3. Fill out the trademark registration form (TM-A) and submit it either online through the official Trademark Registry portal or physically at the Trademark Office. Provide details like the trademark, owner information, and goods/services.
4. Once filed, the application is allotted a number and sent for Vienna Codification to classify the figurative elements.
5. The trademark registration fees range from ₹4,500 to ₹9,000, depending on the applicant’s entity (e.g. startup, individual, or business).
6. The Trademark Office will examine the application to ensure it meets legal requirements. They may accept it, raise objections, or allow publication in the Trademark Journal.
7. If the application is accepted, the proposed trademark will be published in the Trademark Journal, allowing the public to raise any opposition within 90 days.
8. If no oppositions are filed, the trademark is registered and a certificate is issued. The ® symbol can then be used with the mark.
9. Once registered, you can start using the ™ symbol alongside your brand name.
10. Registered trademarks are valid for 10 years and must be renewed every 10 years to maintain protection.

What Documents Are Required To Register A Trademark? 

The key documents required to register a trademark in India:

For individuals and sole proprietors:

1. Copy of logo (optional)
2. Signed Form-48 (power of attorney authorising an agent)
3. Identity proof (Aadhaar card, PAN card, or driving licence)
4. Address proof of the individual or sole proprietor 

For partnerships, LLPs, and companies:

1. Copy of logo (optional)
2. Signed Form-48
3. Incorporation certificate or partnership deed
4. Identity and address proof of the authorised signatory 

Additional documents required:

1. Udyog Aadhaar registration certificate for small enterprises and startups to avail lower registration fees 
2. GST certificate for sole proprietorships and partnerships 
3. Proof of use of the trademark (invoices, labels, packaging, etc.) 
4. Priority document if claiming priority based on an earlier foreign application 

What Is The Vienna Classification And How It Affects Trademark Applications ?

1. The Vienna Classification is an international system for categorising the figurative or graphical elements of trademarks. 
2. It was established by the Vienna Agreement in 1973 and is managed by the World Intellectual Property Organization (WIPO). 
3. The classification divides figurative trademark elements into 29 broad categories, 145 divisions, and 816 sections. This provides a standardised way to search and classify trademarks globally. 
4. In India, the Trademark Registry started using the Vienna Classification system in 2019 when India officially ratified the Vienna Agreement. 
5. If a trademark application in India contains a logo or graphical element, it will be “sent to Vienna Codification” during the examination process. The registry will assign the appropriate Vienna Classification code to the figurative elements. 
6. The Vienna Codification process can take 2-9 months currently, longer than the usual 3-20 working days, due to delays at the registry. 
7. The Vienna Classification codes help the registry properly categorise and examine the trademark application to avoid conflicts with existing registered marks. 

How To Respond If Your Trademark Application Receives An Objection Notice?

1. Carefully read the objection notice from the trademark office to understand the specific reasons for the objection. Common grounds for objection include similarity to existing trademarks, descriptiveness of the mark, or issues with the application details.
2. Prepare a comprehensive written reply within 30 days to address the issues raised in the objection notice. Your response should provide justifications, supporting evidence, and facts to assert that the mark meets the requirements for valid registration.
3. The reply should cover aspects like amending the application, providing additional information, or arguing against the objection grounds. Failing to respond within the deadline may result in the application being abandoned.
4. Consider engaging a trademark attorney to help craft an effective response, as trademark laws and procedures can be complex. They can ensure your reply addresses all the concerns properly.
5. Upon receiving your response, the trademark office will review it. If satisfied, they will proceed with publishing the mark in the trademark journal for public review. If not, they may issue further objections that need to be addressed.

What Are The Most Common Reasons For Trademark Objections? 

Here are some of the most common reasons for trademark objections in India:

1. Lack of distinctiveness: If the trademark is deemed too descriptive, generic, or lacks the ability to distinguish the applicant’s goods/services from others, it can be objected to.
2. Deceptive or misleading nature: Trademarks that are likely to deceive or confuse consumers about the nature, quality, or geographical origin of the goods/services can be objected to.
3. Similarity to existing trademarks:  If the applied trademark is identical or similar to an existing registered trademark covering similar goods/services, it may be objected to on the grounds of likelihood of confusion.
4. Scandalous, obscene or offensive matter:  Trademarks containing scandalous, obscene or matter likely to offend religious sensibilities can be objected to.
5. Prohibited under other laws: If the use of the trademark is prohibited under laws like the Emblems and Names (Prevention of Improper Use) Act, 1950, it can be objected to.
6. Incorrect application details: Issues like incorrect applicant name, address, trademark form, or vague specification of goods/services can lead to objections.
7. Lack of proof of prior use: If the applicant fails to provide evidence of prior use of the trademark, it may be objected to.

What Is A TM-16 Form And How Do You File It? 

The TM-16 form provides a mechanism for trademark applicants to efficiently correct errors or make amendments to their application during the registration process. Prompt filing of the TM-16 is important to address any issues identified by the trademark office.

1. The trademark applicant or owner can use Form TM-16 to request the correction of any clerical error or amendment to their trademark application.
2. To file the TM-16 form, the applicant needs to provide details like the application number, the specific correction or amendment required, and the reasons for the request.
3. The applicant must submit the completed TM-16 form along with the requisite fees to the trademark office.
4. Upon receiving the TM-16 request, the trademark office will review the proposed changes and determine if they are acceptable.
5. If the changes are approved, the trademark office will update the application details accordingly. This could include correcting errors in the applicant’s name, address, goods/services, or other clerical mistakes.
6. The amended application will then proceed through the regular examination and publication process for trademark registration.
7. If the changes requested on TM-16 are to overcome an objection raised by the trademark office, the hearing officer will first dispose of the TM-16 request before deciding on the acceptability of the overall application.

How Long Does The Trademark Registration Process Take?

The trademark registration process in India typically takes between 6-24 months, depending on various factors:

1. Trademark Search and Filing: This initial step can be completed within 1-3 days. 
2. Examination Report: The trademark application is examined by the Trademark Office within 2-4 months from the filing date. The examiner may raise objections that need to be addressed. 
3. Response to Examination Report: The applicant has 1 month to respond to any objections raised. If the response satisfies the examiner, the application proceeds to advertisement. 
4. Advertisement in Trademark Journal: If no objections are raised, the trademark is advertised in the Trademark Journal within 4-6 months after approval. 
5. Opposition Period: The trademark is open for public opposition for 4 months after advertisement. If no opposition is filed, the trademark proceeds to registration. 
6. Registration: If the application is not opposed, the trademark is registered within 1-2 months after the opposition period. 

What Is Expedited Trademark Registration? 

Expedited Trademark Registration is a process in India that allows businesses to obtain trademark registration faster than the standard registration route. The key points are:

1. The expedited examination process significantly shortens the typical 18-24 month timeframe for trademark registration, with applications undergoing examination within 3-4 months of filing.
2. This expedited procedure is open to eligible applicants such as individuals, startups, small enterprises, women entrepreneurs, MSMEs, educational institutions, and government departments.
3. Applicants must file their trademark application online and pay an expedited examination fee, which is higher than the standard fee.
4. The expedited examination is justified for valid reasons such as potential trademark infringement, business needs, or government/educational requirements where swift action is essential.
5. While the expedited examination is faster, the overall registration process including hearing, acceptance, and final registration still follows the normal timeline after the expedited examination is completed

What Are The Benefits Of Expedited Trademark Registration?

The main benefits of using the expedited trademark registration process for small businesses in India are:

1. Swift Brand Protection: The expedited process significantly reduces the typical 18-24 month timeframe for trademark registration, allowing businesses to obtain protection for their brand identity much faster, typically within 3-4 months.
2. Support for Smaller Entities: The expedited program is particularly beneficial for startups, small enterprises, and MSMEs that face resource constraints. It enables these businesses to establish brand protection quickly and contribute to their market presence.
3. Optimised Resource Allocation: By streamlining the trademark registration timeline, the expedited process allows small businesses to focus their limited resources on other critical aspects of their operations, rather than getting bogged down in a lengthy registration process.
4. Benefits for Educational and Government Entities: The expedited option also provides timely trademark protection for educational institutions and government departments where swift action is essential.