Trademark is a visual symbol, which may be a word, name, device, label or numeral used by a business to distinguish its goods or services from other similar products or services originating from a different business. A trademark is a protectable asset under Indian laws and regulations. To protect a trademark from being copied by others, the inventor of the word or symbol must apply for trademark registration.
Any person or legal entity can file a trademark application in India. There is no requirement for the mark to be used before applying. Hence, a trademark application can be filed under the category of "Mark proposed to be used" if the inventor of the word or mark wants to protect it before advertising the brand.
A Trademark which is registered is an indefinite type of asset for any business. A registered trademark safely protects the investments of the company and the symbol or brand. When you trademark the brand or logo, then a trademark license or registered mark number is issued by the department.
Before beginning the process of filing a trademark application, the applicant needs to identify the class of Trademark. The World Intellectual Property Office or WIPO has organized all goods and services under 45 different classes. Hence, when a trademark application is submitted - it must fall under one or more classes.
Documents Required for Trademark Registration are:
1. Logo(if applicable)
2. Identity proof of the trademark owner
3. Incorporation certificate (in case of Company or LLP)
4. Ownership Document (in case of owned premises)
5. Rent Agreement (in case of rented premises)
Once the trademark application is filed, it has to face the stringent scrutiny of the examiner. The submitted trademark registration application can be rejected by the trademark examiner. The rejection is called trademark objection. It basically means that the examiner has gone through the application and has disapproved of the application. Every year, over 60 percent of filed applications face objections.
There are two grounds under which the trademarks are objected. They are:
1. Absolute Grounds:
1. The trademark does not possess any distinctive character.
2. The trademark tells the quality of the product it represents.
3. The trademark is offensive to specific communities due to deliberate or mistaken intention.
2. Relative Grounds:
1. The trademark can cause confusion among the public
However, trademark objections are not always fair. Therefore, there is a trademark objection reply. A reply to the TM objection has to be specifically filed in a customized fashion.
Documents Required for Trademark Objection Filing:
1. Authorization Documents
2. Examination Report of Trademark
3. ID Proof
4. Address Proof (Ownership proof/ Rent Agreement as the case may be)
A trademark opposition is basically filed for opposing a trademark that is advertised in the journal by the trademark registry from registration. It is mainly a way to protect your trademark being misused by the others or to stop someone trying to take benefits of your creativity or efforts without your permission. A trademark opposition is a legal challenge to the right to register a particular trademark. A trademark opposition is instituted by filing a notice of opposition with the Trademark Trial and Appeal Board and paying the required fee.
A trademark opposition must allege one or more grounds for challenging a trademark application. Most often, a trademark application is opposed by someone who owns prior rights in an identical or confusingly similar trademark. But, trademark applications can also be challenged on a number of other grounds.
Shortly after a notice of opposition is filed, the Board will institute the opposition proceeding, assign it a proceeding number, and notify both parties of the schedule the opposition will follow.
1. Authorization Documents
2. Evidence supporting notice of opposition or counter statement
The next step after filing for Trademark objections is the trademark hearing. Trademark hearing is a process in which after the reply has been unsuccessful, the registrar of the trademark sends the applicant with a show-cause notice. This notice entails appearing before a tribunal where either the applicant or the applicant’s representative has to be present to present the case. Trademark hearing is a matter that needs proper trademark attorneys by your side. The right attorney’s decision can lead to your trademark being accepted by the registrar.
The two most important things mentioned in the hearing notice are date and time. Every applicant or his representative needs to be present before the authority along with the documents and submissions.
Documents Required for Trademark Hearing are:
1. Power of Attorney
2. Proof of Business
3. Hearing Notice
4. Examination Report
Trademark Restoration is the process of restoring the trademark again in the trademark register after the expiry of the trademark renewal deadline. If the period to renew the trademark registration has lapsed, then the company can apply for the restoration of the trademark. Trademark restoration provides the same legal protection as trademark registration and renewal. However, this restoration application has to be made six months to one year from the expiration date.
Form TM-12: This application is filled when the renewal process is within the timeline. There will be no surcharge fee required.
Form TM-10: This application is filled when the renewal process is carried within the six months before the expiration date. A renewal fee is applicable in this case.
Form TM-13: This application is filled when the trademark is removed from the register of trademarks. The renewal and restoration process will take place six months to one year after the expiration date of registration and both renewal and restoration fees are levied to the applicant.
Trademark Renewal means to extend the term period of trademark registration. Trade Mark renewal term is for a period of 10 years. Trade Mark can be renewed in India for an unlimited period provided renewal fees are being paid on a timely basis. Each Trade Mark renewal is valid for 10 years. If a person fails to renew the Trade Mark then the mark becomes liable to be removed.
Therefore, renewal on time to time basis very important especially when there is a portfolio of Trademarks needs to be managed and there could be serious irreparable repercussion if one fails to meet the timeline. Thus, Trade Mark renewal is the core part of Trade Mark Management because Trade Mark is a graphical presentation and the Identity of business needed to be protected from infringement.
Trade Mark Renewal request can be filed within six months before the expiry of Registration or renewal along with late filing fees.
Trade Mark Renewal can be in two ways:
1. One can apply renewal to change in any sign or words in the existing trademark; or
2. One can apply renewal without any change.
1. Power of Attorney
2. I'd Proof and Address Proof of the Applicant
3. Authorization Documents
As a trademark is owned, it can also be sold, transferred, etc., depending on the intention of the owner. The owner can transfer the trademark and its rights to anyone he wishes following legal procedures by way of assignment or licensing. The process of change in ownership of the registered trademark is known as the trademark assignment.
A trademark may be assigned to another owner in the following ways:
Complete Assignment - When the trademark and its rights such as rights to further transfer, royalties, etc., are legally transferred to another entity.
Partial Assignment – The transfer of ownership is restricted to certain products or services only and the owner of the trademark has the right to further transfer the trademark and earn its royalties.
Assignment with goodwill – When the owner transfers the rights and royalties of the trademark associated with while selling the product or service it owns, it is known as an assignment with goodwill.
The assignment without goodwill – When the owner of the trademark restricts the new owner to use the trademark for the products he uses it for, implies that the goodwill associated with the product or service sold by the owner is not transferred to the new owner. Thus, the trademark, in this case, can be used by both seller and buyer but in different products and services.
1. Assignment Deed
2. A statement telling whether the assignment is with goodwill or without goodwil
3. Consideration paid
4. Affidavit by the transferee that there is no pending litigation and trademark ownership is not under dispute
Any changing, alteration, or rectification in any registered trademark or in the Register of Trademarks in any country, is commonly known as trademark rectification or rectification of the trademark register. Rectification of a trademark can be filed on grounds of contravention or failure to observe a condition of the trademark already entered in the Register or an error in registering the trademark.
The grounds for filing a rectification action are as follows:
1. Contravention or failure to observe a condition entered in the Register
2. The Register suffers from the absence or omission of an entry e.g. a disclaimer, a condition or a limitation on the registered mark.
3. The entry made in the Register was made without any sufficient cause i.e. registration was obtained by fraud or misrepresentation of facts or the mark registered was similar to an already registered mark, etc.
4. Error or defect in any entry made in the Register.
5. The entered mark was wrongly remaining on the Register i.e. it is contrary to some of the provisions of the Act or is likely to cause confusion amongst the public and trade.
6. The renewal fee has not been paid.
The procedure for trademark rectification in india involves the following compulsory requirements:
1. The application form used for demanding trademark rectification or cancellation, which is to be filed in triplicate, is the Form TM-26, or the Form TM-43
2. A clear and crisp statement of grounds, associated with the application
3. Evidence to support rectification or removal of the specified trademark