Trademark Registration

The legal framework on  trademarks in India is regulated by the Trade Marks Act, 1999 and the Trade Marks Rules, 2002 formed thereunder. Trademark generally refers to a "sign", “brand”, “logo” or "symbol" that distinguish goods or services of one person or enterprise from those of another.

Even though the registration of a trademark is not compulsory in India, it has significant advantages like

• Registration notifies the public at large that the person/enterprise is claiming exclusive ownership/right to the use of the trademark with the goods or services in respect of which the trademark is registered
• Gives a right to sue the other person/company for infringement or misuse of the trademark. 
• Protects goodwill in the market and advertises goods & services. 

The types of trademarks that can be registered under the Trade Marks Act are:

1. Product mark: For e.g.: Apple, Samsung and LG
2. Servicemark: For eg: Airtel, LIC and Star TV
3. Certification mark: For eg: Agmark and ISI
4. Collective mark: For eg: CA as used by the Institute of Chartered Accountants

Procedure for Trade Mark Registration

Step-1: Selecting a good trademark & trademark availability search

The first and foremost step is the selection of a good trademark. A good trademark is:

1. Not descriptive;
2. It must be distinctive;
3. Best marks are invented words or coined words

It is highly recommended to conduct a thorough trademark search before a huge amount of money and time is invested in a trademark.

Step-2: Identification of Class

The second important step is to identify the classes/categories of goods or services under which one would like to register his trademark. An application should be made in the relevant classes of current goods/services as well as in classes where there is intent to use. There are 45 categories/classes in all: Classes 1-34 deal with goods, while Classes 35-45 deal with services.

Step-3: Submission of Application

After conducting the preliminary searches as above and finalizing the name and class, an application in form TM-1 needs to be filled and filed before the Registrar of Trade Marks along with the prescribed fees and the prescribed documents. The registry will issue an official acknowledgement receipt with the filing date and number allotted to the application.

Step-4: Advertisement & Opposition

Upon the filing of the application, the registry takes the following steps towards the advertisement and calling opposition to the application:

• The application gets formally examined, as to its inherent registrability and/or any similarity with existing marks; 
• The Registrar will then advertise the application, to find out whether the trademark has been in usage by any other person;
• Any person may object within four months from the date of such advertisement;
• If an objection to registration is raised, the applicant then is required to file a counter-statement within two months from the receipt of a copy of the notice of opposition from the Registrar.
• The Registrar then decides whether and subject to what conditions or limitations, if any, the registration is to be permitted. 

Step-5: Registration

When an application for registration of a trademark has been accepted and either the application has not been opposed or the opposition has been decided in favour of the applicant, the registrar issues a certificate of registration in favour of the applicant and the trademark is registered.

Once registered, the term of registration of a trademark is ten years, which may be renewed for a further period of ten years on payment of prescribed renewal fees every time.