Online Trademark Registration | Process of Trademark Registration

In this article we will learn about Online Trademark Registration or Process of Trademark Registration in India

INTRODUCTION

Intellectual property (“IP”) is one of the type of property that comprises intangible intellectual creations of a specific individual or business enterprise with many categories like patents, copyright, trademarks, designs, etc. When compared to traditional property such as land or goods, the intangible nature of intellectual property poses challenges. The purpose of intellectual property protection is to encourage creativity and discovery while also preventing innovation exploitation. The term “intellectual property” denotes that the subject body is the result of the mind or intellect. A trademark is a symbol that distinguishes one business enterprise goods or services from those of other business enterprise with Intellectual property rights safeguarding trademarks. In India, unregistered trademarks with prior use may be protected by common law. The tort of passing off of trademarks is a common law tort that is primarily used to safeguard the goodwill associated with unregistered trademarks. The Trademarks Act 1999 and the Trademarks Rules 2017 are the principal domestic laws regulating trademarks in India. In India, trademarks are managed by the Office of the Controller General of Patents, Designs, and Trademarks, which is a part of the Ministry of Commerce and Industry’s Department of Industrial Policy Promotions.

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WHAT IS A TRADEMARK?

A trademark (also known as a brand name) is a visual symbol that can be numerals, word signature, a label, a name, a combination of colours or a device, that is used by one business undertaking on goods, services, or other articles of commerce to distinguish it from similar goods or services from another business undertaking to distinguish its product in the relevant industry.

With a Online Trademark Registration, marketing goods or services by procedure becomes considerably easier because product recognition is secured and made easy. The owner has the right to prevent a competitor from using his trademark or symbol.The most crucial feature of trademarks is that they exclusively appeal to the senses of sight and hearing. Trademarks can be registered for most items that can be represented graphically. A trademark’s main purpose is to showcase a product’s or service’s quality to a customer or potential customer. Trademarks aid in the identification of a company’s products. It takes a long time to build goodwill. A well-known trademark serves as a signal of a company’s commitment to its customers. It may convey practically about a manufacturer’s history and legacy.

Section 2 (1) (zb) of the Trademarks Act, 1999 states Trademark as; Mark capable of being graphically depicted and capable of differentiating one person’s goods or services from those of others, which may include the shape of the goods, their packaging, and colour combinations.

A registered trade mark is a mark that is used in relation to goods or services for the purpose of identifying or obviating a link in the course of business between goods as well as services, as the case may be, and someone who has the right to use the mark as the proprietor. A certification trade mark or collective mark is a mark used or which is proposed to be used in relation to goods or services for the purpose of showing a connection in the course of trade between the goods or any services and some person who has the right, either as proprietor or by way of permitted user, to use the mark with or without any indication of that person’s identity.

TYPES OF TRADEMARK

GENERAL TYPES OF TRADEMARK 

1. GENERIC TRADEMARKS

A generic mark is one that isn’t eligible for statutory protection. Some trademarks, on the other hand, become generic over time as a result of their continuous and wide use. In such circumstances, the trademark becomes associated with the product or service itself. A generic mark requires a higher level of proof to be protected, and the burden of proof falls on the person who asserts the generic mark’s distinctiveness is significantly higher. The ordinary descriptions of a product or its seller are represented by generic marks. “Shoes,” “watch,” or “meal” is examples of frequent words. The Court found that “VapoRub” was neither a created or coined phrase in E. Griffiths Hughes Ltd. v. Vick Chemical Co., AIR 1959 Cal 654, but it was allowed to be registered upon provision of proof of acquired uniqueness.It was decided that Vicks Chemical Company’s mark “VapoRub” had been in continuous use in India long before the date of the application for registration, and hence had gained sufficient distinctiveness to be registered as a trademark.

2. DESCRIPTIVE MARK

Descriptive marks are those that describe one or more characteristics of the goods or services being advertised. The descriptive element can be a product or service’s quality, quantity, kind, or other characteristics. If these marks gain a secondary significance, however, they may be eligible for protection. Descriptive mark only pertains to the commodity. These terms, however, are not registerable because they are considered part of the universal language. Adding a signifier to define a significant quality of the product, on the other hand, could make it eligible for trademark protection.

3. SUGGESTIVE MARK

Suggestive Marks are words that convey product features without having to be related to it in a literal way. A fundamental consideration in identifying a mark as suggestive is the consumer’s imagination. Trademarks require a corresponding level of cleverness to qualify as suggestive marks because they are more particular and hence more protective. Suggestive marks only hint to the nature of the products or services protected by the trademark. To build a relationship between the mark and the goods/services it covers, consumers must use their imagination. An example would be Netflix’s line of business without explicitly declaring that it is an internet streaming platform.

4. ARBITRARY MARKS

An Arbitrary Mark is a word or phrase that has been taken from the vernacular. These terms, on the other hand, should have nothing to do with the items they represent. The drawback here is that the expense of advertising methods has increased. Efforts should be focused on instilling the completely new association in the audience. Essentially implying, arbitrary marks are terms or phrases that are regularly used but have no dictionary definition and have no connection to the items or services to which they are applied. These people are entitled to more protection than others.

Example: The trademark of Starbucks for Coffee 

5. FANCIFUL MARK

Because they have no other significance, fanciful marks are created only for the purpose of being utilized and registered as trademarks. They have the broadest extent of protection since they are intrinsically distinctive and unique. This is the most straightforward type of trademark to register. It merely takes the creation of a new word that has no current meaning for the general audience. Pepsi a beverage is an example for fanciful trademark.

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SPECIFIC TYPES OF TRADEMARKS

1. CERTIFICATION MARKS

Certification marks specify the goods/services’ criteria in terms of origin, quality, material, genuineness, and so on. They ensure that the product/service satisfies the consumers’ safety and other requirements. This mark is registered to ensure that local requirements are followed. A Certification Mark, unlike other forms of trademarks, is used by an authorised user rather than the owner. Furthermore, the “duty of impartiality” prohibits these certification bodies from awarding this mark for their own purposes, adding another degree of protection.Typically, the certification mark is imprinted on the goods. The presence of a certification mark on a product denotes that it has passed the required standard tests.The ISI mark, is an example for certification trademark.

2. COLLECTIVE MARKS

A collective mark is one that is stated to be used collectively by a group, institution, or association of people. In terms of originality, misleading likeness, and the likelihood of confusion among the general public, a collective mark is examined similarly to a trademark. Organizations or associations possess collective marks, which are unique trademarks. This symbol appears to denote the origin of an organisation.

3. SERVICE MARKS

Non-product things, such as services, are protected by this specific form of trademark. While the terms are often used interchangeably, a service mark distinguishes an organization’s class of services from that of other similar suppliers. The service marks indicate the company’s services rather than a product or an item. A mark is a mark that identifies one service provider’s services from those of another. Large business chains are usually the ones who file these. Some example are: American Airlines is an airline based in the United States

4. SOUND MARK

A sound mark is a sound that is connected with a firm, its products, or services, allowing the general public to distinguish it from other manufacturers by identifying a distinct sound or melody that has established brand recognition.It’s technically referred to as a ‘audio mnemonic,’ and it’s a useful branding technique. It could be a quick, distinctive sound that appears at the start or finish of a commercial marketing a product or service. The best example for a sound mark is the lion roar of Metro Goldwyn Mayer (MGM).

5. PATTERN MARKS

These are specially designed patterns that serve as a product’s distinguishing feature and can be used to identify items or services from a specific producer or proprietor. It is critical to recognise that patterns that do not stand out as notable or distinct are often disregarded since they provide no purpose.This form of mark, which is popular in the fashion business, safeguards the way a pattern is tiled onto a canvas.

6. SHAPE MARK

According to the Indian Trade Marks Act, 1999, a trademark may also cover the shape of goods or any special packaging of such items, if any, as long as the shape can be graphically represented clearly. Shape marks assist in differentiating products sold under such marks from those sold by a competitor.

7. TRADE DRESS

Trade dress refers to characteristics of a product’s visual appearance, such as the design of a building or its packaging, that indicate the product’s source to customers. It falls within the category of intellectual property. Consumers are protected by trade dress protection from products that are packaged or look to copy other products.

FUNCTIONS OF TRADEMARK

A trademark serves four purposes in today’s commercial world;

1. It promotes the products/services
2. It specifies the goods and/or services as well as their source.
3. It ensures that the product’s quality remains constant.
4. It gives the goods/services a personality.

ESSENTIAL FEATURES OF ONLINE TRADEMARK REGISTRATION

NOTE: A trademark registered under the Trademark Act is protected by an action for infringement, whereas a trademark obtained through use but not registered under the Act might be protected by an action for “passing off.” Passing off is the act of a competitor mimicking a manufacturer’s trademarks in order to get cheaper items onto the market.

For more information, please contact us on info@trijuris.com or call us Mb. No. 85100 58386 or 9310 717274.

WHO CAN APPLY FOR TRADEMARK?

Any individual who claims to be the owner of a trademark that he uses or intends to use may apply for registration in writing in the authorized manner. The trademark, the goods/services, the applicant’s name and address, the agent’s name and address (if applicable) with power of attorney, and the mark’s period of use should all be included in the application. The Registered Owner of a Trademark can establish and protect the goodwill of his products or services, restrict other traders from using his trademark without permission, sue for damages, and have infringing goods and or labels destroyed. The government expects to increase the revenue a fee for trademark registration and protection.

DESIGNATION OF TRADEMARK

The following terms are used to designate a trademark:

1. ™ -An unregistered trademark is denoted by the letter TM. It’s utilised to market or brand products.
2. ® – For registered trademarks, the letter R is encircled by a circle.
3. ℠ – The abbreviation SM is used to refer to an unregistered service mark. It’s utilised to market or brand a service

ADVANTAGES OF ONLINE TRADEMARK REGISTRATION

The owner of a trademark has the exclusive right to use the mark in relation to the products or services for which the mark is registered, to indicate this by using the symbol (R), and to seek infringement action in competent courts throughout the country.

1. EXCLUSIVE RIGHTS OF TRADEMARK

The owner has sole ownership of the Trademark and can prevent anyone from using it without permission in the same class in which it is registered. It grants the right to sue anyone who uses the Trademark without permission. The owner of a Registered Trademark has exclusive ownership of the mark. The owner can utilize the same for all products that come under the applied class(es).

2. PROTECTION AGIANST INFRINGEMENT 

If someone uses a trademark without the owner’s permission or in a deceptive manner, the owner can seek legal protection under the Act and have the person stopped. No rival or third party may use the trademarked wordor logo that you have registered.Online trademark registration comes at a very minimal cost of administration. It is cost-effective and aids in the creation of a distinctive image for the firm.

3. CREATION OF AN ASSET

Any company looking to develop outside of India can benefit from a trademark registration in India, as well as the country’s established goodwill. An organization’s intangible asset, Intellectual Property, is created when a trademark is registered. A trademark registration creates a legal right that can be sold, assigned, franchised, or commercially contracted.

DISADVANTAGES OF TRADEMARK REGISTRATION

1. FREQUENT RENEWALS

The registration of a trademark is valid for ten years and must be renewed every ten years. The biggest disadvantage of trademark registration is that it requires payment of fees every ten years to keep it active. Nonpayment of renewal fees may result in the trademark being removed from the register.

PROCESS OF TRADEMARK REGISTRATION

Any person who claims to be the owner of a trademark or claiming to be the owner of a trademark that he intends to use in the future may submit an application in writing to the appropriate registrar in the required manner. The application must include the name of the goods, mark, and services, the class of goods and services in which it falls, the applicant’s name and address, and the mark’s term of use.

STAGE 1: TRADEMARK SEARCH

The trademark search is the initial step in the registration procedure. A trademark search may help you figure out whether there are any comparable trademarks out there, as well as give you a good idea of where your trademark stands. It can also offer you a heads up on the prospect of trademark litigation.

STAGE 2: FILING OF TRADEMARK APPLICATION

A trademark application is filed for the specification of goods or services for which it is being used or is proposed to be used if no identical Trademark has been recognised and is not listed in the Trademark Registry India. Only the proprietors are permitted to file a trademark application in India. If none of the proprietors are present, the application must be filed through an agent or attorney. Typically, the agent is in charge of all trademark-related tasks such as seeking, filing, preparing, and prosecuting the trademark. The agent can be given power of attorney to finish the process and file an application on the right holder’s behalf.

STAGE 3: EXAMINATION

The trademark office checks the application for faults after it is completed, and then assigns an application number. The application number becomes the registration number if the trademark is accepted. The examiner examines it for any discrepancies. The evaluation might take anywhere from 12 to 18 months. The trademark may be accepted unconditionally, conditionally, or as an object by the examiner.The trademark is published in Trademark Journal if it is unconditionally accepted. If not unconditionally accepted, the requirements to be met or the objections raised would be listed in the examination report, with a month to meet the criteria or respond to the objections.

In the event an examination report is issued, the Applicant must file a response within one month of receiving the report, otherwise the application would be “deemed abandoned” by the Applicant. The application is published in the Trademarks Journal if the Trade Marks Office is satisfied with the response filed.

STAGE 4: ADVERTISEMENT AND OPPOSITION

The trade mark application will be advertised in the Trademarks Journal after examination if the Examiner is satisfied with the response made to the objection/s. On the official website, the Trade Marks Journal is published every week. Once a trademark is advertised, it is vulnerable to opposition. If no opposition is lodged within the specified time frame, the mark will be registered.

STAGE 5: PROCESS OF TRADEMARK REGISTRATION

If no opposition is filed within a period of four months of the trademark application being published in Trade Marks Journal, the application will be registered. A soft copy of the Registration certificate will be issued by the Trade Mark Registry. The mark is registered for a term of ten years from the date of application submission and can be renewed at any time by paying a renewal fee.

FORMS FOR TRADEMARK REGISTRATION

• For filing new applications or the registration of a trademark/collective Marks/Certification Mark/Series of trademarks for the specification of goods or services that fall into one or more groups Form TM-A
• To file a Notice of Opposition to oppose an application published in the Trade Marks Journal (Form TM-O). 
• For each trademark, an application under section 45 to register a future proprietor in the event of an assignment or transfer is required. (Form TM-P)
• A registered user of a registered trademark in respect of goods or services may file an application under section 49.( Form TM-U)
• Under Rule 22, a request for a search and the issuance of a certificate is made under. (Form TM-C)
• On an application for: a time extension, a certified copy, a duplicate registration certificate, an inspection of a document, or particulars of an advertisement to the registrar, or seeking the Registrar’s reasons for a decision is made under. (Form TM-M)

RENEWAL OF TRADEMARK

A trademark is only valid for ten years after it is registered. After that, it can be renewed on a regular basis. Trademark renewal protects the rights that can only be obtained through a registered mark. If the owner of the trademark fails to renew it, he will lose all of the benefits that come with registration.

The trademark owner must submit to the Registrar a prescribed form [TM-R], which is an application for renewal. This application must be submitted within a period of 6 months of the registration’s expiration date.

If no renewal application is lodged within the first three months after registration, the Registrar will send a notification to the proprietor alerting him of the forthcoming renewal deadline. If no notice of renewal has been served, no trademark can be revoked.

When a trade mark is removed from the register due to non-payment of the prescribed fee, the Registrar must restore the trade mark to the register and renew the registration of the trade mark after six months and within one year from the expiration of the last registration of the trade mark, upon receipt of an application in the prescribed form and payment of the prescribed fee.

When a trade mark is taken from the register for failure to pay the renewal fee, it is regarded to be a trade mark already on the register for the purposes of any application for registration of other trade mark filed within one year of the date of the removal.

CONCLUSION

Capital protection is critical, and progress toward a Global Intellectual Property Order should be made; without IPR protection, inventive activity will cease.Trademarks that are “well known” are given special protection under the law, which protects them from infringement and passing off. On the basis of international, national, and cross-border repute, the Trademarks Registry recognises well-known trademarks in India. An application for trademark at international forum may be filed through the applicant’s trademark office under the Madrid Protocol (the Madrid Agreement Concerning the International Registration of Marks, dated 1891, which entered into force on December 1, 1995, and went into effect on April 1, 1996). In 2013, the Indian government consented to the Madrid Conference, which establishes a procedure for submitting a worldwide application to contractual parties from India through the Registrar of Trademarks’ office. Thus, Trademarks are very significant components of intellectual property, and trademark protection has grown increasingly crucial in recent years because every creator of a commodity or service wants his mark to stand out.
For more information, please contact us on info@trijuris.com or call us Mb. No. 85100 58386 or 9310 717274.