When you’re starting out a business online (or offline), we’re pretty sure you’ve heard of the term ‘trademark’ from a few people. There will be those who’ll tell you how important trademark registration is and then there will be those who will say it’s just an add-on.
So in this guide, we’re going to walk you through what trademark is, how to go about trademark registration and whether you need it or not.
Trademarking a Brand Name
A trademark is a symbol used by businesses to represent their brand, product or service. This could be a name like “PepsiCo”, or a word, a phrase like “Just Do It!”, number, label or even a colour combination. Essentially, it uniquely identifies a brand or a product.
In India, trademarks come under the Ministry of Commerce and Industry, Government of India. Under the ministry, trademarks are listed by the Controller General of Patents Designs and Trademarks. And are legally protected by the Trademark Act, 1999.
By the mandate of this act, every company has to register a unique trademark as a unique identifier for their registered company.
Virtually, anything can be trademarked today. Any word from the dictionary or any word that is invented, like Google for example. Here are the different symbols that can be trademarked:
Any name, either of the applicant or a name of value to them, like JRD Tata would be to Ratan Tata can be trademarked. Of course this could also be a brand name or just a surname.
Word or Phrase
Any word can be trademarked. For example, Nike is a trademarked word. A set of words can also be trademarked, like ‘Just do It’.
Numbers or Alphanumeric
Symbols containing just numbers or a mixture of letters and numerals can be trademarked as well. For example, Market99 is a trademarked alphanumeric symbol. And almost all numbers between 1-100 are registered trademarks.
This might surprise some, but images can be trademarked as well. These are logos, or visual representations of a brand that uniquely identify them. For example, the domino for Domino’s Pizza. Or Nike’s tick symbol.
Trademark symbols and their usage
Any word, image, logo or phrase that has been trademarked is protected from infringement. To explicitly show viewers and the general public the registration, the government allows usage of certain symbols over the trademark. Like the ® symbol or the ™ symbol.
Any trademark that has been successfully registered, i.e., the application of trademark stands approved and the registration process is complete can use the ® symbol. This symbol represents a thorough and complete protection against infringement. The R here represents the “Registered” trademark.
A trademark for which application has been filed, but the approval and registration has not been yet completed can use the ™ symbol (tm symbol). This is to indicate that the trademark application exists with the government, and therefore limits anyone else from copying it. The TM here represents “TradeMark”.
SM stands for Service Mark, and the ℠ symbol identifies a trademark for a service, not a product. Since services could be related to communication, they are also allowed to use sound, graphic content for trademarks. Like MGM’s lion.
Trademark Registry or the Trade Marks Registers, or Intellectual Property India all refer to the operational body that executes the laws and regulations under the Trademark Act 1999 (also searched as trade marks act). This body takes care of everything under trademarks, and patents. With offices in all major metropolitan cities in the country, the head office for Trademark Registry is in Mumbai.
So, when you apply for a trademark, the Trademark Registry is the body you will be directly dealing with. Employees under this functioning body ensure compliance for your trademark application, assess and approve it.
Who Can Apply For a Trademark?
Virtually anyone can apply for a trademark. The applicant whose name and details are mentioned in the application for that trademark will become the owner for its post approval and successful registration. This could be a company, an individual, or LLP.
It is important to note that an individual or an organization that specializes in trademark registration can also apply for a trademark on behalf of an individual or company. You just need to know your appropriate class.
Documents Required for Trademark Registration
Much like any other official registration with the Government of India, trademark registration requires a set of documents. You will need to provide documents issued to state and authenticate the following to become a trademark owner:
Name of the Applicant
Identity proof with DOB and permanent address like Driver’s License, Passport, Aadhar etc. will authorize this information. In case of discrepancies like a change of name etc, the applicant will need to update ID proof provided or assume the name as stated on the ID proof.
Type of Business, and Objectives
Registration and documents pertaining to the business for which the trademark is being applied will be required for the application. In case, the business staff is filing an application on behalf of the owner, proof of ownership and authority is required. Further, if a third party is filing for an application on behalf of a business, additional letter of authorization is required.
In order to apply a logo for a trademark, applicants must submit a clear black and white image of the said logo. And in case the logo encapsulates a tagline, which is also being trademarked: the tagline is submitted individually on the form. And the tagline should also be included in the black and white logo image exactly as submitted in the form. Any little discrepancy here will lead to immediate rejection.
Form TM 48
This is required in case the trademark application is being filed on behalf of the applicant by an attorney or a trademark agent.
To summarize, these are all the documents you will need:
- Identity Proof of signatory/applicant
- Partnership Deed or the Incorporation Certificate
- Duly signed form-48
- Soft copy of the logo
How to Register a Trademark
Select a Trademark that hasn’t been Registered
The first and foremost steps in registering a trademark is choosing one that will rightly represent your cause. This will stay with your brand as a symbol, so ensure you choose something that isn’t extremely eerie.
Every product or service belongs to a class out of the 45 classes specified for goods and services for trademark. Out of the 45, classes 1 to 34 are for goods, and the rest for services. You can find the class your product or service belongs to here.
A given trademark must be distinct. Therefore, it is advisable to thoroughly search to check whether a trademark that you selected exists or not. Or if something similar to it exists. This is especially important to maintain brand value.
A public search can be conducted here on the online website of the Controller General of Patents, Designs and Trademarks. You can also find a list of prohibited trademarks as specified by the governing body on the website. As well a list of well known trademarks.
You can hire a trademark agent to make this process easier. They will go through all the public trademark indexes for you, and help you pick the best trademark for your business.
Filling out the Application
Now, trademarks are viewed either class wise or are categorized under multiple classes. Both these methods have different forms.
Form TM-1 allows applicants to file a trademark under only one particular class. The trademark applied through this form will be registered only for this class. The form costs around 3500.
Form TM-A allows applicants to file a trademark under multiple classes or series or a collective trademark. It costs around 9,000 to fill this form in the e-filling version or online and 10,000 in person. For TM-A a 50% concession is offered for individuals, small enterprises or startups filing through this category both online and in person.
E-fillings are confirmed immediately, in-person applications usually take 10 to 20 days to be confirmed.
Online Trademark Registration Procedure
Government has a fairly simplified online registration process for trademarks. Once you have selected a trademark, and collected the documents, the rest is pretty straightforward.
Prerequisites for filing a Trademark Online
A unique trademark symbol to represent your brand is the first thing that you should zero in on before you file an application. The government requires you to upload registration proof for your business and identity proof of the applicant in case of a sole proprietorship.
In the case of a business, a company director’s or directors’ identity proof with an address proof is also mandatory. You will need soft copies of each of these documents.
Further, in case you will also need to provide a soft copy of the trademark in case of graphic content.
Two additional documents might also be needed (if applicable): the proof of claim that the trademark you applied for can be used in another country and power of attorney in case the trademark is being filed by a trademark agent, or an attorney.
Filing the Application
For e-filing you need to register an account with the Office of the Controller General of Patents, Designs & Trade Marks Online Filing of Trade Marks. You can create a new account by selecting the type of applicant from the drop down menu:
Under Enter Code write the name of your business/enterprise/company as registered. Then click on search. Below, as an example, the type of applicant has been selected as ‘Proprietor’ and the code as ‘Tata’.
Now, another window will open up. Under ‘Search Text in Proprietor Name’ again type in the name of your business/enterprise/company as registered and click submit.
A window will open up with a list of all the matching names along with their codes.
If your company is not listed here, you can select the ‘Add New’ option on the bottom to add your company profile. This will open a form like so:
Once you fill this out, you will be registered and a code will be assigned to your company profile. Now, you will be redirected to the initial page from where you can put in your company code and then register with a unique user id.
After the creation of the form, you can now register for a trademark online by entering the symbol, and uploading the image (if any). You will immediately receive a confirmation of e-filing but this is not the approval. However, post the acknowledgement you are allowed to use ™ besides your trademarked symbol.
If your application is rejected due to a non-approval of name, then you get another chance for correction without any extra charge. If the form is again not approved due to the name, you can refile the application or pay a fine of Rs. 1000/- for recording the same form.
After you file your application, the Registrar at the Office of the Controller General of Patents, Designs and TradeMarks Departments of Industrial Policy and Industry will assess your application for policy compliance. Any disputes or pending requests for the same trademark symbol will also be looked at.
Acceptance and Publication
Once thoroughly examined, the trademark will be published in the Indian Trade Mark Journal. This is a provisional approval and an official waiting period for which any disputes will be heard from other individuals or companies.
Opposition or disputes will be waited for upto 3 months or 90 days, and in some cases 120 days. If no disputes are filed by anyone, then your trademark symbol will be processed towards the acceptance.
Trademark Registration Certificate
Post the 90 day period from the publishing date, with no disputes, the Registrar will officially accept the trademark application. Following which the Registration Certificate with Trademark Registry seal shall be issued to you. Now, you can use the ® symbol besides your trademark.
Status of the application
Post the confirmation message of application filing, you shall receive a unique allotment number. This reserves your application in the pending approval list of applications and will be brought to the notice of the Registry. And also allows you to use the ™ symbol next to your trademark symbol.
Applications are reviewed on a first come first serve basis, therefore applications are reviewed date-wise. Usually, you will get an approval certification within a period of 2 years - in most cases, around one or one and a half months. The same goes for rejection. At this point, you may also want to look into the expiry of your trademark.
After your allotment number is done with the verification and successfully approved it will be redirected for registration.
After the registration, the registry will issue you a trademark registration certificate and officially confirm your trademark. This trademark is now legally protected from infringement in India. This is valid for 10 years from the date of filing the registration, post which you file for an indefinite renewal.
8 Things You Need to Know Regarding Trademark Registration
Trademarks are treated as a valuable asset by most businesses. Since it is a public representation of your brand value, it deserves protection and due diligence. Here are a few things you need to keep in mind whilst registering for a trademark:
1. Types of Trademarks
A variety of different symbols can be used as trademarks, as noted above. Graphic content like logos, special characters, images, sound marks, pattern can also be used as trademarks. Here’s a comprehensive list:
2. Trademark is an Asset
Trademarks are considered as intellectual property for an individual or business, and have a lot of value attached to them.
Consider this, how many will buy Cola from a regular soda shop and how many will purchase a bottle that says Coca Cola on it?
Definitely a huge audience will prefer Coca Cola even if it is sold at a much higher price point. This is why Coca Cola is a protected trademark.
The trademark is a unique identity for your business.
3. Registered Trademarks are Legally Protected
A registered trademark has legal protection under intellectual property. Therefore, in case of infringement, the owner of a trademark can sue and exercise their legal rights that grant them protection.
Depending on your business type and the market you’re catering to, you can also apply for an international trademark.
4. Mark Search on Public Directory of Trademarks
A trademark search can be carried out through the official website and office of the Controller General of Patents Designs and Trademarks. This can also be accessed through third party apps.
Trademarks are categorized as classes based on different fields of services and products. Out of a total of 45 classes, 34 are for products and 11 for services.
6. Trademark Registration is not Mandatory
Although it is advised to register for trademarks, it is not mandatory to do so. It is a voluntary process and trademarks are applied for to protect a brand name.
After the issuing of the trademark registration certificate, a trademark is valid for 10 years. During the last year of validity, it is important to apply for a renewal in case one wants to retain that trademark. Post the expiration, the trademark certificate will stand null and void and the owner will have to reapply.
There are three types of trademark symbols, ™ for applied trademark but not yet approved. ® is for registered trademark. And ℠ for services, not products.
Getting your business trademarked
While you can trademark your business on your own, don’t hesitate in reaching out for help. You always hire professional or legal services to help you with this.
You can also go to the trademark office. Registration of trademarks online can be easier to do, but sometimes you may need someone to walk you through it physically.
Once you have a trademark in place and based on how you’re scaling your business, remember to get a trademark attorney. This will help you get to know the trademark law better and if/how your exclusive rights change over time.
Note: There is also something called an “unregistered trademark”. The common law trademark is an enforceable mark created by a business, individual or brand to signify or distinguish a product or service and define its uniqueness. It is legally different from a registered trademark.