The Author, Bhagyashree Behera, is a 3rd year BA LLB student at National Law University, Odisha. She is currently interning with LatestLaws.com.
ABSTRACT
Trademark being an intangible asset is the most important element which must be registered by the business in today’s world. There are various ideas that are cropping these days and the originality and authenticity of such ideas must be considered in order to prevent chaos in the market. Therefore, a trademark is a type of logo or symbol which are given to the goods and services of a business, and the registration for the same is crucial. Without registration, a trademark carries no value and due to this infringement can happen. Therefore, moving forward, we will be discussing the importance of trademark registration in India, its benefits, the documents required by various types of businesses in India, and lastly, its step-by-step procedure to register the same.
Keywords: Trademark, registration, infringement.
HOW TO REGISTER A TRADEMARK IN INDIA: A STEP BY STEP PROCEDURE
A trademark is a type of visual display of a word, label, name, symbol or numeric character which is represented by a business to differentiate between similar products and services available in the market by other businesses. It acts as the exclusive identity of the products and services that a particular business is offering to sell in the market from other products. It is an intangible asset for the business ones registered which acts separate and unique brand in the business market.
A trademark is registered when it is distinct from the items and services provided. Registration is not possible for trademarks that are confusingly similar to or identical to a registered trademark. Additionally, trademarks that are deceptive, generic, derogatory, identical, or include purely protected insignia, among other things, are not permitted to be registered.
One such case is Yahoo!, Inc v. Akash Arora and Anr[1]., whereby it was held by the Delhi HC that, “A domain name serves the same function as a trademark and is entitled to equal protection. The defendant had a domain name ‘Yahoo India!’ which was identical and phonetically similar to the plaintiff’s trademark ‘Yahoo!’. The internet users would be confused and deceived into believing that both the domain names have the same source. The defendant took a defense that it had put a disclaimer on its website. However, it was observed that a mere disclaimer was not sufficient because the nature of the internet is such that the use of a similar domain name cannot be rectified by a disclaimer and it does not matter that ‘yahoo’ is a dictionary word. The name possesses acquired distinctiveness and uniqueness and was largely associated with the plaintiff.”
Trademarks are registered by the Controller General of patent design, the Ministry of Commerce and Industry, Government of India, and post-registration, it indicates that if there is any contravention in the trademark, the trademark owner has the right to sue for the damage. The trademark registration is valid for 10 years. However, it can be renewed by filing the renewal application after expiry.
Importance of Trademark registration in India:
Trademark being an intangible asset for the business is an important tool in the market to suffice. It safeguards the brand and equips it with the skills that are needed in order to prevent others from riding on the coattails. Shapes of objects, packaging, and colour combinations are all examples of trademarks that may be used to distinguish between the products and services of other businesses available in the market. Let's look at some additional reasons why trademark registration is important in India.[2]
- The registration of the trademark protects the brand from usage by any third party. The registration indicates that the said brand belongs to the owner of that particular trademark and the owner had every right to sue for damages in case of infringement.
- The trademark acts as a symbol of uniqueness to the product or services the business is providing in the market. It would differentiate from other products available in the market.
- The uniqueness of the logo adds a brand value which helps the customers in the market to effectively find out the product. If the person does not the name or brand of the product then they would not able to identify it easily.
- Trademarks may be a powerful and simple way to communicate. They're self-explanatory. It is easy to tell which brand your goods belong to if you have a registered trademark. When you see a half-bitten silver apple on any gadget, whether it's a laptop or a phone, you know it's an Apple.
Benefits of trademark registration:
There are certain benefits that a trademark owner has after the successful completion of the registration.[3] They are as follows:
As an asset:
As mentioned earlier, a trademark is a business's intangible asset that provides value to the company. It sets the product or service apart from the market's other offerings. Trademarks are more or less equivalent to brands for attracting customers, standing out from the crowd being easily recognized. The brand of the business or the trademark acts as a marketing tool. It is a symbol of a company's dedication to its reputation, integrity, and quality that aids consumers in making purchase decisions. The value of an asset grows with time, much like in the real estate industry. Similarly, when a company grows, the value of its trademark increases dramatically. Trademarks, like actual assets, can be bought, traded, or used as collateral for a bank loan. Therefore, it can be stated that trademark registration can be a major asset for the business.
Affordable cost for the registration:
Trademark registration in our country is relatively inexpensive. Depending on how quickly the government processes the application for trademark registration, it could take anywhere from 6 months to 2 years to process the application and grant the certificate. The application that was submitted first will be given priority over those that were submitted later. If the "mark" proposed by the other party is similar to the "mark" proposed by you, the trademark application for that party may be rejected.
10 years of validity:
The trademark is valid for the following 10 years after it has been registered. There are no legal responsibilities, fees, or other statutory requirements to retain trademarks in the ten years between now and then. The trademark certificate may also be renewed immediately before it expires, exactly like a passport, and the owner can protect his or her trademark from third parties. If we look attentively, we can see that trademark registration is significantly less expensive in the long run and can be kept up to date indefinitely.
Company Name can be sued for trademark infringement:
The business name cannot be similar to or identical to a registered brand, according to the Companies Act of 2013. This clause can be used to prevent the corporation from using certain names in the future. A business name cannot be confusingly similar to or identical to a trademark. A corporation cannot be registered under the same name as a trademark after it has been registered. Entrepreneurs can utilize the above-mentioned provision to restrict company names they want to use in the future for their firm. Existing business owners should also register a trademark in their company name to avoid future problems.
One such case is The Coca Cola Company v. Bisleri International Pvt. Ltd. [4]Hereby, under a master agreement, Bisleri sold and transferred the MAAZA brand, as well as formulation rights, know-how, intellectual property rights, and goodwill for India, to Coca-Cola. In 2008, the defendant firm registered the MAAZA trademark in Turkey and began exporting fruit drinks under that name. Coca-Cola filed a lawsuit seeking a permanent restraining order as well as damages for trademark infringement and passing off.
The court imposed an interim restraining order, claiming trademark infringement, barring the defendant (Bisleri) from using the MAAZA brand in India and for export.
Investment in advertising and branding is safeguarded:
Advertising and branding are essential for any firm in today's competitive marketplace. In order to promote their brand among consumers, companies spend money on a variety of advertising mediums such as digital, newspaper, radio, and television. Anyone can claim a brand that hasn't been trademarked. As a result, filing a trademark registration for the trademarks prior to the start of advertising campaigns is essential.
It shields the business from the unfair competition:
Registered trademarks can be used as an effective weapon against unfair competition. Today, the market is full of imitators and counterfeiters who abuse brand names that have been inadvertently used for their own benefit. Registered trademarks are an effective deterrent to such unfair competition. Under the Trademark Law, trademark owners take legal remedies against unauthorized use or imitation of trademarks by third parties.
Documents required for the registration of the Trademark:
As the procedure for the registration is lengthy and time-consuming, there are certain documents which is required in order to submit the registration. The documents required are sub-divided into various types of business like a sole proprietorship, partnership, company, and start-ups.
Documents required for a sole proprietorship or individual entity:
Every individual whether Indian or foreign national can easily register a Trademark in India by presenting the required documents. The documents which are identical and are required for the sole proprietorship businesses are as follows:
- A copy of the recommended logo, preferably in black and white (this is optional). If the logo is not provided, a trademark application for the word may be filed in its place.
- A completed and signed Form 48. This document authorizes a Trademark Attorney to file a trademark registration application on the applicant's behalf.
- A photocopy or a counterfeit of the claimant’s identity evidence, which can be any of the following: PAN Card, Aadhar Card, or may other documents for identification.
- A photocopy of the claimant’s address evidence, such as a recent utility bill, telephone bill, or other documentation.
Documents required for Partnership firm/Company - Small enterprises and start-ups:
The cost of trademark registration in India varies from Rs. 4500 to Rs. 9500. The cheaper trademark registration charge of Rs. 4500 applies to start-ups, small businesses, individuals, and sole proprietorships, while the government-mandated trademark registration fee of Rs. 9500 applies to all other business organizations. Individual applicants must now produce an Udyog Aadhaar registration certificate in order to be classified as a small business. The following details are also required in addition to the Udyog Aadhaar registration.
Documents required for Partnership firm/Company:
The required documents for any partnership firm or company or LLP are as follows:
- Copy of logo (which is optional).
- Signatory’s identity proof.
- Signatory’s address proof.
- Duly signed Form-48.
- Incorporation certificate or partnership deed.
- Udyog Adhar registration certificate.
Documents required for other applicants:
This category includes all those companies who do not have Udyog Adhar Registration, they will have to submit the following documents:
- Copy of logo (which is optional).
- Signatory’s identity proof.
- Signatory’s address proof.
- Duly signed Form-48.
- Incorporation certificate or partnership deed.
Step-by-step procedure:
The submission of a trademark registration application, inspection of the trademark, publication or advertisement of the trademark, opposition (objections) if raised/found, registration of the trademark, and ten-year renewal of the trademark are all phases in the trademark registration process. [5]
The process of registering a trademark is straightforward, however, it is recommended that you hire the help of an experienced trademark lawyer to make the process easier and more reliable.
1. Searching for a suitable trademark:
The applicant should be cautious while choosing a trademark. Because there are so many different types of trademarks available, it's necessary to do a public search of the Trade Marks Registry's trademark database to ensure that the trademark is unique and that no other trademarks are comparable. The trademark search exposes all registered and unregistered trademarks on the market. This also displays any potential trademark competition.
2. Filling the trademark application:
This is the second step where the application proceeds with the trademark application. Depending on the goods and services that a given firm interacts with, the claimant can file a single-class or multi-class application. The trademark application form is FORM TM-A, which may be filed online through IP's official website or in person at the Trademark Office, depending on the jurisdiction.
A Trademark registration application must be accompanied by a number of papers that explain the trademark that is being applied for registration. Furthermore, an affidavit of the user or the claimant must be supplied if the application alleges prior use of the trademark. It must state the usage and provide evidence of prior use.
3. Government officials examine the application:
Following the trademark application filing, the Examiner i.e. the government authorities, is required to submit an examination report following an exhaustive investigation of the trademark application in accordance with the Trade Marks Act, 2016. Some concerns may or may not be mentioned in the examination report presented by the authorities, depending on whether they are absolute, relative, or procedural. The Trademark Authority will issue an examination report within 30 days after receiving the registration application. A reply must be produced within 30 days of receiving the examination report, explaining the reasons and proof for any objections, as well as a request to waive them.
4. After the examination:
Suppose the Examining authority, i.e. the Trademark Authority, is dissatisfied with the response or the said objections are not tackled, the Examining authority, i.e. the Trademark Authority, may hold a hearing. If any objections remain, the Examiner may either validate the application by transferring it to the journal for publication or reject it.
5. Trademark advertisement:
The indicated trademark is published in the Trade Marks Journal for a period of four months after the registration application has been accepted. The primary goal of the publication and publicity is to persuade the general public to submit an opposition to the mark's registration. The Trade Marks Journal is published weekly on Mondays and may be viewed on the Registry's official website.
6. Public opposition:
Further, when the advertised or published trademark has been advertised and published in the journal, any member of the public or any person aggrieved can file a notification to oppose the registration of the advertised or published trademark. Form TM-O must be used to file a notice of opposition within four months of the trademark being published in the Trademark Journal. If a trademark application is challenged, the correct legal procedure must be followed, which includes filing a counter-statement application, producing documentation, and having a hearing to get the trademark registration.
7. Trademark registration:
Registration is the final phase in the process, which comes when the claimant has overcome any kind of restraints and objections to the trademark registration. Furthermore, if there stand no objections to the trademark's registration within the advertisement period i.e. four months or the time period in which the trademark had been published, the trademark is issued with a registration certificate which is auto-generated, issued within a week. The registration is valid for 10 years from the day it is completed, following which it must be renewed from time to time within a given stipulated time frame.
[1] Yahoo!, Inc. v. Akash Arora & Anr. (1999) 78 DLT 285.
[2] EBIZFILING, https://ebizfiling.com/blog/necessity-importance-of-trademark-registration-in-india/#:~:text=A%20registered%20trademark%20establishes%20ownership,in%20whichever%20manner%20you%20want, (last visited, June 08, 2022).
[3] LEGAL RAASTA, https://www.legalraasta.com/benefits-of-trademark-registrations/, (Last visited, June 08, 2022).
[4] Coca Cola Company v. Bisleri International Pvt Ltd & Others, On 20th October, 2009.
[5] HELPLINE LAW, https://www.helplinelaw.com/business-law/TRADERP/complete-procedure-for-trademark-registration-in-india.html, (Last visited June 08, 2022)
