A Trademark is a sign capable of distinguishing the goods or services of one enterprise from
those of other enterprises. Trademarks are protected by intellectual property rights. It is a brand or
name associated with a service or product of an individual or company. It is a unique mark
through which the consumers identify a product or service. It differentiates the product
manufactured or service provided by an individual or an entity.

For example:

• The Nike Swoosh logo is a trademark.
• The Phrase “Just Do It” is a trademark.
• The Coca-Cola logo and the distinctive script of the word “Coca-Cola” are trademark.

There are 7 different types of Trademarks that are registered in India:

1. Product Mark
2. Service Mark
3. Collective Mark
4. Certification Mark
5. Shape Mark
6. Pattern Mark
7. Sound Mark

One of India‟s most substantial types of Trademarks is the Product mark. It is a mark linked to the products or goods, but it does not include services. The use of product marks is to recognize the source of a product and differentiate the products manufactured and sold by one person from the others.

Product trademarks help consumers identify trusted and high-quality products. They also prevent other businesses from using similar branding that might confuse customers or benefit from the established reputation of a brand.

For example:

• Apple‟s logo is a trademark of their products, such as iPhones and Mac-Books.

• The red and white color scheme of Coca-Cola is trademarked to identify its soft drinks.

• The shape of a Coca-Cola bottle itself is even trademarked, as it‟s easily recognized and linked to their product.

A service trademark is similar to a product trademark, but instead of identifying a product, it identifies and distinguishes a service provided by a business or organization. This type of trademark is used to protect the branding of services rather than tangible goods.

Examples of service trademarks include:

• FedEx: The name and logo are trademarks for its shipping and delivery services.

• Hilton: The brand name and logo are trademarks for its hotel services.

• Uber: The name “Uber” and its logo are service trademarks for ride-sharing services.

The mark used by the group of companies and protected by the group collectively is termed collective marks. The effect is used to represent or inform the public at large about the unique idea of the product. It is used to promote certain products with specific characteristics in that field.

Examples of Collective Marks:

• The “Olympic” symbol: Used by members of the International Olympic Committee (IOC) to denote affiliation with the Olympic Games.

• “Fair Trade Certified”: This collective mark is used by various producers or manufacturers who meet Fair Trade standards.

Benefits of Collective Marks:

• Brand Recognition: It helps the group create a stronger collective brand identity.

• Consumer Trust: It assures consumers that the product or service meets specific criteria that are common to the group’s members.

• Marketing Power: Members of the collective can use the mark to attract customers who value the standards and reputation associated with that mark.

A certification mark is a special type of trademark used to indicate that goods or services meet a particular standard, quality, or characteristic set by the owner of the mark. The key difference between a certification mark and other types of trademarks (like collective marks) is that the owner of a certification mark does not use it to identify their own goods or services. Instead, it is used by others to show that their goods or services have been certified to meet certain criteria.

Examples of Certification Marks:

• “UL” (Underwriters Laboratories): This Examples of Certification mark indicates that a product has been tested for safety and meets the relevant safety standards. It is used by many manufacturers, but the UL organization itself doesn‟t make or sell any of those products.

• “Fair Trade Certified”: This mark indicates that the product has met fair trade standards, ensuring fair labour practices and sustainable environmental practices. It can be used by companies whose products meet these criteria.

Benefits of Certification Marks:

• Consumer Trust: It gives consumers confidence that the product or service meets recognized standards of quality, safety, or ethical production.

• Market Differentiation: For businesses, using a certification mark can help differentiate their products from others in the market by signalling to consumers that they meet high standards.

• Brand Reputation: A certification mark can enhance the reputation of a product or service, making it more attractive to consumers who are concerned about quality, safety, sustainability, or ethical practices.

A mark used to indicate the shape of goods, their packing, etc., are termed Shape Mark as provided by the Trademark Act. It is used only when it is likely to present the product‟s shape. These shape marks make it different from the other products. If the form has some distinctive features, such effects can be registered under the Trademark Act.

Examples of Shape Marks:

• Coca-Cola Bottle: The unique contour of the Coca-Cola glass bottle is a well-known shape mark. Even without the label, consumers recognize the bottle shape and associate it with Coca-Cola.

• Toblerone Chocolate Bar: The triangular shape of the Toblerone chocolate bar is a distinctive shape mark. It is easily identifiable and sets it apart from other chocolate bars.

• Red Sole of Louboutin Shoes: The red sole of Christian Louboutin shoes is a famous shape mark. The distinctive red sole is often associated with luxury, high-end fashion, and the brand itself.

• Pringles Can: The shape of the Pringles can is trademarked as a unique and recognizable design in the snack industry.

Why Shape Marks Are Important:

• Brand Identity: Shape marks help businesses build a strong, recognizable brand identity that goes beyond just logos and names. A product‟s shape can become just as closely linked to a brand as its visual logo.

• Differentiation: Shape marks help a company differentiate its products from others in the marketplace, especially if competitors try to replicate a successful product‟s look or feel.

• Legal Protection: Having a shape mark registered provides legal protection against competitors who might attempt to copy the product shape, reducing the risk of brand confusion.

A mark that comprises a pattern capable of identifying the product or services that originate from a particular undertaking and can be distinguished from the other project can be termed the Pattern Trademark as provided by the Trademark Act. The method of evaluation is similar to other Trademarks.

Examples of Pattern Marks :

• Louis Vuitton‟s Monogram Pattern: The famous LV monogram pattern used on its bags and accessories is a classic example of a pattern mark. The design itself is unique and tied directly to the luxury brand.

• Burberry‟s Checkered Pattern: The distinctive checkered pattern used in Burberry‟s clothing and accessories is protected as a pattern mark. This design is a key part of the brand‟s identity and is instantly recognizable.

• Tiffany & Co.‟s Blue Pattern: Tiffany‟s signature blue colour and accompanying pattern design are part of the brand‟s recognition and trademark.

• Gucci‟s GG Supreme Pattern: The repeating GG pattern on Gucci products is a good example of how a pattern mark can become an iconic representation of a brand, used across a variety of products.

• Nike‟s Swoosh and Dotted Patterns: Nike uses various patterns that accompany the famous Swoosh logo on certain product lines, such as shoes or sports apparel. These patterns contribute to brand identity.

Benefits of a Pattern Mark:

• Visual Identity: A well-designed pattern can help businesses establish a strong visual identity and make their products stand out.

• Brand Recognition: Patterns that are consistently used help consumers identify and associate a product with a particular brand. Over time, these patterns can become as recognizable as logos or names.

• Protection from Imitation: Once registered, a pattern mark helps protect the specific design from being copied by competitors, providing legal recourse against infringement.

• Versatility: A pattern can be applied in various ways across different products or packaging, making it a flexible tool in building a cohesive brand identity.

A sound mark is a type of trademark that protects a distinctive sound used to identify and distinguish the goods or services of one business from another. Unlike traditional trademarks (like logos or names), a sound mark focuses on a specific audio cue or melody that consumers can associate with a particular brand.

For a sound to be registered as a sound mark, it must be unique, distinctive, and capable of being identified by consumers as representing a specific source, just like any other type of trademark.

Examples of Sound Marks:

• NBC Chimes: One of the most famous sound marks is the NBC chimes. The three-note sound (“dong-dong-dong”) is immediately recognized as associated with NBC television and radio broadcasts.

• Intel’s “Intel Inside” Jingle: The four-note sound associated with Intel‟s “Intel Inside” campaign has become synonymous with the brand and is used as a sound mark to represent Intel‟s products.

• MGM Lion Roar: The iconic roar of the lion in the opening sequence of movies produced by Metro-Goldwyn-Mayer (MGM) is a well-known sound mark that instantly evokes the MGM brand.

• Apple Startup Sound: The chime that plays when an Apple device starts up is another example of a sound mark. It is uniquely associated with Apple products and has become a recognizable part of the user experience.

• Coca-Cola’s “Holidays are Coming” Jingle: Coca-Cola‟s jingle used in holiday ads, especially during Christmas campaigns, is an example of a sound mark used to create a seasonal association with the brand.

Why Sound Marks Are Important:

• Brand Differentiation: A unique sound can help a brand stand out in a crowded marketplace. It offers another way to make the brand recognizable beyond visual logos or names.

• Emotional Connection: Sound marks can create an emotional connection with consumers. For example, jingles or signature sounds can evoke positive feelings and memories associated with a brand.

• Legal Protection: Once registered, a sound mark is protected under trademark law. This means that other businesses cannot use a sound that is too similar and might confuse consumers.

How Sound Marks Are Different:

• Visual vs. Auditory: Unlike traditional trademarks, which are based on logos, words, or design, sound marks focus entirely on an audio element.

• Consumer Recognition: The key to registering a sound mark is that it must be distinctive and immediately recognizable by the public as associated with a specific business, much like a logo or brand name.

Challenges with Sound Marks:

1. Distinctiveness: The sound must be unique and not a generic or commonly used sound (like a standard doorbell ring). This can be a hurdle in registering sound marks, as many common sounds might not be distinctive enough.

2. Proof of Recognition: Businesses may need to show that the sound has gained distinctiveness through use in commerce. This often requires proving that consumers identify the sound as coming from a specific source, which can take time.

3. Non-Functionality: As with other trademarks, the sound cannot serve a purely functional purpose. For example, a product beep that signals when the battery is low wouldn’t be trademarked as a sound mark because it‟s essential for the function of the product.

Registering a Sound Mark:

To register a sound mark, businesses must:

• Provide an audio recording of the sound.

• Describe the nature and use of the sound in connection with the product or service.

• Show that the sound has acquired distinctiveness through consistent use and recognition in the marketplace.

As per Section 18 of the Trade Marks Act, 1999 any person “claiming to be the proprietor” of the trade mark „used‟ or „proposed to be used‟ by him may make an application in the prescribed manner for registration of his trade mark.

“Any person” is wide enough to include any individual, company, or association of persons or body of individuals, society, HUF, partnership firm, whether registered or not, Government, trust etc. [Section 3(42), General Clauses Act, 1897]

Company
A company may make an application for registration of a trade mark in its own corporate name. In the case of a company incorporated outside India, the country of incorporation and the nature of registration, if any, is to be mentioned.

Firm
A partnership firm shall make the application in the names of all trading within the firm partner. When including the name of a minor in the partnership, the name of guardian representing the minors should also be mentioned.

Trust
Application may be made in the name of a trust, represented by its managing trustee/chairman etc. Government The Central or State Government or any undertaking/company owned or controlled by such Government may also make application for registration of trade mark like any other person.

Benefits of registering a Trademark:

1. Trademark registration allows a person the right to sole use of the mark in regards to the services or goods. In addition, the most important purpose in registration of a Trademark comprises powerful answers against any unauthorized use. Trademark registration allows the proprietor to begin litigation against infringement.
2. Trademark registration also prevents others from using similar marks by making a mark easy to find when searching for Trademark availability searches. This also prevents problems before they arise.
3. Trademark registration safeguards against Trademarks that may sound too confusing.
4. Trademark registration designates the mark on the use of the application date, which is important in a system where the first use wins. Your rights are restricted to a geographic area.
5. Trademark registration affords national notice of ownership, stopping others from claiming a subsequent adoption of the mark. 
6. A registered Trademark may be designated as a security, which means that the Trademark may be pledged as collateral to obtain loans in the same way other properties may be bonded.
7. Regarding tangible property, your Trademark is considered a valuable, intangible asset. Trademark registration entails the attachment of goodwill and reputation to a product.

A TM (™) sign denotes an unregistered Trademark, which is a symbol often used to advertise or brand products when they have applied for Trademark registration. Companies may use the Trademark superscript, (™), after text, pictures, or other content they claim as their own but have not been formally registered with a regulatory authority. Occasionally, businesses will use ™ to indicate their first usage or that they have applied for registration. From a business perspective, it suggests that an individual selling a particular product or service believes that its identity is unique.

The R (®) symbol on a product indicates that it is a registered Trademark. This means that the logo enjoys legal protection as per the Trademarks Act, 1999. Trademark registrations carry a validity of ten years with a possibility for an extension by following the renewal process. If a person or business utilizes the registered name, logo, or symbol without the owner’s prior consent, they may be prosecuted for Trademark infringement.

At present processing of Trade Mark application is done completely through TM electronic processing System and filing of application is allowed in hybrid mode, i.e. online as well as offline. Currently online filing has reached around 98%. Moreover, all applications received offline get digitized at its initial stage and movement of the file is done through complete electronic mode thereafter.

A brief description of stage wise processing in Trade Mark Registration is as follows –

A. Pre-Examination Processing:

i. Filing of application: A Trade Mark Application may be filed online or offline. After digitization of offline applications, both online and offline applications are merged and proceed further for processing through the Trade Mark system.

ii. VIENNA Codification: If applied mark consists of figurative elements, codification of the figurative elements is done as per VIENNA Agreement and then application moves for examination. Trade Marks applied as word per se directly proceed for examination. It is expected that all applications which may require VIENNA Codification or otherwise should be processed expeditiously and serially as per priority based on the date of filing of application.

B. Examination of Applications:

It may be noted that allotment of applications for the examination is done by the automated system serially on the basis of the date of filing. Examination in Trade Mark Registration is done in two stages, first examination report is prepared by an Examiner and then the application and examination report is forwarded to Examination Controller for approval. Examination Controller evaluates the examination report, and if found proper, approves it and thereafter the examination report is issued to applicant. However, if some deficiency is noted by the Controller, the examination report is reverted/referred back to the concerned Examiner with suggestions for resubmission/re-examination.

At this stage, application may be accepted or an objection may be raised as per provisions of the Trade Mark Act. In case it is accepted, it will be published in Trade Mark Journal, else examination report will be issued to the applicant containing office objections which needs to be replied by the applicant within 30 days from the date of receipt of examination report.

It is expected that examination should be done expeditiously and serially as per priority based on the date of filing of application or if any compliances are required, expeditiously and serially as per priority based the date of last compliance, if any.

C. Post Examination Processing:

i. Consideration of Reply:
After receipt of examination report, applicant needs to submit his reply to the office objections within one month time and if he fails to do so, the application is abandoned for want of reply.

If reply is submitted within the prescribed period, the same is considered by the authorized officers for the purpose. Here also, the application is allotted to the authorized officers through the Trade Mark system serially on the basis of the date of filing of the response to the examination report. At this stage, the authorized officer may accept application and the same is to be published in the Trade Mark Journal. In other cases, where the office objections cannot be waived or found not met, a hearing opportunity is offered to to the applicants in all those cases where a decision can adversely affect the interest of the applicant, a hearing opportunity is given as per law.

It is expected that if reply is submitted against the office objections, the same should be considered by the authorized officers expeditiously and serially as per priority based the date of filing of response to the examination report.

ii. Show-cause hearing:
In case the objection/s raised by the office are not met after consideration of reply to the examination report, the application moves for show cause hearing. In show cause hearing, the hearing notices are issued serially to the applicant/ agent through the system and allotment of the cases to the Hearing officers is also done by the TM system automatically.

The scheduling of applications for hearing should also be done serially based on the date of consideration of reply by the authorized officer.

D. Post Advertisement Processing:
After the acceptance of the mark, trademark is published in Trade Mark Journal. If no opposition is filed within four months from the date of publication of the trademark, the published trademark becomes eligible for registration.

The issuance of registration certificate is done through automated Trade Mark system. The certificate gets automatically issued if no opposition is filed within the prescribed period or where the application has not already been withdrawn by the Registrar of Trade Marks at the request of the applicant. The Trade Mark once registered is valid for 10 years. The same can be renewed after every 10 years for an indefinite period by paying the prescribed fee on the prescribed form.

E. Opposition:

If the trademark is opposed by any third party after the publication, the same needs to be disposed of as per rules after giving proper hearing opportunity to both the parties. If the opposition is dismissed, the trade mark proceeds for registration and registration certificate is issued to the applicant. In case opposition is allowed, the application gets refused as per law.
It is expected that if any application is opposed, the same should be disposed serially based on the compliance or non-compliance by the party (i.e. Applicant or Opponent) as per provisions of the Trade Marks Act and Rules.
Procedure for disposal of the Rectification proceedings shall be similar to the opposition procedure subject to the provisions of the Trade Marks Act and Rules.

F. Post Registration Trade Mark Management:

It is possible for the registered proprietor to record the post registration changes pertaining to proprietor name, address, address for service, assignment or registered user, etc. in the Register of Trade Marks by filing a request on the prescribed form, with the prescribed fee. In case the concerned officer examining the request raises some objections and requires some compliance on part of the applicant, the same should be processed ordinarily within 30 days from the date of compliance by the applicant. It is also a practice of Registry to send one month notice to previous registeredproprietor in case any change in proprietorship by way of assignment or transmission is filed by the applicant. In this case, the request can be processed only after expiry of one month notice period as mentioned above.

It is expected that the post registration request shall be examined and processed serially based on the date of filing of the request and date of compliance of the requirements, if any.

The renewal requests received by the Registry are processed through an automated TM system serially based on the date of filing of the request.

Section 25 of the Act allows registration of a trade mark for a period of 10 years. Further Section 25 allows renewal of registration for successive periods of 10 years, from the date of the original registration or the last renewal.

With a view to facilitate renewal of registration, Section 25(3) provides for a grace period of one year for payment of renewal fee after expiry of registration, subject to the payment of the prescribed surcharge. Sub- section (4) provides for restoration of the trade marks to the register and renew the registration on payment of renewal fees.

Unlike patents, copyright or industrial designs, trade mark rights can last indefinitely if the owner continues to use the mark. However, if a registered trade mark is not renewed, it is liable to be removed from the register.

Should the rights holder of a trade mark come across a trade mark that is deceptively similar to their mark and which has been published in the Trade Marks Journal, they can oppose the impugned mark within three months of the publication of the journal.
A trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. Priority in adoption and use of a trade mark is superior to priority in registration [Consolidated Foods Corporation v. Brandon & Co. Pvt. Ltd., AIR 1965 Bom.35].

In India, the classification of goods and services for the purpose of trademarks follows the International Classification of Goods and Services (Nice Classification), which is a standardized system adopted by most countries to categorize products and services under distinct classes.

The Nice Classification is divided into 45 classes:
• Classes 1 to 34 cover goods.
• Classes 35 to 45 cover services.
This classification helps the Indian Trademark Office to systematically organize and register trademarks. When you apply for a trademark, you must specify the class or classes under which your goods or services fall.
Here‟s a brief overview of the classes:

Classes for Goods (1-34)

1. Class 1: Chemicals used in industry, science, and photography, as well as in agriculture, horticulture, and forestry.
2. Class 2: Paints, varnishes, lacquers, preservatives against rust, and wood preservatives.
3. Class 3: Cosmetics and cleaning preparations.
4. Class 4: Industrial oils and greases; lubricants; fuels.
5. Class 5: Pharmaceutical and veterinary preparations, sanitary preparations, and dietetic food.
6. Class 6: Common metals and their alloys, metal building materials.
7. Class 7: Machines and machine tools; motors and engines (except for land vehicles).
8. Class 8: Hand tools and implements (manual).
9. Class 9: Electrical and scientific apparatus, including computer hardware, software, and audio visual equipment.
10. Class 10: Medical apparatus and instruments.
11. Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, etc.
12. Class 12: Vehicles; apparatus for locomotion by land, air, or water.
13. Class 13: Firearms; ammunition and projectiles; explosives
14. Class 14: Precious metals and their alloys; jewelry, watches, and clocks.
15. Class 15: Musical instruments; music stands and stands for musical instruments; conductors’ batons.
16. Class 16: Paper, cardboard, and goods made from these materials, office supplies.
17. Class 17: Rubber, gutta-percha, gum, asbestos, mica, and goods made of these materials.
18. Class 18: Leather and imitations of leather, bags, and other goods made of these materials.
19. Class 19: Non-metallic building materials, such as cement, bricks, tiles.
20. Class 20: Furniture, mirrors, and frames.
21. Class 21: Household or kitchen utensils and containers, combs, sponges.
22. Class 22: Ropes, strings, nets, tents, tarpaulins, and sails.
23. Class 23: Yarns and threads for textile use.
24. Class 24: Fabrics and textiles.
25. Class 25: Clothing, footwear, and headgear.
26. Class 26: Lace, embroidery, ribbons, and artificial flowers.
27. Class 27: Carpets, mats, and rugs.
28. Class 28: Games and playthings, gymnastic and sporting articles.
29. Class 29: Meat, fish, poultry, and other food products.
30. Class 30: Coffee, tea, cocoa, rice, pasta, and other food items.
31. Class 31: Agricultural, horticultural, and forestry products.
32. Class 32: Beers, mineral waters, and other non-alcoholic beverages.
33. Class 33: Alcoholic beverages (except beers).
34. Class 34: Tobacco products, smokers’ articles, and matches.

Classes for Services (35-45)

35. Class 35: Advertising, business management, marketing, retail, and wholesale services.
36. Class 36: Financial, monetary, and insurance services.
37. Class 37: Building construction, repair, and installation services.
38. Class 38: Telecommunications services.
39. Class 39: Transport, packaging, and storage of goods; travel services.
40. Class 40: Treatment of materials, recycling, printing, and other services involving manufacturing.
41. Class 41: Education, entertainment, sporting, and cultural activities.
42. Class 42: Scientific and technological services, including IT services and legal services.
43. Class 43: Services for providing food and drink; temporary accommodation.
44. Class 44: Medical, veterinary, and agricultural services.
45. Class 45: Legal services, security services for the protection of property and individuals.

How to Choose the Correct Class:
When applying for a trademark, you need to identify which class or classes best fit your goods or services. This classification ensures that the scope of protection is clear and that your trademark application will be evaluated correctly.

• If your product or service falls under multiple categories, you can register your trademark in multiple classes. However, each additional class may require an extra fee.
• It‟s important to carefully select the appropriate class, as the trademark rights will only apply to the goods or services within the selected class.

Importance of Proper Classification:

• The classification determines the scope of protection your trademark will receive.
• If another party has already registered a similar trademark in the same class, it could result in an opposition to your application.
• The trademark classification system helps businesses and consumers easily identify the types of goods or services a trademark represents.

Yes, trademarks are territorial in nature. This means that a trademark only provides protection within the country or jurisdiction where it is registered. If you have a trademark registered in India, it will only be legally protected within India. If you want protection in other countries, you would need to register the trademark separately in those countries.

Under the Trade Marks Act, 1999, there are several grounds for refusal of registration of a trademark. These grounds are outlined in Sections 9, 11, and 12 of the Act, and they ensure that trademarks that could confuse the public, are descriptive, or are otherwise unsuitable for registration are not granted protection.

Grounds for Refusal of Trademark Registration:

1. Absolute Grounds for Refusal (Section 9):

This refers to marks that are not registrable based on their inherent characteristics. A trademark cannot be registered if:

Lack of Distinctiveness: A trademark must be distinctive and capable of distinguishing the goods or services of one business from another. If it is too generic or descriptive, it will be refused.
Example: “Best Fruits” for a fruit vendor.

Descriptive Marks: Marks that directly describe the goods or services or their characteristics cannot be registered.
Example: “Fresh Water” for bottled water.

Marks that are Non-Distinctive: If the mark is not capable of distinguishing the goods or services, such as common names or words, it will be refused.
Example: “Apple” for fruit.

Deceptive Marks: A trademark that misleads the public, especially in terms of geographical origin, quality, or nature of the goods/services.
Example: “Swiss Watches” for watches that are not made in Switzerland.

Geographical Names: A trademark consisting of a geographical name (unless the name has acquired distinctiveness through use).
Example: “Paris Fashion” for a non-French fashion brand.

Customary Marks: Marks that are customary in the current language or in the bona fide practices of the trade.
Example: “Premium” for a premium brand of products.

2. Relative Grounds for Refusal (Section 11):
These grounds concern similarity with existing trademarks and potential confusion among consumers. A trademark can be refused on these grounds if it

Is Similar to an Existing Trademark: If the trademark is identical or confusingly similar to an already registered trademark in relation to similar or identical goods or services, it may be refused.
Example: “Coca-Cola” for a soft drink company may prevent the registration of a similar name, “Cola-Cola,” for the same type of product.

Likelihood of Confusion: If the trademark is likely to cause se confusion among the public due to similarity with a previously registered mark.

Well-Known Marks: If the trademark is identical or similar to a well-known mark (whether or not it’s registered in India), registration may be refused to protect the well-known mark from dilution.
Example: The mark “Nike” cannot be registered for shoes or clothing by a different company because “Nike” is a well-known mark.

3. Marks against Public Morality or Order (Section 9):

A trademark that is offensive or contrary to public morality, decency, or the law will not be allowed registration.

• Obscene Marks: Trademarks that contain offensive, vulgar, or obscene content.

• Marks Harmful to Public Order: Trademarks that could harm public order, morals, or are contrary to accepted standards of decency in society.

4. Marks Containing Prohibited Words or Symbols (Section 9 and Section 11): Certain words, symbols, and emblems cannot be used in trademarks.

State Emblems: Marks containing the national flag, coat of arms, or any emblem of India or another country, unless authorized.

Example: The use of the Indian national flag or its parts.

Religious Symbols: Marks that contain religious symbols, deities, or terms that could cause offense to religious sentiments.

Example: Using the image of a deity as a trademark.

5. Application in Bad Faith (Section 11):
A trademark application may be refused if it is found that the application was filed in bad faith. This typically happens when the applicant has no genuine intent to use the trademark or is attempting to take unfair advantage of another company‟s established reputation.
Example: A company applying for a trademark that is similar to a famous competitor‟s mark in order to harm its brand reputation or mislead consumers.
6. Trademarks Already Registered (Section 11):
If the trademark is already registered or is applied for by someone else in the same or similar goods or services, it can be rejected. This is to avoid confusion in the marketplace and to uphold the first-to- file principle.
7. Marks Not Used in Commerce (Section 11):
A trademark that is not being used in commercial trade in connection with the goods or services it is registered for can be refused or revoked. Non-use of the mark can lead to its cancellation after a certain period (typically five years) under Section 47.
8. Non-Compliance with Formal Requirements:
If the trademark application does not meet the formal requirements of the Indian Trade Marks Act, such as insufficient or incorrect details, the application may be refused.

If it is a word it should be easy to speak, spell and remember. The best Trademarks are invented words or coined words or unique geometrical designs. Please avoid selection of a geographical name, common personal name or surname. No one can have monopoly right on it. Avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super etc.) It is advisable to conduct a market survey to ascertain if same/similar mark is used in market. Trademark shall be unique and distinctive. It shall not be same in any manner like phonetically, descriptively and in appearance. Trademark creating confusion with other existing or applied trademark is undesirable. Adding prefix or Suffix also doesn’t create uniqueness and will always is objected by the department.

Yes Corrections cane be made in trademark application, but the basic principle is that the Trademark applied for should not be substantially altered affecting its identity. Subject to this changes are permissible according to rules detailed in the subordinate legislation.
Four credentials cannot be changed in existing application:
1. Applied trademark;
2. Owner Name;
3. Class of trademark;
4. Logo (minor variations are allowed in logo).

It can be removed on application to the Registrar on prescribed form on the ground that the mark is wrongly remaining on the register. The Registrar also can suo moto issue Notice for removal of a registered Trademark. But the basic principle is that the trademark applied for should not be substantially altered affecting its identity.

Yes, you can register multiple trademarks under one GST or business. There is no direct relationship between GST registration and trademark registration, meaning a single business can hold several trademarks. Each trademark can represent a different product, brand name, or logo under the same business entity.

However, it is important to note that each trademark application must be filed separately, and you will need to pay a separate registration fee for each application. For instance, Patanjali Ayurveda Limited has over 140 trademarks in just one class, covering various products with different names and logos, all under the same business entity.

This flexibility allows businesses to protect their diverse range of products and brands while operating under one GST or business registration.

A registered company name provides protection against its use by another company or LLP in a similar business, as it ensures that no other company or LLP can use the same or a deceptively similar name for their business. However, this protection does not extend to trademark rights, meaning a third party can still register a trademark under the same name.

On the other hand, if you obtain a trademark for your company name, it offers stronger protection. A registered trademark gives you exclusive rights to use that name under the specific class of goods or services for which the trademark is registered. As a result, no other company, LLP, or individual can use that name in the same class, ensuring broader protection.

Therefore, trademark protection supersedes the protection afforded by company incorporation. In case of any infringement, an existing entity with a registered trademark can approach a commercial court to enforce its intellectual property rights and prevent unauthorized use.

Yes, it is possible to register your logo, name, and tagline under a single application, but it depends on how you structure the registration.

Trademark registration typically includes two types of applications:

1. Word Mark: This type of registration is for brand names or taglines. If you only want to register your brand name or tagline (text-based elements), you would opt for a Word Mark registration.

2. Device Mark: If you want to register your brand name and logo together, you would opt for a Device Mark. This type covers both text and visual elements (like logos). The cost of the trademark registration for a Device Mark typically includes the logo registration as well.

In short, if your name, logo, and tagline are used together as part of a brand identity, you can register them as a single Device Mark. However, if you want separate protection for each element, you may need to file additional applications.

No, trademarks are not valid for a lifetime. A trademark is initially valid for a period of 10 years from the date of registration. After this period, the trademark can be renewed by filing an application for renewal and paying the required fee. If the trademark is not renewed, it will be considered abandoned and can be used by anyone else.

Even if the owner of the trademark passes away, the trademark can still be transferred to the legal heirs of the deceased. The ownership of the trademark can be transferred, allowing the heirs to maintain the trademark rights and continue its use.

No, trademark registrations are territorial in nature, meaning they are only valid within the country where they are registered. A trademark registered in India provides protection only within India. For protection in other countries, you will need to file separate trademark applications in each of those countries.

However, there are international mechanisms, such as the Madrid Protocol, which allow businesses to apply for trademark protection in multiple countries with a single application. But, the protection still depends on the laws of each individual country where the trademark is registered.

Yes, a Digital Signature Certificate (DSC) is required to file a trademark application online in India. In addition to the DSC, the applicant must also create an account on the Trademark Registry portal.

While it is advisable to consult a trademark attorney to assist you with the application process (especially if you are unfamiliar with the procedures), a DSC will still be needed for filing the application online. The attorney can help you navigate the registration process, meaning you won’t need to worry about obtaining the DSC yourself.

Though it’s possible to file a physical application, it is much more cumbersome and time-consuming compared to the convenience of online filing.

 Yes, trademark registration can be done online through the e-filing gateway available on the official Trademark Registry website. The online process is convenient and efficient, allowing applicants to submit their trademark applications, track the status, and make payments electronically.

However, trademark applications can also be filed physically at the front office counter of the respective trademark office or sent by post. While physical filing is an option, it is generally considered more cumbersome and time-consuming compared to the online process.

Yes, the Trademark can be registered online through the e-filing gateway available at the official website. However it can also be filed physically at the front office counter of the respective office or can be sent by post.

To check the status of your trademark registration, follow these simple steps:

1. Access the IP INDIA Website: Visit the official IP INDIA website at

https://ipindiaservices.gov.in/eregister/eregister.aspx.

2. Select National/IRDI Number: On the website, choose National/IRDI Number for checking the trademark status.

3. Provide Trademark Application Number: Enter your Trademark Application Number in the provided field.

4. View Trademark Application Information: Click on the application number, which will appear as a hyperlink, to view the detailed trademark application information and its current status.

By following these steps, you can easily track the progress of your trademark application and stay informed about its status.

To check if a similar trademark has already been registered for the same type of goods, you can conduct a Trademark Search on the official Indian Trademark Registry website. Here‟s how to do it:

1. Visit the Official Website: Go to the official Intellectual Property India website at https://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx.

2. Select the Search Type: Under the dropdown menu in the “Search type” section, select
“Wordmark”.

3. Choose Search Options: You will have three search options:

• ‘Start with’: Displays all trademarks starting with the text you entered.
• ‘Contains’: Displays trademarks that contain the text you entered.
• ‘Match with’: Displays trademarks that exactly match the text you entered.

4. Enter the Applicable Class: Enter the appropriate class of goods or services for which you want to check the trademark.

5. Click on Search: After entering the details, click on Search, and a list of trademarks that are either registered or have applications pending for registration will be displayed.

This search helps you determine if any similar trademarks have already been registered for the same type of goods, reducing the risk of conflicts or infringement.

Trademark searches refer to any action taken for the purpose of determining whether and/or a Trademark is used in commerce. Trademark searches can be narrow in scope or can include results from every avenue for Trademark protection for every mark is remotely similar to the mark that is the subject of the search. An appropriate search strategy will consider the nature of the mark, the nature of the goods/services the mark covers, the timeline for bringing the mark to commerce, and the applicant’s allocation of resources.

After all the prerequisites have been met, the next step in the Trademark registration process would be the filing of the Trademark application. The application is submitted online to the relevant intellectual property office, requesting an examination and approval of the mark. It includes crucial details such as the applicant’s information, a representation of the mark, and the specified class of goods or services for which it is intended to be used. Accuracy and completeness are paramount at this stage to ensure a smooth progression through the Trademark registration process step by step.

Once the application is filed, the process for Trademark registration necessitates the payment of requisite fees. These fees cover the costs associated with processing the application, conducting examinations, and other administrative functions. Applicants need to be aware of the fee structure applicable to them, based on the type of entity and the number of classes their Trademark is being registered in https://ipindia.gov.in/form-and-fees-tm.htm

This stage involves a meticulous review of the proposed Trademark by the intellectual property office to assess its uniqueness and availability. The objective is to ensure that the mark meets the criteria for distinctiveness, non-descriptiveness, and adherence to other legal formalities. An examination report is prepared by the Examiner, highlighting any objections that may cause hindrance in the Trademark registration process.

Addressing objections raised during the examination stage is extremely crucial to take the Trademark registration process further. The applicant must respond to the objections meticulously within 30 days from the date on which they were raised. If the examiner is satisfied, they will proceed to the next stage. However, if unsatisfied, the examiner may summon a show cause hearing to resolve the issue.

Upon settlement of the objections, the approved Trademark application moves to the publication stage. The mark is published in the Trademark journal, a publicly accessible document inviting potential third-party oppositions. Third-party oppositions may arrive on grounds like the similarity of the mark with other marks. These need to be settled before the application is finally processed for Trademark Registration.

In instances where third parties raise objections or oppositions during the specified period, resolution becomes a critical aspect of the Trademark registration process. This step involves negotiation, settlement, or legal proceedings to address the concerns raised by opposing parties. Only after a successful resolution of all public oppositions, the department will consider proceeding with the application.

The last milestone of the Trademark registration process step by step is achieved when the applicant is granted a Trademark Certificate. This official document serves as tangible proof of the exclusive rights conferred to him. Once issued, it remains valid for 10 years from the date of application. Throughout this period, the Trademark remains protected against unauthorised use and plagiarism.

Trademark protection is not perpetual, Trademark owners must proactively renew their Trademarks to maintain their rights. Failure to renew before the expiry may result in the loss of its protection. The renewal process is almost similar to the original registration process. Moreover, there is no restriction on the number of times a Trademark can be renewed.

No use of mark prior to registration is not mandatory in India. Trademark that are proposed to be used can also be registered in India. But it is always suggestable to mention the user detail.

Here’s the distinction:

• Actual Use: If the trademark is already in use in India, you need to provide evidence of use, such as invoices, advertisements, labels, or packaging showing the trademark being used in commerce. You can file the application under the section that indicates the trademark is already in use.

• Proposed Use: If the trademark is not yet in use but you plan to use it in the future, you can file for registration without needing to provide proof of use at the time of application. This is common for businesses planning to launch a product or service under the trademark.

However, after the application is accepted and before the registration is granted, the Indian Trademark Office may request proof of use, especially if the trademark faces opposition or if the applicant is applying for a trademark that has not yet been used in commerce.

Under the Trade Marks Act, 1999 in India, certain marks cannot be registered as trademarks. The key conditions that prevent the registration of a trademark are as follows:

1. Deceptive or Confusing Marks: A trademark will not be registered if it is likely to deceive or cause confusion among the public. This includes marks that may be mistaken for another existing mark.

2. Marks Hurting Religious Sentiments: If the trademark contains matter that is likely to offend or hurt the religious susceptibilities of any class or section of citizens in India, it will not be registered.

3. Scandalous or Obscene Matter: A trademark will not be registered if it contains any scandalous or obscene matter, such as vulgar or offensive content.

4. Prohibited Use Under the Emblems and Names Act, 1950: Marks that include names, emblems, or symbols that are prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 cannot be registered. This includes marks that include the names or symbols of the Indian government, national flags, or other restricted emblems.

The fees for trademark registration in India depend on several factors, such as the type of applicant and the class of goods or services you’re registering the trademark under. Here is a breakdown:

1. For Individual/Startups/Small Enterprises:

• Online Filing: ₹4,500 per class
• Physical Filing: ₹5,000 per class

2. For Other Entities (such as Companies, Partnerships, or LLPs):

• Online Filing: ₹9,000 per class
• Physical Filing: ₹10,000 per class

Documents Required for Trademark Registration:

1. Name of the Owner of the Trademark:
The applicant’s full name (individual, company, LLP, etc.).

2. Address of the Owner of the Trademark:
The full address of the trademark owner, including the country.

3. Nature of Business – Name of Products or Services:
A description of the goods or services that the trademark will represent. This should correspond with the relevant Nice Classification of goods or services.

4. Trademark/Logo:
A clear representation of the trademark/logo to be registered. This could be a word mark, a logo, or a combination of both.

5. Date of First Use of the Trademark:
If the trademark is already in use, you need to provide the first date of use in commerce. If it is a proposed trademark (not yet used), you can state that it will be used in the future.

6. Mail ID:
A valid email address for communication purposes regarding the trademark application.

7. Mobile Number:
A contact phone number to receive updates about the trademark registration process.

8. MSME/Start-up Registration Certificate (if applicable):
If you are a registered Micro, Small, or Medium Enterprise (MSME) or a Start- up, you may provide the relevant certificate to avail of lower trademark application fees. This is optional but could result in fee reductions for small businesses or start- ups.

Yes, you can use the TM symbol in your logo after you have filed an application for trademark registration with the Trademark Registry. The TM symbol indicates that a trademark application has been made, and it serves to notify others that a trademark is pending registration.

Using the TM symbol acts as a warning to potential infringers and counterfeiters, signaling that you are claiming exclusive rights over the mark, even though the registration process is still underway.

However, once your trademark is officially registered and you receive the registration certificate, you can use the ® (registered) symbol, which signifies that the trademark is officially registered with the trademark office.

Trademark registration is a lengthy process, and it typically takes around 18-24 months to obtain registration in a straightforward case, without any objections or oppositions. This timeline can vary depending on factors like the complexity of the application, the workload of the trademark office, and whether there are any challenges or oppositions to the application.

However, once you file your trademark application, the trademark application number is usually issued within 1 to 2 days, allowing you to track the status of your application.

It’s important to note that during the registration process, your trademark may be examined, and any objections or oppositions will need to be addressed, which could add time to the overall process.

Trademark Watch is a service that helps monitor the trademark registration process to ensure that no potential issues arise that could affect the protection of your trademark. Since trademark registration is a lengthy and multi-stage process, the Trademark Watch service keeps a close eye on each stage of the process, as well as any subsequent developments.

This service is especially helpful for trademark owners to identify and address any conflicting marks, oppositions, or potential infringements that may arise during the registration process. The watch service alerts clients about any new applications that may be similar or identical to their trademark, enabling them to take timely action to protect their intellectual property.

In short, Trademark Watch helps ensure that you do not miss any critical stage that could impact the success of your trademark registration, providing peace of mind throughout the entire process and beyond.

To understand the remedies for the refusal of the application, it is essential to know the grounds on which the Trade Mark Application was rejected. For this purpose, the applicant should request a copy of the grounds for refusal. Once the copy is received, within 30 days of the refusal notice, the applicant can file a review petition.

Section 127 (C) of the Trade Marks Act 1999 empowers the Registrar, on an application made in the prescribed manner, to review their own decision regarding the registration. This review application must be filed in form TM-M within one month from the date of the application or within an additional one month as allowed by the Registry. The review application should be accompanied by a statement setting out the grounds for the review.

The review of the decision is generally considered by the same officer who passed the initial decision. After giving the parties an opportunity for a hearing, the Registrar will then dispose of the review petition, either allowing the Trademark to be advertised in the journal or maintaining the refusal. If the applicant is still unsatisfied with the outcome, they can appeal to the Intellectual Property Division of the High Court.

A Trademark has to have one basic feature that is it should be unique and create a brand identity for a product. So if a Trademark is such that does not create any brand for a product can’t be Trademarked.

In general,

• Generic words can’t be Trademarked. For example you can’t Trademark the words like TV, Fridge, scooter, car etc.
• The names of the cities and countries cannot be Trademarked.
• The names of Gods and Goddesses and the names of religious books cannot be Trademarked. For example you can’t Trademark Lord Ram or Ramayana
• Surnames cannot be Trademarked under normal circumstances. For Example you can’t Trademark Sharma
• Names of Constitutional Posts or Government posts can’t be Trademarked. For examples you can’t Trademark Prime Minister of India
• Words which denote illegal or Immoral acts can’t be Trademarked. For example you can’t Trademark *Let’s cheat or Let’s grope
• Words which are prohibited under names and emblems act can’t be Trademarked. For example, you can’t Trademark the official sign of Government of India.

Following is the step-wise guide for Trademark Registration in India:

• Step 1: Trade Mark Search:

This step is of utmost importance before filing a Trademark application, as it aids the owner in determining whether their Trademark is unique and distinctive and whether there exists another Trademark that closely resembles the owner’s mark. Merely having a unique brand name in mind does not guarantee that it is not already registered by another business, making the Trademark search an essential and unavoidable process. This search can be conducted either through the Trademark Office or via the Online Portal. On the Online Portal, you can select a specific class and search the database accordingly.

• Step 2: Prerequisite Documents: The following are the documents required during Trademark Registration:

1. Name of owner of trademark;
2. Address of owner of trademark;
3. Nature of business – name of products or services specifically;
4. Trademark/ Logo;
5. Using date of trademark;
6. Mail ID;
7. Mobile Number.
8. MSME/ Startup registration certificate 

• Step 3: Examination of Trade Mark Application: After the submission of the Trademark Application, the Examiner must submit an examination report which may or may not include any objections that can be absolute, relative or procedural.
• Step 4: Respond to the Examination Report: Within 30 days of receiving the examination report, you must file a reply to assert the arguments in favor of the application and address any objections that may have been raised. This period provides ample opportunity to address objections and resolve any concerns raised during the examination process. If the application is not yet accepted after fulfilling the conditions, then a hearing can be requested. If the examiner believes that the Trademark should be registered then, it will be published.
• Step 5: Acceptance and Publication: After a thorough examination, the Trade Mark is published in the Indian Trade Mark journal. The purpose of this advertisement and publication is to invite objections from anyone who may oppose the registration of the Trade Mark, providing a fair opportunity for such opposition. In case of opposition, the applicant is required to present a case justifying why the registration should be granted to them. Upon receiving an opposition, a counter-statement must be filed within two months using Form TM-O.
• In the event of a refusal, the examiner declines to register the Trade Mark.

                                                                OR

• If the Trade Mark Registrar approves the application without any objections, a Trade Mark Registration Certificate will be issued, bearing the Trade Mark Registry Seal

Yes, we can file a single application for multiple classes of goods and/or services under the Indian trademark system (and many other jurisdictions). This is a convenient way to seek protection for a trademark across different classes without having to file separate applications for each class.

How It Works in India:

• The Indian Trademark Office allows applicants to register a trademark for multiple classes within a single application, as long as the trademark is being used (or is intended to be used) for all the selected goods and/or services.

• Each class represents a specific category of goods or services, and you can register your trademark under multiple classes (e.g., Class 9 for electronics and Class 25 for clothing) if your business operates in those areas.

Is it Always Allowed?
Not all goods/services can be covered in one application. If the goods or services are not related or belong to very distinct markets, the Trademark Office may advise you to file separate applications for different classes. This is because the trademark should be relevant and related to the goods/services in each class.

Fees:
For filing under multiple classes, you‟ll need to pay a separate fee for each additional class beyond the first. The fee depends on whether you’re filing as an individual, start-up, or company, and whether you‟re filing online or physically.

In Summary:

• Yes, we can file a single application for multiple classes in India.
• We must pay a separate fee for each additional class beyond the first.
• It’s a cost-effective and efficient way to protect your brand across various types of goods and service.

Before making application for registering the mark, one must check the name availability.

Following are the steps to check it:

Step1 : Go to the official website of Trademark registry for Public Search from the link given herewith: 

https://tmrsearch.ipindia.gov.in/tmrpublicsearch/

Step 2: Choose the search type “Wordmark”

Step3: Choose the search parameter, such as “starts with, “contains, or “phonetically similar;

Step4: Enter the proposed trademark name in the search box;

Step5: Enter the relevant class you want to applied for;

Step6: Click on the search button;

The search results will show you that the proposed mark you want to registered is whether already registered by someone else or not, or if yes then the possibility of getting the same mark is less because it will likely to conflict with already registered mark. One shall use all possible permutation and combination while making search for best results.

Any person can check the status of Application from the site of Trademark Registry, you just need the Application Number for the same.

Following are the steps for checking the status of Application:

Step1: Go to the Official site of Trademark Registry from the link given herewith: 

https://tmrsearch.ipindia.gov.in/eregister/

Step2: Click on the Trademark Application /Registered Mark option;

Step3: Select the National/ IRDI Number;

Step4: Enter the Trademark Application number and captcha code and click on the view button;

Step5: Click on the Trademark number;

Step6: On the top left side, you can see the status of your application.

Goods and services are classified from Class 1 to 45 for Trademark. You can check within which class your Goods or Services falls  from the website given herewith:

https://euipo.europa.eu/ec2/

Following are the steps to check it:

Step 1. Go to the website as above mentioned;

Step 2. Once you reached the website, Click on the “Classification Resources” tab which is shown on the top interface of the page;

Step 3. After that, click on the “Nice Class Headings”

Step 4. Class wise list of terms will be displayed on the page;

Step 5. Enter the name of Goods or Services in the “Search bar” you want to search;

Step 6. After that you will get the List of terms under which your searched item falls.

In the initial stage while examining the application if applicant defaults in filing proper documents or essential information, registry sends a notice regarding this and the application made by the applicant faces the formality check fail.

When after examination, the registry establishes that the applicant has passed all the basic checks, the trademark status shows ‘formalities check pass.’ The trademark registry checks basic requirements, such as uploading the POA, translation, and applicant details.

The following are some reasons behind an application faces the Formality check fail:

• Incorrect Class– Trademark is divided into 45 classes. The appropriate class need to be selected after checking the list of items a particular class covered. If the class is not correct, your applicaton will not proceed futher and marked as “Formality check fail” in Trademark by the department.
• Improper Information- The name, address, state and other details must be as per power of attorney; category of mark, class, product description, agent registration number, etc. all the relevant information must be filled.
• Improper Documents- Power of Attorney, User Affidavit must be properly notarized, If applicant opt for MSME/ Start-up benefit in Trademark, then in such a case MSME/ Start-up Registration certificate must be attached with the application. Also on POA & User Affidavit appropriate amount of stamp duty shall be made as per Schedule I of Stamp act of respective state.
• Inappropriate goods or services description- Description must be provided accordingly for the goods or services applicant is dealing with.

MIS F is reply to formality check.  Applicant can file a Formality check from the tab “miscellaneous reply” by selecting “reply to formality check (MIS-F)” and providing an application number.

If your application status is showing “Marked for Exam”, it shows that your application will be revieved by the examiner to determine its registrability. Examiner will check whether the application made by you qualifies for registration or not. Trademark examiner will also check the documents and informations submitted by you.

When Trademark examiner serves an Examination report containing objection under Section 9 (absolute grounds) and Section 11(relative grounds), the trademark application status shows Objected with an alert- awaiting for reply to examination report.

If the examiner examines the trademark application and, after hearing the applicant’s response to the objection, he/she refuses the application, the trademark status shows ‘refused.’

The trademark status can also show ‘refused’ in cases when a third party is able to oppose the trademark application successfully.

The following are the reasons for refusal of Trademark Registration:

• Lack of Distinctiveness;
• Similarity to existing Trademarks;
• Deceptive or Misleading in nature;
• Improper Classification;
• Lack of proper description of Goods or Services;
• Misrepresentation in respect to false statements of ownership, user detail of trademark;
• Similarity to well-known Trademarks;
• Offensive or Immoral Trademarks;
• Failure to respond to Trademark registry actions;
• Infringement of existing Trademarks;
• Misleading Trademarks which are likely to deceive people;
• Lack of evidence of use;

If the registration is refused the applicant has the final option of appealing to the Intellectual Property Appellate Board (hereinafter referred to as IPAB). An appeal to the IPAB must be filed within three months of the date of issuance of the refusal order by the registrar.

If any trademark is added to the trademarks journal and advertised there, the status of the trademark application shows ‘Advertised before accepted.’ Any third party can oppose such trademark application within 4 months of being advertised.

If no opposition is lodged against the trademark, the trademarks officer has to accept the trademark application before issuing the certificate. Once the certificate is issued, the status changes to ‘advertised and accepted’ and later changes to ‘registered.’

The simple motive behind the publication of Trademark in the TM Journal is to give general public a window of 4 months to raise their objection on the applied Trademark if the said mark is likely to create conflicts or unnecessary trouble to their already applied/ registered marks.

The Indian Trademarks Office publishes the Trademark Journal of India and contains information on trademarks registered or applied in India. It is a public record that anybody can occasionally inspect and raise public opposition if needed.

When a third party opposes the application within 4 months from the advertisement date, then the trademark application status shows as ‘opposed.’ A third party is most likely to file an opposition only if the trademark application is not  similar to another trademark already in use.

The trademark application status shows as “Abandoned” when the applicant failed to respond within the stipulated time period prescribed under the act.

The following are some reasons, why an application is abandoned:

• No response has been filed to an examination report within the stipulated period of one month from receipt of examination report;
• If the applicant forgets to file a counter statement within 2 months of receiving the notice of opposition, the trademark status will change to ‘abandoned;
• Show-cause hearing has not been attended when the hearing was scheduled;

A trademark application requires a minimum of 18-24 months to get approval if the application is accepted without any opposition or objection. However, if any opposition or objection is raised against the application, it might take more than 24 months to approve your trademark application . However, the trademark application number is usually issued within one or 2 days after filing.

Even though a TM can be used without filing application for registration but using it without registering will not provide legal protection against its infringement, and your competitors can still copy your logo.

Trademark examiner will reject the application if the class you have applied and the description is not matching or can issue formality check fail notice. Trademarks are divided into different classes, and if your trademark is not in the appropriate class, it may be rejected.

The best solution to avoid the unnecessary delaying in registration is to consult with a trademark attorney to ensure that your application is filed in the appropriate class with appropriate goods or services description.

To register a Trademark, owner needs to go through the following steps:

1. Trademark Search;
2. Filing an Application;
3. Examination Process;
4. Post Examination Procedures;
5. Publication of the Trademark Application;
6. Notice of Opposition;
7. Filing of Counter Statement against Notice of Opposition;
8. Registration;

The response to office objections mentioned in the examination report, should be submitted by the applicant or applicant’s authorised agent concerned, as the Reply to Examination Report.

In case the applicant/applicant’s authorised agent has a level III digital signature he may send the Reply to Examination Report online through the gateway provided at the home page of the office website www.ipindia.nic.in

The Reply to Examination Report may also be submitted at the Head Office/appropriate office of the Trade Marks Registry, personally or by post.

 Any affidavit and supporting documents may also be submitted along with the Reply to Examination Report

In case of objections as to formality requirement(s), the applicant should comply the requirements as desired by the office. The applicant may however submit to establish that as per Trade Marks Act and Rules the formality requirement(s) called by the office are not necessary. For example if the office may has called for consent of the person whose portrait appears on the trademark, the applicant may state that portrait appearing on the trademark is not of a particular person, but it is general picture of a man or woman.

In case of objection to the effect that goods or services mentioned in the application do not fall in the class mentioned in the application, the applicant may file a request for amendment of the application by correcting the class; the applicant may however submit that as per classification of goods or services published by the Registrar, goods or services have been rightly classified. In case of objection to the effect that some goods or services mentioned in the application do not fall in the class, the applicant may file a request for amendment of the application by deleting items that do not fall in the relevant class. the applicant may however submit that as per classification of goods or services published by the Registrar, all items fall in the class mentioned in the application.

In case of objections on relative grounds of refusal because of identical or similar trademarks in respect of similar goods or services, existing on records, the applicant may submit to the effect that trademarks cited as conflicting marks in the examination report are different than the applicant’s trademark; or goods or services mentioned in the application are different than those covered in marks cited as conflicting in the examination report. The applicant may also produce consent/No objection from the proprietor of marks cited as conflicting in the examination report

In case the office objections to acceptance of the application for registration cannot be waived even after considering the applicant’s response to examination report, the matter is set down for hearing through the system.

This hearing commonly known as show cause hearing is scheduled and conducted at the appropriate office of the Trade Marks Registry.

A hearing notice shall be sent to the applicant/agent/attorney concerned, intimating him about the Application No. & Date of Hearing. The hearing notice shall be sent approximately 15 days before the date of hearing.

It is shown when Trademark registry had sent a Notice for Hearing and the hearing date is scheduled. The Hearing Officer shall patiently hear submissions of the applicant or applicant’s authorised agent concerned and peruse all other documents submitted or referred to during the course of hearing.

Section 9 describes “absolute grounds for refusal of trademarks” which are not prima facie “capable of distinguishing” the goods/services of one person from those of another person are devoid of distinctive character.

In order to overcome office objections raised under Section 9(1) the applicant may submit the mark has acquired a distinctive character by virtue of its prior use.

The use of trademark must be established by adequate evidence. Under section 129 of the Act, ‘in any proceeding before the Registrar, evidence shall be given by affidavit. But the Registrar may, if he thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit’.

Section 11 sets out “relative grounds for refusal”’ by reason of conflict with prior trademarks and well-known marks, however under Section 12 a mark could be registered on the basis of “honest concurrent use” when supported by evidence to that effect.

Objections raised under Section 11 can be overcome by the applicant by :

• Removing the conflicting goods/services by way of amendment;
• obtaining consent from the proprietor of the cited mark(s) under Section 11(4);
• filing evidence to establish honest concurrent use to secure registration under section 12;
• By securing rectification of register excluding such goods/service of the same description from the specification of the cited mark, under section 57;

If the applicant or his authorized agent is not prepared or is unable to appear for hearing and files an application for adjournment of hearing, the Hearing officer may allow the request for adjournment and then a next date will be fixed for hearing. However no adjournment will be given on frivolous grounds. Hearings may also be adjourned and may be fixed on another date due to administrative reasons. In all adjournments of hearing, a fresh hearing notice fixing hearing on another date shall be issued to the applicant/agent/attorney concerned.

After duly considering the evidence of use of the mark, the distinctive nature of the mark, existence of earlier similar marks, if any, the nature of goods/services covered under the application and other relevant facts, the Hearing Officer may accept the application for registration or he may accept the application with condition as to use of the trademark or limitation as to area of trade, as he thinks fit; or he may propose the application to be advertised before acceptance or may refuse to register after giving reasons of refusal.

During the course of hearing the applicant may desire to withdraw the application, or the authorised agent of the applicant may desire to withdraw the application on  behalf of the applicant. In such circumstances, the Hearing officer will require the withdrawal letter to be submitted in writing. The withdrawal letter will be uploaded in the system.

The genuineness of withdrawal letter as well as the authority of the person withdrawing the application shall be verified by the Hearing Officer on the basis of records of the application. If withdrawal of application is done by the competent person, the Hearing officer concerned will treat the application as withdrawn, enter his remarks in the system to this effect and update the status of application accordingly.

If the Hearing Officer is not convinced with the materials produced & submissions made in the course of hearing and he may refuse the application for registration after giving appropriate reasons.

A communication letter shall be generated through the system, in respect of all types of orders passed by the Hearing Officer. The said letter shall be sent to the applicant/applicant’s authorised agent concerned, latest within one week of the order.

The trademark journal contains –

• Public Notices and notifications, if any, issued by the office;
• Trade Mark applications which are accepted or ordered to be advertised before acceptance;
• Re -advertisements of applications, if ordered by any competent officer;
• Corrigenda or further notification in respect of earlier published application;
• List of trademarks, which are registered, renewed, removed, application withdrawn, etc;
• Post registration changes including Assignments/transmission recorded;
• International non -proprietary names as published by WHO from time to time;
• Other information as considered necessary to be published from time to time.

MIS-R (Miscellaneous R) is used to file the objection reply. Following are the documents attached as reply:

• A copy of examination report reply with appropriate submissions;
• A power of attorney that the applicant duly signs;
• Documented proof against the objection. This can be anything like affidavit, permission, etc.

There is no fee associated with the reply. However, as you will need the assistance of a professional for this process, they will charge you a nominal fee. Before the submission, you, as a client, would check if the reply is correct.

Once the reply has been submitted, there is a waiting time of 15 days. After this time, you will get either a positive or negative response. A positive reaction will advertise your trademark in the journal. A negative one will prompt you to appear in a trademark hearing.

The Trade Marks Act, 1999, provides for the renewal of a registered trademark for a period of ten years from the date of expiration of the original registration or the last renewal. To initiate the renewal process, the registered proprietor must apply to the Registrar of Trademark in FORM TM-R along the fees of INR 9,000 (in case of e-filing) , within one year before the expiration of last registration of the Trademark. Upon receiving the application and payment of the prescribed fee, the Registrar will renew the registration for another ten-year term.

There is no limit on the number of times you can renew your Trademark. You must remember that with every renewal, validity is extended for another ten years.

Following are the easy steps for renewal of Trademark:

Step 1: Filing of Application for Trademark Renewal;

Step 2: Verification and Examination;

Step 3: Publication in Trademark Journal;

Step 4: Issuance of Renewal Certificate;

Submit a renewal application to the Trademark Registry in Form TM-R. Include the following details:

• Trademark registration number;
• Current status of the trademark;
• Applicant’s contact information;

The Registry will verify the application and examine the trademark for any potential conflicts. It will also assess the renewal eligibility based on the validity period of the trademark and compliance with renewal requirements. If a conflict is found, the registry will raise objections and seek clarifications from the applicant. The clarification must be filed within the prescribed time frame.

No the renewal application is not published in TM Journal for opposition.

Upon successful completion of the publication period and resolution of any opposition or if no opposition arise, then the Registry will issue the Trademark Renewal Certificate. This certificate confirms the renewed validity of your trademark for the next 10 years.

The application for renewal may be made by a person who is proprietor of the registered Trademark or by a person who is his duly authorized agent.

If someone else is representing the trademark owner, a Power of Attorney is necessary.

The application for Trademark Renewal must be filed before its expiry.

You may be able to file the trademark renewal application one year prior to the expiry of its registration.

 In case the registration of the trademark has lapsed as it was not renewed before its expiry, it can be renewed within six months after its expiry with an additional surcharge in government fee of trademark renewal.

If the trademark application is not renewed, before its expiry or with additional fee within six months after the expiry date, then the trademark registration gets cancelled. A cancelled trademark can be restored if an application is filed within six months of cancellation.

The government fee for Trademark Renewal is Rs 10,000 (for offline filing) and Rs.9,000 for (for online filing) if the application for the renewal is filed before the expiry of the trademark. If the application is filed within 6 months after the expiry, the applicable surcharge over and above the renewal fees would be Rs.4,500 per class (for e-filing) and Rs.5,000 per class (for offline filing).

Yes, we can file a single application under multiple classes mentioning the proposed class and their description in the application. The procedure for filing a multiclass trademark application is similar to the procedure of filing an application under a single class. It should be noted that the government fee for filing a multiclass application is to be paid per class.

A person (including a legal entity):

• who is a citizen of India, or domiciled in India, or
• who has a real and effective industrial or commercial establishment in India, and
• who has got a registration of a trademark or whose application for registration of trademark is pending in Indian office ,

may make application for international registration of his trademark.

You can file international application of Trademark either offline (physical submissions) or through online mode from the site given herewith https://www.ipindia.gov.in/.

You must already have – or have applied for – a national trademark registration (known as your “basic mark”) through your home IP Office (“Office of origin”) before you can file an application for an international trademark registration.

Form MM-2E is used to file application for international registration of trademark under the Madrid System.

Application must be filed through the gateway for online filing of International applications made available at the official website https://www.ipindia.gov.in/

The Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. File a single international trademark application and pay one set of fees to apply for protection in up to 130 countries. Modify, renew or expand your global trademark portfolio through one centralized system.

Having regard to the practical difficulty in filing applications for registration of trademark in each country, with different laws, languages and fee payment in different currencies, an international agreement gave birth to the Madrid Protocol administered by a specialised agency of the United Nations, called the World Intellectual Property Organisation (WIPO). This protocol facilitates international registration of trademark and provides a means for securing protection to such marks in one or more member countries under the Madrid System.

You can use the Madrid System if you are a national of or have a domicile or business in any of the 130 countries covered by the Madrid System’s https://www.wipo.int/export/sites/www/treaties/en/docs/pdf/madrid_marks.pdf

The Madrid Union is made up of Contracting Parties to the Madrid Protocol.

The office of the Contracting Party in which you apply for or register your basic mark is referred to as the “Office of Origin“. In your international application, you can select Contracting Parties in which you would like to protect your mark, or you can expand the geographical scope of your international registration under the Madrid System at a later time.

Yes, Trademark registration is subjected to territory where it gets registered. When a trademark is registered in India, the registration provides protection only within India. A trademark owner needs to obtain international trademark protection for its protection outside India. When trademark owners have national registration/application is filed for such registration of Trademark, they can apply the mark outside India and ensure that third parties do not apply for the same trademark in the global market.

The Trademarks Act, 1999 was amended to comply with the Madrid system after India became a member of the Madrid Protocol. On 21 September 2010, the Trademarks (Amendment) Act, 2010 was passed, and the international trademark registration under the Madrid Protocol was introduced in India.

With the expansion of International trade and commerce, the need to obtain protection of trademark becomes very important for commercial enterprises to register not only in one’s own home country but also in other countries. 

Basic application means an application filed under section 18 of Trademark Act, 1999 for the registration of Trademark in one’s own country which is used as a basic necessity for applying for an international trademark registration.

Basic registration means the registration granted under section 23 of Trademark Act, 1999 in one’s own country which will be used as a basic necessity for getting international registration of trademark.

Following are the requirements to be fulfilled before making application for international trademark registration:

• The applicant should be domiciled in India, be an Indian national or has an effective and real business or commercial establishment in India.
• The applicant must have a trademark registered with the Indian Trademarks Registry or must have applied for a national trademark application in India. The national trademark application/registration acts as the basis of the international application.
• The applicant should apply for an international application for the same trademark for which the national trademark registration is obtained or mentioned in the national trademark application.
• The list of goods and services in the international application should be the same as on the national trademark registration or application.
• The applicant must choose one or more Madrid Protocol member countries where they wants protection in the international application.

Any person can make application for registration of trademark internationally only if he had applied for registration or is registered owner of the trademark in their own country. After that, applicant or the registered owner may make an international application in the form prescribed by the common regulations for international registration of that trademark.

Form MM-2E is used to file application for international registration of trademark under the Madrid System. The applicant must specify all the countries in which they seek registration which are known as designated contracting parties.

The term “Contracting Party” denotes any country as well as any inter-governmental organization (the European Union, for instance) which is party to the Madrid Protocol.

The Office of Origin is the office of the Contracting Party through which the applicant derives entitlement to file the international application. It is the Office in which the basic application will have been filed or the basic registration will have been recorded.

Yes application made by the applicant for international registration be first checked by the Trademark registry. If the international application does not meet the requirements, the registrar shall not forward it to the International Bureau. A notice to comply with the requirements shall be sent to the applicant by the registry of trademark. Application will be forwarded to WIPO only after such compliances have been made within the period specified in the notice.

The Registrar of Trademarks (office of origin) will process and verify the application. After verification, the Registrar will forward the international application within the time period of two months from the date of receipt of the said application to the International bureau for registration, which scrutinizes International application received from the office of origin.

[International Bureau means office of World Intellectual Property Organisation (WIPO)].

The applicant must file the international trademark application electronically through the official IP India website and pay the handling fee. The site link is given herewith for your reference. https://ipindiaonline.gov.in/trademarkefiling/user/frmLoginNew.aspx

While scrutinizing the application by the International Bureau, if they discovered any irregularities in the application, the comments made by them will be communicated to the office of origin and the applicant’s authorised representative, who must rectify the irregularities within the prescribed period.

After completion of all the formalities, the trademark is registered in the International register. The trademark will be published in the WIPO Gazette of International Marks, and Certificate of registration will be issued.

The International bureau will subsequently notifies the designated contracting party about the International registration.

No, there is no need to file multiple application for registration of trademark, The Madrid System allows for registration in multiple jurisdiction without the need for multiple individual applications.

Applicant needs to only specify the countries where they seek registration.

Once the application is filed, the international bureau of WIPO reviews it to ensure that it complies with the Madrid System’s requirements. If the application is approved, the international bureau forwards it to the national trademark office for examination and registration.

The national offices have upto 18 months to decide whether to approve or reject trademark registration. If the trademark is approved, it is registered in each country where protection is sought.

The applicant must do a Trademark search before applying for international trademark registration.The applicant can conduct a trademark search on the WIPO’s Global Brand Database to determine if any similar or identical registered trademark exists. Website link is given herewith for your reference. https://www.wipo.int/reference/en/branddb/

The applicant must ensure that no similar or identical registered trademark exists in any of the Madrid Protocol countries where he/she is planning to apply for trademark registration. If a similar or identical trademark exists, the application will be rejected.

The WIPO will issue a notification regarding the international trademark application to each Madrid Protocol member country where the applicant chooses to obtain registration. The member countries will examine the international registration application as per the trademark regulations and rules applicable to them.

The member countries will submit the examination report and notify the acceptance or refusal of the application to the WIPO within 12 to 18 months of receipt of trademark registration application.

A handling fee shall be payable to the registrar for certification and transmittal of international application to the International Bureau and fees shall be paid in Indian rupee electronically along with the application.

The international registration of trademark at the International Bureau shall be valid for a period of ten years and may be renewable  for further ten years upon payment of the required fees to the WIPO.

An international registration remains dependent on the mark registered or applied for in the Office of origin, for a period of five years from the date of its registration.

If the basic registration cease to have effect or the basic application is refused or withdrawn or treated as abandoned within the five-year period, the international registration will no longer be protected.

The list of members can be found at –

https://www.wipo.int/export/sites/www/treaties/en/docs/pdf/madrid_marks.pdf

The list of members is also available on Form MM 2E, the application for international registration of mark.

The following is the procedure to file an application for international registration of trademark:

• Application must be filed only through the gateway for on line filing of International applications made available at the official website [email protected],
• The Trade Marks Registry (TMR) verifies the eligibility of the applicant and contents of the International Application vis-à-vis basic registration/application;
• When the International Application is not proper, the TMR sends a deficiency letter to the email of the applicant. The applicant shall prepare a reply to the deficiency letter and upload it along with supporting documents, if any, through the gateway;
• When the International Application is proper the TMR certifies and transmits such applications to the International Bureau of WIPO;
• The fee for international application and the individual fee/Complementary fee for designated countries wherever applicable is to be paid directly to the International Bureau of the WIPO, in Swiss Francs;
• The IB of WIPO examines such applications for formalities;
• In case of any irregularity (regarding the classification of goods or services, for instance) is found, the IB communicates such irregularities to the TMR as well as to the applicant;
• If the International Application is found to be proper by the IB of the WIPO. It is registered with the IB, published in the WIPO gazette and transmitted to the offices of the designated Contracting Parties.

On April 8th of 2013, the Hon’ble Minister of Commerce & Industry, the Government of India, deposited the instrument of accession to the Madrid Protocol, with the Director General of the WIPO and accordingly, the provisions of international registration under the Madrid Protocol came into effect in India since July 8th of 2013.

Provisional refusal means a declaration by the Office of origin, outlining the grounds on the basis of which protection cannot be granted to the international application made by the applicant.

Some common grounds for provisional refusal in India include conflicts with existing trademark registrations or applications, descriptive or non-distinctive trademarks, and marks that are against public policy or morality.

When the Indian trademark office issues a provisional refusal, it provides a detailed explanation of the grounds for refusal and a deadline for the applicant to respond.

A reply to provisional refusal is to be filed within 30 days from the date of receipt of provisional refusal. An extension of one month can be sought for replying to the provisional refusal. The reply must be filed by the authorised representative competent to practice before Indian TM Registry or by Applicant if it is having an office/address for service in India.

If you receive a provisional refusal for your trademark application in India, you have the right to respond to the refusal. Here are the steps you should follow to respond to a provisional refusal in India:

• Review the grounds for refusal: Carefully review the provisional refusal notice to understand the reasons for the refusal. This will help you to prepare a well-crafted response.

• Analyse the refusal: Based on the grounds for refusal, analyse your trademark application and assess whether there are any issues that need to be addressed. You may need to provide additional evidence, arguments or amendments to your application to overcome the grounds for refusal.

• Prepare a response: Based on your analysis, prepare a detailed response that addresses the specific issues raised in the provisional refusal. Your response should be in writing and include all the necessary evidence and arguments to support your trademark application.

• Submit your response: Submit your response to the Indian Trademark Office within the deadline specified in the provisional refusal notice. Failure to respond within the deadline will result in the abandonment of your trademark application.

• Attend a hearing, if required: In some cases, the Indian Trademark Office may require a hearing to be held to discuss the issues raised in the provisional refusal. If a hearing is required, attend the hearing and present your case.

The basic fee for filing international application for registration of trademark, which is consists of either 653 Swiss francs for a mark in black and white, or 903 Swiss francs for a mark in colour. This fee is for payment to the International Bureau.

 It is recommended that the applicant use the electronic Fee Calculator, which is available on the Madrid system website at the following address:

http://www.wipo.int/madrid/en/fees/calculator.jsp

You can renew your international trademark registration at the earliest six months before the ten-year term of protection expires, or within the six-month grace period following its expiry. Important! Surcharges apply if you renew during the grace period.

The applicant may directly pay the fees to the International Bureau in Swiss France or through the trademark registry.

If he opt to pay the fee directly to the International Bureau then in such scenario, the applicant had to firstly notify the Director General for the same.

The international application may be in English, French or Spanish, according to what is prescribed by the Office of origin.

The Office of origin is entitled to restrict the choice of the applicant to just one language, or to two languages, or indeed, the Office may permit the applicant to choose between any of the three languages.

Thus, the applicant should ascertain from the Office of origin which language or languages must or may be utilize, in advance of the filing of the application through that Office.

Yes, you can mention an additional address for correspondence. Where the applicant requires that that communications be sent to an address other than that as mentioned in the application form, field of “Address for correspondence” is filled.

Yes, two or more applicants may jointly file a single international application, provided that the basic application or the basic registration is jointly owned by them.

Where there is more than one applicant, the name and address of each applicant should be given, if necessary using a continuation sheet.

The following documents are required for making an international application of trademark:

• Identity proof;
• Address proof;
• Business Registration( CIN, Partnership, MSME);
• International Application Form MM-2E;
• Copy of Trademark- Word or Logo;
• Trademark Registration Certificate/Application Master Page proof (if application is pending) in Domestic country.

You need to keep the following things in mind when applying for International Trademark Registration-

• Ensure that the trademark is not yet registered in the countries you are seeking registration.
• Make an International trademark search on WIPO’s broad database to check all registered trademarks. Search can be done from the link attach herewith https://branddb.wipo.int/
• The search can be performed using the text, image or class of goods or services.
• You must get the trademark in your home country before applying for international trademark registration.
• Your country must be a part of the Madrid System
• You can choose multiple countries when applying for international trademark registration, so decide beforehand which country you are going to apply and accordingly the fee will be applicable.

By following the below given steps you can Check Trademark Status –

Step 1: Access IP INDIA Website. 

https://tmrsearch.ipindia.gov.in/eregister/

Step 2: Select International Registration Number.

Step 3: Provide Trademark Application Number.

Step 4: View Trademark Application Information on clicking on application number reflecting as hyperlink.

 Before submitting your international application, double-check to ensure that your mark will not infringe on any existing trademark anywhere in the world. Of course, you can file without conducting the background check, doing so puts you at risk of being sued for trademark infringement.

The most reliable source of this kind of information is the global brand database of WIPO itself. You can conduct any trademark search by text or pictures and view the displayed results https://branddb.wipo.int/

International Classification of Goods and Services also known as the Nice Classification

It is updated every five years. Class 1 to 34 include goods and Class 35 to 45 embrace Services. Link is given herewith from where you can reach the Nice Classification.

https://nclpub.wipo.int/enfr/

Form MM-11 is filed for filing the application of renewal of international trademark.

You can renew your international trademark registration at the earliest six months before the ten-year term of protection expires, or within the six-month grace period following its expiry. Important! Surcharges apply if you renew during the grace period.

Trademark proprietors can transfer trademarks similarly to how they can transfer physical properties. One of the ways to transfer a trademark is through an assignment.

Assignment means transferring rights, interests, titles and benefits from one person to another. Assignment of a trademark means to transfer the owner’s right in a trademark to another person.

Here Assignment means absolute transfer.

A trademark license is a legal agreement that grants permission from the owner of a trademark (the licensor) to another party (the licensee) to use the trademark in connection with specified goods or services, according to terms and conditions outlined in the agreement. This permission allows the licensee to utilize the trademark for commercial purposes while maintaining the ownership rights with the licensor. The terms of the license typically include provisions regarding the scope of the permitted use, quality control standards, duration of the license, royalties or fees, and any limitations or restrictions on the use of the trademark.  

A trademark assignment is the transfer of an owner’s property rights in a given mark or marks. Such transfers may occur on their own or as parts of larger asset sales or purchases.

Trademark assignment agreements provide both the records of ownership & transfer and protect the rights of all parties.

As with other forms of intellectual property, a trade mark belongs to the registered owner. To assign ownership to another party, there needs to be an agreement between the current owner (the ‘assignor’) and the proposed owner (the ‘assignee’). This agreement will need to be signed by an authorised person and to be registered with registrar.

In the context of trademark assignment, an authorized person is someone who has the legal authority to act on behalf of the owner of the trademark. This authorization may be explicitly granted in writing, such as through a power of attorney or a formal resolution. An authorized person could include an attorney, an executive within the company, or another representative who is empowered to execute and manage the trademark assignment on behalf of the owner. It’s crucial to ensure that the person conducting the assignment has the proper authorization to do so.

The transferring party is called the assignor, and the receiving party is called the assignee.

Some of the benefits of Trademark Assignment are:

• The trademark assignment enables the owner of the trademark to encash the value of his brand.
• With the help of a trademark assignment, the assignee can obtain the rights of an already established brand.
• If a Trademark is registered but the owner is not able to monetize or move forward the business, he can assign the rights to another person for a good price and earn money out of his trademark, rather than having a Registered Trademark that cannot be monetized upon.
• In case of any dispute, the trademark assignment agreement would enable the assignor or the assignee to establish the legal right.

The following documents must be submitted to the registrar of trademark along with Form TM-P (Assignment of Trademark) :

• Trademark assignment deed.
• Trademark registration certificate.
• NOC from the assignor.
• Identification documents of the assignor and assignee.

The notarization of the assignment is to the benefit of the assignee. Also, notarising is important so that it is established that there is no possibility of wilful document fraud relating to the assignment. And so the assignment must be notarised on the right stamp duty. Further, the assignor must also submit an affidavit which is notarised mentioning that the trademark is truly theirs.

Licensing under trademark offers several benefits:

1. Revenue Generation: The licensor can generate additional income by charging licensing fees or receiving royalties from the licensee.
2. Brand Expansion: Licensing allows the brand to reach new markets or product categories without the need for direct investment, helping in brand diversification and market presence.
3. Risk Mitigation: Licensees bear certain business risks associated with the licensed products, reducing the overall risk for the trademark owner.
4. Brand Exposure: Licensing can increase brand visibility and exposure as the trademark is used in different contexts and markets.
5. Strategic Alliances: Licensing can facilitate strategic partnerships and alliances, fostering collaborative efforts for mutual benefit.
6. Flexibility: Trademark licensing offers flexibility for the licensor to adapt the changing market conditions or trends without direct involvement in new ventures.
7. Global Presence: Licensing enables the trademark owner to extend their brand globally through partnerships with international licensees.
8. Customer Loyalty: The availability of licensed products can enhance customer loyalty and satisfaction by offering a broader range of choices within the brand.

It’s important for licensors to carefully structure licensing agreements to protect the brand’s integrity and maintain control over its use.

Trademark licensing allows businesses to grant permissions for others to use their trademarks under specified conditions. Owners can generate additional revenue streams, enhance brand visibility and enter new markets through licensing agreements. Trademark Licensing serves several purposes:

• Economically beneficial for both the licensor and licensee;
• It helps in expanding business;
• It increase geographical reach;
• It increase the reputation of the goods or services;
• Ownership remains with the TM owner;
• Enhances brand promotion and Marketing.

The TM owner/holder/proprietor of the registered Trademark, (known as the licensor) has the authority to grant the trademark license to another party,(known as licensee). This license allows the licensee to use the trademark under certain conditions specified in the licensing agreement and mutually agreed consideration be paid by licensee to licensor.

A licensing agreement under trademark is a legal contract between the owner of a trademark (licensor) and another party (licensee) that grants permission for the license to use the trademark under specified terms and conditions. These agreements outline the scope of the license, including the permitted uses of the trademark, duration of the license, quality control measures, and any financial arrangements such as royalties or licensing fees.

In India, various types of licensing arrangements under trademarks can be established, including:

1. Exclusive License;
2. Non-Exclusive License;
3. Sole License;
4. Sub-License.

Exclusive Licensing grants exclusive rights to the licensee for the use of the trademark within a specified territory, for particular goods or services. Even the licensor is restricted from using the trademark in the designated manner. The licensor is also restricted to grant further licenses of the  same trademark. However, licensor retains the right to exclusively own the trademark.

In non-exclusive license, the licensee is just one of the users of the Trademark. The licensor retains his right to use and can grant further licenses as well to other parties. Even in this case, exclusive right to own the trademark lies with the licensor only.

It is similar to an exclusive license, but the licensor retains the right to use the trademark alongside the sole licensee. Both the licensor and the sole licensee are the only parties authorized to use the mark.

The licensor and the licensee both have the right to use and grant further licenses of the trademark to third parties ( sub-Licensee). The sub-licensee operates under the terms set by the original licensee.The Licensor, however is the sole and exclusive owner of the trademark.

Whether a licensee can sublicense the rights granted to them depends on the terms of the License agreement. It is important to review the agreement to determine if sub-licensing is allowed and under what conditions.

The royalties associated with trademark licensing depends on the specific agreement. These financial aspects are typically negotiated between the licensor and the licensee based on factors such as the scope of the License, exclusivity, market size, and the value of the trademark.

The duration or term of a Trademark License deed is determined by the parties involved and is specified in the agreement. It can vary from a few years to an indefinite period, depending on their mutual agreement.

In case of a violation, the licensor as well as the licensee can pursue legal remedies such as terminating the License agreement, seeking damages for breach of contract, or obtaining injunctive relief to prevent further unauthorized use of the trademark. The specific legal remedies will depend on the circumstances and the provisions outlined in the agreement.

The granting of the TM License is not considered as sale. Licensing only transfers the right to use the trademark while the ownership of the trademark rests with the proprietor himself. The rights granted are limited rights with respect to time and can range from right to uses the trademark, sell the products etc. The TM License can be an exclusive or non – exclusive one.

Step1When it is proposed that a person (Licensee) should be registered as a registered user of a trade mark, the registered proprietor (owner of trademark) and the proposed registered user shall jointly apply in writing to the Registrar in Form TM-U , and every such application shall be accompanied by—

a. the agreement in writing or a duly authenticated copy thereof, entered into between the registered proprietor and the proposed registered user with respect to the permitted use of the trade mark;

b. an affidavit made by the registered proprietor or by some person authorised to the satisfaction of the Registrar to act on his behalf,—

1. Giving particulars of relationship between the registered proprietor and the proposed registered user including showing degree of control by the proprietor over the permitted use over the trademark.
2. stating the goods or services in respect of which registration is proposed;3.
3. stating the conditions or restrictions, if any, proposed with respect to the characteristics of the goods or services, to the mode or place of permitted use, or to any other matter;
4. stating whether the permitted use is to be for a period or without limit of period, and, if for a period, the duration thereof; and

c. such further documents or other evidence as may be required by the Registrar.

          Step 2 When the above requirements has been complied with, the Registrar, if satisfied with the submissions shall register the proposed registered user in respect of the goods or services. 

          Step 3 The Registrar will publish it in the Journal and send intimation to both the trademark owner and the other registered users of the same trademark. In case, the Registrar is not satisfied with the contents of the application, a hearing can be appointed where the parties can together correct the deficiencies.

The application for registration of trademark license shall be made within 6 months from the date of formation of the agreement between the parties. The Trademark Office (TMO) will then register the user if it finds everything satisfactory. The user will then become a “Registered User” of the trademark.

No. the Licensor does not lose its exclusive right as the owner to the registered trademark when the Licensor enters into a Licensing Agreement as the Licensor only grants the Licensee the right to use its registered trademark, not transferring its exclusive trademark right to the Licensee under a Licensing Agreement.

The term assignment means to transfer all the rights and title of the said property to the other person. Assignment involves aabsolute transfer and does not allow the holder to keep back anything. The person assigning is called the Assignor and the person to whom the assignment is done is called the Assignee.

The word License means to authorize or permit someone to do something. It contains a permission which may be limited by number of uses, or territory where to use, or purpose for which it is to be used, or even the period for which it may be used.

For both licensing and assignment, there is a need to have an agreement between the parties. The Licensing Agreement is between the licensor and licensee while the Assignment deed is between the assignor and the assignee.

There are 4 types of assignments:

1. Complete Assignment;
2. Partial Assignment;
3. Assignment with Goodwill of Business;
4. Assignment without the Goodwill of Business;

In this case, all the rights that are vested in the registered trademark are assigned to a third party. The assignee then enjoys all the rights that the original trademark owner had. The assignee would then be the sole owner of the trademark having rights to assign, trade, and market it and also to stop others from using it without authorisation.

The trademark proprietor assigns the trademark to another person with respect to only specific services or goods. The transfer of ownership in the trademark is restricted to specific services or products.

When an assignment is made with goodwill, the rights and value associated with the trademark are given for using the mark for the products and services already being sold by the assignor.

The trademark proprietor assigns to the assignee rights and entitlements in a trademark with respect to the products or services that are not in use. The assignor restricts the transfer of the rights in the trademark in the case of assignment without goodwill. The assignor assigns with the condition that the assignee is not entitled to use the trademark relating to the goods or services already in use by the assignor.

The transmission of a trademark typically refers to the transfer of ownership rights in situations where the original owner passes away or there is a change in the ownership due to legal proceedings, inheritance or other circumstances. Transmission may occur through the distribution of assets in a will, the settlement of an estate or a court order.

The granting of the TM License is not considered as sale. Licensing only transfers the right to use the trademark while the ownership of the trademark rests with the proprietor himself. The rights granted are limited rights with respect to time and can range from right to uses the trademark, sell the products etc. The TM License can be an exclusive or non – exclusive one.

Section 38 of Trademark Act,1999 govern the Assignment and Transmission of Registered Trademark. It states that a registered trademark can be assigned and transmitted, with or without the goodwill of the business associated with it. This can apply to all the goods or services covered by the registered trademark or only to a specific subset of goods or services.

Section 39 of the Trademark Act, 1999 governs the Assignment and Transmission of Unregistered Trademark. It states that an unregistered trademark can be assigned and transmitted, with or without the goodwill of the business associated with it.

When a trademark owner dies, the fate of the trademark depends on various factors such as estate planning, succession and applicable laws.

If a trademark owner dies, the rights to the trademark are transmitted to the heirs or beneficiaries according to the owner’s will or under the law of intestacy if there is no will. The heirs or executors must then follow legal procedures to record the transmission with the trademark office to ensure continued protection and enforceability of the trademark.

Section 2(1) (zg) defines well known trademarkas:

A well-known trademark in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to the other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first- mentioned goods or services.

The recognition and protection of well-known trademarks in India are governed by the Trademark Rules, 2017.

It enables the Registrar to declare a specific brand to be “well known”. In accordance with the new regulation, a trademark owner may submit a form TM-M application with a request to the Registrar for the designation of the mark as “well-known”.

The rule aim to strengthen the protection of well-known trademarks and prevent their unauthorized use. Popular trademarks are acknowledged in India based on their reputation on a national, international, and cross-border level.

Section 11(6) of the act specifically lays down the various factors to be taken into account by the registrar while determining whether a trademark is well known trademark:

1. the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;
2. the duration, extent and geographical area of any use of that trade mark;
3. the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
4. the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent that they reflect the use or recognition of the trade mark;
5. the record of successful enforcement of the rights in that trade mark, in particular the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.

Section 11(9) provides that the registrar shall consider the following conditions for determining a “Well known Trademark”

1. that the trade mark has been used in India;
2. that the trade mark has been registered;
3. that the application for registration of the trade mark has been filed in India;
4. that the trade mark-                      A. is well-known in; or                       B. has been registered in; or       C. in respect of which an application for registration has been filed in, any jurisdiction other than India, or
5. that the trade mark is well-known to the public at large in India.

As per Rule 124 of Trademark Rules, 2017 any person may file a request for determination of a trademark as well-known along with an official fee of INR 1,00,000. This fee is for one mark only.

Any person may, on an application in Form TM-M and after payment of fee as mentioned in First schedule (i.e.INR 1,00,000), request the registrar for determination of a trademark as well-known. Such request shall be accompanied by a statement of case along with all the evidences and documents relied by the applicant in support of his claim.

Before determining a trademark as well-known, the registrar may invite objections from the general public to be filed within 30 days from the date of invitation of such objection.

When trademark registry determined the trademark as well-known, the mark shall be published in the Trademark Journal and included in the list of well-known trademarks maintained by the Registrar.

The Registrar may, at any time, if it is found that a trademark has been erroneously or inadvertently included or is no longer justified to be in the list of well-known trademarks, remove the same from the list after providing due opportunity of hearing to the concerned party.

The applicant can make appeal to the Intellectual Property Appellate Board from any decision of the Registrar of Trademark. The appeal shall be made within 3 months from the date of such decision (when registrar remove your name from the list of “Well known Trademarks”.

The Trademark Act, 1999 provides protection to well-known trademarks at two levels:

• Against the registration of any similar mark
• Action against any misuse of well-known trademark

A trademark agent is a professional authorized to represent individuals or businesses in matters related to trademarks. A Trademark agent specializes in trademark matters and supposed to have extensive knowledge about trademarks. They assist in the registration protection and management of trademarks ensuring compliance with relevant laws and regulations. . A Trademark Agent deals with all the possible legal aspects of a brand, from its registration to appearing in court cases relating to the trademark.

Yes, Trademark agents are registered with Registrar of Trademarks. The Registrar of Trademarks shall maintain a Register of trademark agents wherein the name, address of the place of residence, address of principal place of business, the nationality, qualification and date of registration of every registered trademark agents is entered.

A person shall be qualified to be registered as trademark agent if he-

• is a citizen of India;
• is not less than 21 years of age;
• is a graduate of any university in India, orpossesses an equivalent qualification and has passed the examination prescribed in rule 148 (i.e. exam of Trademark Laws and Practices); or

            is an Advocate within the meaning of the Advocate Act, 1961; or

            is a member of the Institute of Company Secretaries of India;

• is considered by the Registrar as a fit and proper person to be registered as a trademark agent.

A person shall not be eligible for registration as a trademark agent if he-

• has been adjudged by a competent court to be of unsound mind;
• is an undischarged insolvent;
• being a discharged insolvent has not obtained from the court or the appropriate forum as the case may, a certificate to the effect that his insolvency was caused by misfortune without any misconduct on his part;
• has been convicted by a competent court or the appropriate forum as the case may be;
• being a legal practitioner has been guilty of professional misconduct by any High Court in India;
• being a registered trademarks agent has been held guilty of professional misconduct by the Registrar.

Every person desiring to be registered as a trademark agent shall make an application in Form TM-G with fees of Rs 5000 (for physical filing) or Rs. 4500 (foronline filing). The applicant shall furnish such further information bearing on his application as may be required of him at any time by the Registrar.

If the registrar considers that the applicant is eligible and qualified for registration as a trademark agent, he shall enrol the candidate as a registered trademark agent &shall issue a certificate in Form RG-4.

The registrar shall remove the name of Trademark agent from the register of trademark agents in the following situations :

• who has not paid the annual fee on the expiry of three months from the date on which it becomes due.
• who is not a fit and proper person as declared by registrar of trademark
• whose name has been entered in the register by an error or on account of misrepresentation or suppression of material facts.

The registrar may, on an application made in Form TM-G with fee of Rs 5000 (for offline filing) or Rs 4500 (for online filing), within 3 years from the date of removal of the name of the person from the register of trademarks agent, restore his name to the register of Trademark Agents.

The restoration of the name to the register of trademark agent shall be notified in the Journal and shall be communicated to the person concerned.

Under the Trade Marks Act, 1999, the term “goods” is broadly defined to include all types of products, whether tangible or intangible, that can be sold or traded. According to Section 2(1)(f) of the Act, “goods” refers to anything that is the subject of trade or commerce and includes products, materials, and articles that are manufactured, produced, or sold in the marketplace.

In the context of trademarks, “goods” are items for which a trademark can be registered to distinguish the goods of one trader from those of others. It covers all categories of goods that are subject to the trade, such as:

• Consumer products like clothing, food, and electronics.

• Industrial products like machinery, chemicals, and construction materials

• Services (though classified separately from goods under the Act, trademarks for services are governed under the same framework).

Services means service of any description which is made available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising.

According to Section 2(z) of the Trademark Act, 1999, the definition of “services” is as follows:

“Services” means services of any description which are provided or are to be provided in the course of trade or business and includes the provision of services by government or any other person.

A registered proprietor is the person or entity who has been granted the exclusive right to use a trademark after it has been successfully registered with the relevant trademark authority, such as the Indian Trade Marks Registry under the Trademark Act, 1999.

Definition of Registered Proprietor:

According to the Trademark Act, 1999 (Section 2(1)(r)), the registered proprietor is the person or legal entity who holds the legal rights to a registered trademark. This person/entity is the owner of the trademark and has the exclusive right to use it in commerce concerning the goods or services for which it is registered.

1. Visit the TM CLASS Database:

The TM CLASS system is a helpful resource that provides a classification of goods and services for trademarks across different jurisdictions. You can use this tool to search for the appropriate class for your goods or services.

While the link you’ve mentioned (https://euipo.europa.eu/ec2/) is from the European Union Intellectual Property Office (EUIPO), for Indian users, the Indian Trademark Office relies on the Nice Classification (NCL), which is an international standard for classifying goods and services in trademark applications.

2. Access the Nice Classification:

• To find the relevant Nice Classes for India, you can visit the Official IP India website or use the following link:
• IP India Classification (Nice Classes).

3. Use the Classification Resources:

• Once on the website, click on the “Classification” section or search for “Nice Class Headings”.
• You will be presented with a list of all the classes, from Class 1 to Class 45, along with their respective goods and services.
• For example, Class 9 includes electronic devices, Class 25 covers clothing, footwear, and Class 35 includes advertising and business services.

4. TM Class Search:

• The TM CLASS search tool lets you search specific goods or services to identify the appropriate class. You can search for a keyword related to your product or service, and the tool will show you the corresponding class.
• Example: Searching for “cosmetics” will point to Class 3, which covers toiletries and cosmetic products.

5. Class Headings:

• The “Nice Class Heading” lists the main categories of goods and services under each class. This can help you get an overview of the goods or services covered in each class and guide you to the correct classification.

After a trademark application is accepted by the Registrar, the trademark is published in the Trademark Journal. This publication allows any third party to raise an opposition to the registration of the mark. The opposition period lasts for four months from the date of publication.

• If no opposition is filed within this four-month period, the trademark is deemed to have passed the opposition stage.
• After this, the trademark becomes eligible for registration and is granted the status of a registered trademark.

The registration certificate is then issued automatically through the Trademark Management System (TM system) upon successful completion of the process.

Power of Attorney serves as a legal document that authorizes a trademark attorney to act on behalf of the trademark owner.

When a trademark application is filed by a trademark attorney or a trademark agent or a constituted attorney, then a power of attorney must be executed by the applicant in favour of the trademark filing agent.

Power of Attorney must be printed on Rs. 100 Non-Judicial Stamp Paper.

It is a crucial document that allows an applicant to authorize a trademark agent or attorney to represent them in all matters related to the trademark application and proceedings. It becomes a part of the process of ensuring the trademark registration is handled by a legal expert, making the process smoother and more efficient for those unfamiliar with trademark law.

Trademark registration fees for MSME and Startups have been reduced to 50% as compared to other entities. MSME stands for micro, small and medium enterprises. These businesses have recently gained popularity due to their marginal investment needs, shorter gestation period, and supportive government initiatives. For getting the benefit under the trademark registration.

For MSMEs, trademark registration is a powerful tool to safeguard their brand, ensure market recognition, and protect their intellectual property. It not only enhances the brand’s value and reputation but also provides significant legal and financial benefits. By registering your trademark,

your MSME can achieve a strong market presence, expand business opportunities, and secure long- term growth.

Following are the documents required for Trademark Registration of MSME’s: The documents required for trademark registration of

MSMEs are as follows:

1. Name of the Owner of Trademark: The legal name of the person or entity applying for the
trademark;

2. Address of the Owner of Trademark: The registered address of the applicant;

3. Nature of Business: Detailed description of the business along with the specific products or services that will be covered under the trademark;

4. Trademark/Logo: A clear representation of the trademark or logo that is being registered;

5. Date of Trademark Use: The date when the trademark was first used in commerce;

6. Mail ID: The email address for communication regarding the application;

7. Mobile Number: The contact number of the applicant for further correspondence;

8. MSME/Startup Registration Certificate: Proof of MSME (Micro, Small, or Medium Enterprises) or Startup registration to avail of any government schemes or relaxations related to trademark registration;

These documents are crucial to ensure the successful and smooth processing of the trademark registration application for MSMEs.

Form TM-M is used when the trademark application is pending for registration. It is used for the correction of any error in or in connection with his application or any amendment of his application. You can select any of the following suitable heads:

• AMENDMENT OF REGULATION OF A COLLECTIVE MARK;
• CERTIFIED COPY OF ENTRY IN THE REGISTER (U/S 137) / COPY OF A DOCUMENT;
• CORRECTION OF CLERICAL ERROR OR FOR AMENDMENT U/R 37;
• DETAIL OF ADVERTISEMENT OF MARK;
• DIVISION OF APPLICATION;
• EXTENSION OF TIME;
• EXPEDITED LEGAL CERTIFICATE;
• PRELIMINARY ADVICE;
• REGULATION FOR GOVERNING THE USE OF A COLLECTIVE TRADEMARK OR A CERTIFICATION TRADEMARKS;
• REQUEST FOR ADVERTISE A NOTE OF CERTIFICATE OF VALIDITY;
• REQUEST FOR INCLUSION AS WELLKNOWN MARK;

• REQUEST FOR PAYMENT OF MISC. FEE FOR OTHER PURPOSE;
• REQUEST FOR THE INSPECTION OF THE DOCUMENT UNDER RULE 121;
• REQUEST SUBMITTING AUTHORISATION OF AGENT;

Trademark Class 35 pertains to services related to advertising, business management, business administration, and office functions. It is one of the 45 trademark classes under the Nice Classification (NCL), which categorizes goods and services for the purposes of trademark registration.

Class 35 is designed to cover services that are essential for running, managing, and promoting businesses.

Examples of Businesses That Would Use Class 35:

• Advertising agencies (print, digital, or online marketing)
• Business consultancy firms
• Human resources management companies
• Retail businesses (both online and offline)
• Event management companies
• Franchisors or companies involved in business franchising.

Class 5 of the Nice Classification covers the following:

• Pharmaceuticals: Medicines and drugs for human and veterinary use.
• Medical and Veterinary Preparations: Products for medical treatments and veterinary care.
• Sanitary Preparations for Medical Purposes: Items like antiseptics, disinfectants, and similar products for medical use.
• Dietetic Food and Substances: Foods and substances specifically adapted for medical or veterinary use, including baby food and special dietary products.
• Dietary Supplements: Supplements for both humans and animals to improve health.
• Plasters and Materials for Dressings: Items used for wound care and healing.
• Material for Stopping Teeth, Dental Wax: Products used in dental treatments and dental care.
• Disinfectants: Substances used to destroy germs and microorganisms.
• Preparations for Destroying Vermin: Products designed to eliminate pests or vermin.
• Fungicides and Herbicides: Chemical substances used to prevent the growth of fungi and weeds.

Class 5 is a broad category that encompasses a wide range of healthcare-related products and
medicinal items.

Yes, you can register your clothing brand as a trademark in India, as long as it meets the necessary legal requirements. The registration process for a clothing brand is similar to that of any other trademark, and it helps protect the name, logo, tagline, or any other distinctive elements that identify and distinguish your clothing line in the market.

Key Points to Keep in Mind:

1. Trademark Class: Clothing items typically fall under Class 25 of the Nice Classification, which includes clothing, footwear, and headgear.
2. Distinctiveness: Your brand must be distinctive and not similar to existing trademarks in the same class to avoid rejection.
3. Use or Intent to Use: You need to either provide evidence of actual use of the trademark or a declaration of intent to use the trademark.

By registering your clothing brand, you gain exclusive rights to the trademark, preventing others from using a similar mark in the market, thereby protecting your brand identity and reputation.

The Trademark Registration Certificate can be downloaded from the official Indian Trademark Registry website. Both the applicant and the general public can download the certificate by following these steps:

Steps to Download the Trademark Registration Certificate:

1. Visit the Official Trademark Registry Website:

• Go to the official link: https://ipindiaservices.gov.in/eregister/eregister.aspx

2. Select the Trademark Application/Registered Mark Option:

• On the homepage, click on the “Trademark Application / Registered Mark”
  option.

3. Select the Type of Trademark:

• Choose either National or IRDI number (Indian Registration or International Registration).

4. Enter the Trademark Application Number:

• Enter the Trademark Application Number (the number you received when you applied for the trademark).
• Complete the Captcha code for verification.

5. Click on the “View” Button:

• After entering the details, click on the “View” button to access the trademark details.

6. Click on the Trademark Number:

• Select the Trademark Number displayed in the results to proceed.

7. View and Download the Registration Certificate:

• Once you’ve accessed the details, click on the “View Registration Certificate”
  option.
• The Trademark Registration Certificate will appear in a new tab.
• Click the download icon to save the certificate in PDF format.

A trademark registration in India is valid for 10 years from the date of registration. To keep the trademark active, the owner must file a renewal application six months prior to the expiry of this 10- year period.

Consequences of Failing to Renew:

• If the trademark owner fails to file for renewal within the stipulated time, the trademark
becomes abandoned.
• Once abandoned, the trademark is no longer protected under the law and can be used by others. Any third party can then file an application to register the same or a similar trademark.

However, the owner may still be able to renew the trademark within a grace period of six months after the expiration, but this may come with a penalty.

When the applicant failed to respond within stipulated time period prescribed in the act, the status of the application shows as “Abandoned”.

Trademark registry abandoned the application on the following grounds:

1. If trademark registry come across to any defect in the application, an examination report is sent to the applicant with objection under section 9 or section 11. If the applicant failed to respond or failed to attend the hearing called by the registry, then in such scenario your application status be shown as Abandoned;

2. A trademark registration is valid only for 10 years. After the expiry of this it needs to be renewed. If owner of the trademark fails to renew the trademark within 1 year after the expiry date, it is likely to be abandoned by the trademark Registry and afterwards any person can claim for such mark;

3. If a trademark application is opposed then in such a case counter statement against such opposition must be filed in form TM O within 2 months, delay in filing of documents can lead to the status of Abandoned.

Whenever a Trademark Application is opposed, applicant received a notice from the Trademark registry. You can also check it from E-Register –
Following are the steps to know who had opposed your Trademark Application:

Step 1: Go to the official trademark registry site; https://ipindiaservices.gov.in/eregister/eregister.aspx

Step 2 Click on the Trademark Application /Registered Mark option;

Step 3 Select the National/ IRDI Number;

Step 4 Enter the Trademark Application number and captcha code and click on the view button;

Step 5 Click on the Trademark number;

Step 6 In case your Trademark application is opposed, Status will appear as “OPPOSED” on the top left side of the master page.

Step 7 On the master page, when you go down to the page it will show the details of Opponent name and address, details information can also be downloaded from there.

Yes, an opponent can view the supporting documents filed by the applicant or any other party in reference to the opposition, application, or counter statement. These documents are made available on the official Indian Trademark Registry website.

How to Check the Documents:

1) Visit the Official Trademark Registry Website:
Go to https://ipindiaservices.gov.in/eregister/eregister.aspx

2) Enter the Application Number:
Enter the Application Number of the trademark in question.

3) Access Notices and Evidence:

Once you enter the application number, you will be able to view notices, evidences, and documents that have been submitted by the applicant, opponent, or other parties involved in the proceedings.

When filing a trademark application using Form TM-A, the permissible size for the logo or device mark is 8 cm x 8 cm. This is the maximum size allowed for the logo to be uploaded during the application process.

Key Points:

• The logo or device mark should not exceed 8 cm x 8 cm.
• The image file should be in JPEG format, and the resolution should be clear and high-quality for proper examination by the authorities.

By adhering to the size specifications, you ensure that your trademark application process goes smoothly.

Machines, machine tools, power-operated tools; Motors and engines, except for land vehicles; Machine coupling and transmission components, except for land vehicles; Agricultural implements, other than hand-operated hand tools; Incubators for eggs; Automatic vending machines.

Example of Products Covered Under Class 7:

• Electric drills and other hand-held electric tools.
• Industrial sewing machines.
• Motor engines used in factories or plants.
• Air compressors.
• Printing presses and related machinery.
• Construction machinery like excavators and cranes.
• Farm machinery such as harvesters, sprayers, and tractors.
• Parts of machinery like gears and pistons

Class 19 of the Nice Classification primarily includes building materials, specifically those that are not made of metal. This class covers a wide variety of materials used in construction and related industries. Some examples include:

• semi-worked woods for use in building, for example, beams, planks, panels;
• wood veneers;
• building glass, for example, glass tiles, insulating glass for building, safety glass;
• glass granules for marking out roads;
• granite, marble, gravel;
• terra-cotta for use as a building material;
• roofing, not of metal, incorporating photovoltaic cells;
• gravestones and tombs, not of metal;
• statues, busts and works of art of stone, concrete or marble;
• letter boxes of masonry;
• geotextiles;
• coatings being building materials;
• scaffolding, not of metal;
• transportable buildings or structures, not of metal, for example, aquaria, aviaries, flagpoles, porches, swimming pools.

Yes, you can register your trademark for household items. These types of goods are generally covered under Class 21 of the Nice Classification.

Class 21 includes a wide range of household or kitchen items, such as:

• Household or Kitchen Utensils and Containers: Various tools and containers used in the kitchen or home.
• Cookware and Tableware: Includes items like pots, pans, and dishes (excluding forks, knives, and spoons).
• Combs and Sponges: Personal care items used for grooming and cleaning.
• Brushes (except paintbrushes): Brushes used for cleaning, personal care, or other non- artistic purposes.
• Brush-Making Materials: Materials used in the manufacture of brushes.
• Articles for Cleaning Purposes: Includes brooms, mops, dusters, and other cleaning tools.
• Unworked or Semi-Worked Glass (except building glass): Glass that has not yet been processed for construction.
• Glassware, Porcelain, and Earthenware: Decorative or functional items made from glass, porcelain, or clay, like vases, cups, and pots.

Class 41 covers a wide range of services related to education, entertainment, and cultural activities. Some examples of services included under Class 41 are:
• organization of exhibitions for cultural or educational purposes, arranging and conducting of conferences, congresses and symposiums;
• translation and language interpretation services;
• publication of books and texts, other than publicity texts;
• news reporters services, photographic reporting;
• photography;
• film direction and production services, other than for advertising films;
• cultural, educational or entertainment services provided by amusement parks, circuses, zoos, art galleries and museums;
• sports and fitness training services;
• training of animals;
• online gaming services;
• gambling services, organization of lotteries;
• ticket reservation and booking services for entertainment, educational and sporting events;
• certain writing services, for example, screenplay writing, songwriting.

Yes, you can register your trademark under multiple classes of goods and services with the same mark. This is especially useful if your business operates in various sectors or offers a diverse range of products and services. Registering under multiple classes ensures that your trademark is protected across all relevant areas of your business.

However, keep in mind that you will need to pay a separate fee for each class you register. This allows you to expand the scope of your trademark protection while covering all aspects of your business activities.

If two people are using the same trademark and neither has registered it, both parties may have common law rights to the trademark. However, these rights are generally limited to the geographical area where each party is operating.

In cases where the geographical reach and the field of goods or services overlap, the party who can establish an earlier date of use of the trademark would generally have prior rights. This means that the person who can prove they were using the mark first (even if not registered) will typically have stronger legal rights to the trademark in the areas where the trademark is being used.

If disputes arise, the party with the earlier use date may have the upper hand in claiming exclusive rights to the mark in the overlapping areas, though the situation can be complex and might require legal resolution.
To establish their claim, the party asserting priority must provide evidence of continuous and genuine use of the trademark in commerce. This evidence may include sales records, advertising materials, contracts, and other documentation that substantiates on-going use.

The name of a series of books may be federally registered as a trademark. To determine whether your work is a book series or a “single creative work,” which is not eligible for registration, consult an Intellectual Property attorney.

While you can file for a trademark for the title of your book, it must be distinctive, used in commerce, and not too generic or descriptive. If the title represents a unique brand, is part of a series, or has become well-known in the market, it may be eligible for trademark protection. If you intend to create a brand around your book or book series, registering the title as a trademark can provide valuable protection.

Yes, you can trademark your company’s slogan, but it must be used in a way that identifies the source of your goods or services. In other words, the slogan should serve as a distinctive identifier of your brand and should not be merely a decorative phrase or general statement.

For example, if your slogan is used consistently on your products, advertisements, or services to distinguish your company from others, it can be eligible for trademark registration.

However, slogans or phrases that are used on items like T-shirts or buttons, without indicating the source of goods or services (i.e., not associated with a specific brand), are generally not eligible for trademark registration. The key is that the slogan must be tied to your brand and its offerings in a way that consumers can recognize it as representing the source of those goods or services.

Note on Copyright: While trademarks protect the distinctive use of a slogan in commerce, copyright protection may also be applicable to the creative expression of the slogan (e.g., its design, stylization, or unique wording).

Intellectual Property (IP) in India refers to creations of the mind—such as inventions, literary and artistic works, designs, symbols, names, and images used in commerce—that are protected by law. This protection allows creators and owners to control how their creations are used, and to profit from them by preventing unauthorized use by others.

In India, Intellectual Property is governed by a range of national laws and international treaties. The aim is to encourage innovation and creativity while ensuring that the creators or inventors receive recognition and monetary benefits for their work.

Key Types of Intellectual Property in India:

1. Patents:
• Patents protect new inventions, products, or processes that offer a new solution to a technical problem.
• In India, the Patents Act, 1970 governs the patent process.
• A granted patent gives the inventor the exclusive right to make, use, sell, and
distribute the invention for a period of 20 years.

2. Trademarks:
• Trademarks protect distinctive names, logos, symbols, and other identifiers used by businesses to distinguish their goods and services from others.
• The Trade Marks Act, 1999 governs trademark registration and protection in India.
• Trademark protection ensures that your brand identity (such as a name or logo) is protected against misuse by competitors.

3. Copyrights:
• Copyright protects original works of literature, art, music, and other creative works.
• In India, copyright is governed by the Copyright Act, 1957.
• It grants the creator the exclusive right to reproduce, distribute, and publicly perform the work for a specified duration (usually the life of the author plus 60 years).

4. Designs:
• Industrial designs refer to the aesthetic or ornamental aspect of an article.

• The Designs Act, 2000 protects the visual appearance of industrial products, such as the shape, color, and texture of an object.
• Design protection in India lasts for 10 years, with the possibility of an extension for an additional 5 years.

5. Geographical Indications (GI):
• Geographical Indications are used to indicate that a product has a particular quality or enjoys a reputation due to its geographical origin.
• Examples include products like Darjeeling tea or Kanchipuram silk.
• GIs are protected under the Geographical Indications of Goods (Registration and Protection) Act, 1999.

6. Trade Secrets and Confidential Information:
• Trade secrets refer to confidential business information, such as formulas, recipes, and strategies that provide a business with a competitive edge.
• While India doesn’t have specific laws for trade secrets, they can still be protected under contract law or tort law.

7. Plant Varieties and Farmers’ Rights:
• Protection for new plant varieties and the rights of farmers regarding seeds and plant cultivation is provided under the Protection of Plant Varieties and Farmers’ Rights Act, 2001.
• This helps protect the intellectual property rights of agricultural innovations.

An address for service refers to the address provided by an applicant, opponent, or any person involved in a trademark proceeding, where official communications related to the trademark application will be sent. This address must be in India and include:

1. A postal address in India: A physical address where the applicant or opponent can be contacted.
2. A valid e-mail address: An email address for receiving electronic correspondence.

Additionally, if a trademark agent is handling the case on behalf of the applicant or opponent, the agent must also provide a mobile number registered in India.

This address is used by the Registrar to send notices, updates, or any legal communication related to the trademark application or proceedings. It is important to ensure that the address for service is accurate and up-to-date to avoid missing any critical communications.

NICE Classification refers to the International Classification of Goods and Services used for the purpose of registering trademarks. It is established by the World Intellectual Property Organization (WIPO) and is used globally to categorize goods and services into different classes for trademark registration. This system helps in organizing and streamlining the registration process for trademarks.

The Nice Classification system divides goods and services into 45 classes:

• Classes 1-34 are for goods.
• Classes 35-45 are for services.

Each class represents a specific category of goods or services, making it easier to identify the relevant scope for trademark protection. When you apply for a trademark, you need to specify the class or classes of goods or services under which your trademark should be registered.

In India, the Registrar of Trademarks uses the latest edition of the Nice Classification for trademark registration and publishes a class-wise and alphabetical index of goods and services, including those of Indian origin. This index helps applicants select the appropriate class for their products or services during the registration process.

You can access detailed information about the Nice Classification and specific goods and services listed under each class on platforms like the EUIPO (European Union Intellectual Property Office) website: EUIPO – Nice Classification.

When the Trademark examiner examines the application, he may object the application if it violates the act and rules. The objection raised by the examiner is known by Trademark Objection. The examiner raise the objection in the form of Examination Report, the applicant should file the reply to examination report within 1 month.

When the application for Trademark is published in TM journal for public to view, any person can within four months from publication in the journal can file an opposition. The purpose of Trademark opposition is to prevent a person from using the same, identical mark which may create confusion among the public.

A Statement of Use in a trademark application is a declaration made by the applicant regarding the use of the trademark on the goods or services mentioned in the application. This statement provides information about:

1. The period of use: It details the period during which the trademark has been used in commerce.
2. The person using the trademark: It specifies who has been using the trademark (the applicant or another party).

This statement must be included in the application unless the applicant is intending to use the trademark in the future (i.e., the trademark is proposed to be used).

If the applicant claims that the trademark has been in use prior to the filing date of the application, they must provide an affidavit confirming such use. The affidavit must be accompanied by supporting documents (such as invoices, sales records, advertisements, or other evidence) that substantiate the claim of prior use.

In summary, the Statement of Use serves as evidence of the trademark’s use in commerce, and it is a key part of the trademark application process, especially if prior use is claimed.

If the name or representation of any person appears in your trademark application, you may be required to obtain written consent from that person (if they are alive) or their legal representative (if the person has passed away within the last 20 years) to use their name or likeness in your trademark.

Here’s the process:

1. If the person is alive: You need to get written consent from them to use their name or representation in the trademark.
2. If the person is deceased: If the person has died within 20 years before the date of your application, you will need to provide written consent from their legal representative (e.g., an heir or executor of the estate).

If you fail to provide this consent when required by the Registrar, the Registrar may refuse to proceed with your trademark application. The purpose of this requirement is to ensure that the trademark does not infringe on an individual’s rights, especially in cases where their name or image could be associated with a product or service without their permission.

An Examination Report is a document issued by the trademark office after reviewing a trademark application. It details the examiner’s findings regarding the eligibility of the applied trademark for registration under the relevant trademark laws. The report highlights any issues or objections, such as similarity to existing trademarks, lack of distinctiveness, or descriptive nature, that may prevent the trademark from being registered. If objections are raised, the applicant is given a specified period to respond or address the issues, either by providing clarifications, making amendments, or submitting arguments.

The report plays a crucial role in determining whether the trademark application can proceed to the next stage of publication in the Trademark Journal or if further actions are required to overcome objections.

• Objection can be raised under Section 9(1) (a) of the Trade Marks Act 1999, as the mark is a non-distinctive geometrical figure and as such it is not capable of distinguishing the goods of one person from those of others.

• Objection can be raised under S 11 (1) of the Trade Marks Act, 1999, as the mark is identical with or similar to earlier marks in respect of identical or similar description of goods or services and because of such identity or similarity there exists a likelihood of confusion on the part of the public.

• Objection can be raised under Rule 25 of Trademark Rules, 2017, as it requires statement of user in application along with supporting documents of such user date.

If you fail to respond to the Examination Report issued by the Trademark Office within the prescribed time (usually 30 days in India), the following consequences may occur:

1. Application Will Be Abandoned:
• If you don’t respond within the given time frame, your trademark application may be considered abandoned. This means the trademark office will not proceed with your application, and your request for registration will be dismissed.

2. No Opportunity for Further Consideration:
• After the deadline passes without a response, the application will not be reconsidered unless you take steps to revive or reapply. In some cases, you may be able to file a restoration request to revive the application, but this may involve additional fees and documentation.

3. Delay in Registration:
• Failing to respond means your trademark will not be registered, and this could delay the protection of your brand. Without a registered trademark, you won’t have the legal rights to prevent others from using a similar mark.

If the response to the examination report is not satisfactory or where the applicant has requested for hearing, the registrar shall provide an opportunity of hearing to the applicant and the same shall be conducted as per rule 115.

If the applicant fails to appear at the scheduled hearing date and has not submitted a reply to the office objections beforehand, the Registrar may treat the trademark application as abandoned.

Consequences of Failing to Appear:

• The application could be dismissed or considered as withdrawn.
• The Registrar may proceed with the application without considering the applicant’s arguments or evidence.
• If the application is abandoned, the applicant will lose the opportunity to contest any objections, and the trademark may not proceed to registration unless the applicant takes corrective actions within the allowed timeframe.

Authority gives three chances for appearing, after that the application gets abandoned.

To avoid such situations, it’s important to either attend the hearing or ensure that all necessary responses and documents are filed in time.

An application for the renewal of a trademark registration must be filed using Form TM-R, along with the prescribed renewal fee as outlined in the First Schedule.

Key Points:

• The renewal application can be filed at any time up to one year before the expiration of the trademark’s registration.
• It’s advisable to file the renewal application ahead of time to avoid any last-minute issues or delays.

For more details on the application form and fees, visit the official website: IP India Forms and Fees.

When a trademark application is marked as “Ready for Show Cause Hearing”, it indicates that the Examiner has reviewed the application and determined that further clarification or justification is required before proceeding. This status usually arises when there are issues or objections regarding the application that need to be addressed.

What to Expect:

• The applicant will be notified about the Show Cause Hearing and will be required to appear before the Registrar or the Examiner.
• During the hearing, the applicant will need to provide reasons or arguments as to why the trademark should be granted registration, despite the objections raised.
• The applicant can submit additional evidence or explanations to overcome the objections.

If the applicant fails to attend the hearing or provide sufficient justification, the application may be rejected.

The applicant can attend the trademark hearing either in person or through a Trademark Agent/Attorney who is authorized to represent them.

Key Points:

• Trademark Agent/Attorney: If the applicant is unable to attend, they can authorize a trademark agent or attorney to attend the hearing on their behalf.
• Objection-Free Applications: If no objections are raised during the hearing and the Registrar is satisfied with the application, the trademark is approved and subsequently published in the Journal for further processing.

This ensures that the applicant has the flexibility to handle the hearing either personally or through a professional representative.

After the trademark hearing, where the applicant is given the opportunity to present their arguments, evidence, and respond to any concerns or objections raised by the Examiner, the Hearing Officer will make a decision.

Key Points:

• The Hearing Officer will carefully review the applicant’s arguments and any supporting evidence provided during the hearing.
• A written order or decision will be issued by the Hearing Officer, which can either be:
o Approval: If the concerns or objections have been satisfactorily addressed, the trademark application may be approved.
o Rejection: If the objections are not resolved or are deemed insurmountable, the trademark application may be rejected.

This decision will then move the application forward in the process, either toward registration or further legal action, if necessary.

A notice of opposition must be filed within four months from the date of publication of the trademark in the Trademark Journal, in which the trademark application was advertised.

Key Points:

• The four-month period begins from the date of the publication of the application in the
Trademark Journal.
• If no opposition is filed within this period, the application may proceed towards registration.

It’s important to be aware of the timeline to ensure that any objections are raised in a timely manner.

The opponent must file the evidences in support of trademark opposition within two months of receipt of a copy of the counterstatement or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition.

Rule 45 of Trademark Rules, 2017 within two months from service of a copy of the counterstatement, the opponent shall either leave with the Registrar, such evidence by way of affidavit as he may desire to adduce in support of his opposition or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition. He shall deliver to the applicant copies of any evidence including exhibits, if any, that he leaves with the Registrar under this sub-rule and intimate the Registrar in writing of such delivery.

If an opponent takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition.

The applicant must file evidence in support of a trademark application within two months of receipt of copies of affidavits in support of opposition or intimation that the opponent does not desire to adduce any evidence in support of his opposition.

In case the applicant adduces any evidence or relies on any evidence already left by him in connection with the application, he shall deliver to the opponent copies of the same, including exhibits, if any, and shall intimate the Registrar in writing of such delivery.

Rule 46 of Trademark Rules, 2017 states that within two months on the receipt by the applicant of the copies of affidavits in support of opposition or of the intimation that the opponent does not desire to adduce any evidence in support of his opposition, the applicant shall leave with the Registrar such evidence by way of affidavit as he desires to adduce in support of his application and shall deliver to the opponent copies thereof or shall intimate to the Registrar and the opponent that he does not desire to adduce any evidence but intends to rely on the facts stated in the counterstatement and or on the evidence already left by him in connection with the application in question. In case the applicant adduces any evidence or relies on any evidence already left by him in connection with the application, he shall deliver to the opponent copies of the same, including exhibits, if any, and shall intimate the Registrar in writing of such delivery.

If an applicant takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his application.

After receiving copies of the applicant’s affidavit, the opponent has one month to file their evidence in reply. This evidence must be submitted by affidavit and should address the claims made by the applicant in their affidavit.

Key Points:

• The opponent must deliver copies of the evidence, including any exhibits, to the applicant.
• The opponent must also notify the Registrar in writing about the delivery of the evidence and exhibits to the applicant.

This process allows the opponent to present their side of the case and respond to the applicant’s arguments before the Registrar makes a decision.

Rule 47 of Trademark Rules, 2017 states that within one month from the receipt by the opponent of the copies of the applicant’s affidavit the opponent may leave with the Registrar evidence by affidavit in reply and shall deliver to the applicant copies of the same including exhibits, if any, and shall intimate the Registrar in writing of such delivery.

Rule 48 of Trademark Rules, 2017 states that no further evidence shall be left on either side, but in any proceedings before the Registrar, he may at any time, if he thinks fit, give leave to either the applicant or the opponent to leave any evidence upon such terms as to costs or otherwise as he may think fit.

Where no notice of opposition to an application advertised or re-advertised in the Journal is filed within the period specified, or where an opposition is filed and it is dismissed, the Registrar shall enter the trademark on the register.

The entry of a trademark in the register shall specify the date of filing of application, the actual date of the registration, the goods or services and the class or classes in respect of which it is registered.

If the applicant for trademark registration passes away after the application has been filed but before the trademark has been entered into the register, the Registrar can take certain steps to continue the process.

Process:

• The successor in interest (the person or entity who inherits or takes over the applicant’s rights) may file a request using Form TM-M.
• The successor must provide proof of the applicant’s death and evidence showing the transmission of interest (i.e., the transfer of the trademark rights) from the deceased applicant to the successor.
• Upon receiving the necessary documentation, the Registrar may substitute the name of the deceased applicant with that of the successor in interest.

Once the name is amended, the application will proceed as if filed by the new applicant, allowing the trademark registration process to continue.

The certificate of registration to be issued by the Registrar under sub-section 2 of section 23 shall be on Form RG-2 and shall include the trademark. It shall bear the seal of the Trade Marks Registry.

The Registrar may issue duplicate or further copies of the certificate of registration on request by the registered proprietor in Form TM-M accompanied by the prescribed fee.

Provided that, no such duplicate or copy of certification of registration shall be issued where such request is received after the expiry of time limit for renewal of registration and restoration of registered trademark.

If the owner fails to pay the renewal fee for a trademark, the following consequences can occur:

1. Trademark Becomes Invalid:

• If the renewal fee is not paid within the prescribed time, the trademark registration will lapse and the trademark will no longer be valid or protected under the law.
• This means that the owner loses exclusive rights to the mark, and others may be able to use or register a similar mark for the same goods/services.

2. Late Renewal Option:

• There is a grace period of 6 months after the expiry of the trademark, during which the owner can still renew the trademark by paying the renewal fee along with a late fee.
• If the fee is paid during the grace period, the trademark will be renewed and revalidated. However, if the renewal is not done during this time, the trademark will be removed from the trademark register.

3. Loss of Legal Protection:

• After the expiration, without renewal, the trademark owner no longer has legal protection for the mark. This could lead to third parties using the mark or registering it as their own.
• If you fail to renew, you also lose the ability to prevent others from using a similar or identical mark, which could damage your brand’s identity and reputation.

4. Risk of Trademark Infringement:

• With no valid registration, your brand may be at risk of trademark infringement or passing off actions from competitors using a similar mark in the market.

5. Additional Costs:

• After the grace period, if the trademark is removed, you may have to file a fresh trademark application to get protection for your mark again, which involves additional time, effort, and costs.

If no application for the renewal of a trademark is made within the stipulated time period, the following consequences will occur:

1. Trademark Registration Lapses:

• The trademark will cease to be valid after the expiration of the initial 10-year period (or after any subsequent renewal period).
• Without renewal, the trademark will no longer be protected under the law, and the trademark owner loses exclusive rights to the mark.

2. Trademark Will Be Removed from the Register:

• If the renewal is not filed within the grace period (which is 6 months after the expiration date), the trademark will be removed from the trademark register.
• Once removed, the trademark will not be recognized as a valid trademark, and you will no longer have the legal right to prevent others from using a similar or identical mark.

3. Loss of Exclusive Rights:

• Without renewal, the trademark owner loses the ability to enforce their rights. Other businesses or individuals may use a similar or identical mark for the same goods/services, leading to confusion in the marketplace.
• The owner will also lose the ability to take legal action for trademark infringement against others who use the same or similar mark.

4. Potential for Re-registration:

• After the grace period ends, if the trademark has been removed from the register, the owner may need to file a new trademark application to secure protection for the mark again.
• Re-filing involves the same process as a new trademark application, including any applicable fees and time required for approval, and there is no guarantee that the trademark will be granted again if someone else applies for it in the meantime.

5. Risk of Losing the Mark to a Third Party:

• If the trademark owner does not renew and the trademark is removed from the register, there is a risk that someone else may apply for and register a similar or identical mark.
• This can result in the loss of brand identity and legal rights over the mark, especially if the new applicant is using the mark for the same goods/services

To check the availability of a name under the Trademark Act, 1999 in India, you need to ensure that the name you’re considering is not already registered as a trademark by someone else. Here are the steps to check its availability:

1. Search the Trademark Database:

The Indian government maintains a public database of trademarks that have been applied for or registered. You can search this database to check if your name is already registered.

• Visit the Intellectual Property India website: ipindia.gov.in.
• Go to the “Trade Marks” section.
• Use the “Public Search” option to search for the name.
  • You can search by:
    • Wordmark: Search by the name or word.
    • Phonetic Search: Search for similar-sounding words.
    • Class: Choose a specific class if the product or service you are looking for is related to a particular industry (e.g., classes for pharmaceuticals, software, etc.).
• The system will show any existing trademarks that are similar or identical to your name, along with their status.

2. Check for Similar Marks:

A name may not be available even if it’s not exactly the same as an existing trademark but may be considered deceptively similar. You should look for trademarks that sound or look similar to the name you want to register.

3. Use the Trademark Search Tool:

The Indian Government provides a free tool for searching trademarks. Here’s how to use it:

• Go to the Trademark Search Tool on the official IP India website.
• You can search based on:
  • The name or wordmark.
  • The class (the category of goods/services).
  • The status (whether the trademark is registered, opposed, or under application).

4. Examine the Trademark Status:

Even if a similar or identical name exists in the database, check the status of that trademark. If it’s marked as “dead” or “abandoned”, it could still be available for registration.

5. Consult a Trademark Attorney:

Trademark law can be complex, especially if there are similar or overlapping trademarks. A trademark attorney can help you analyse whether your name is truly available, provide legal advice, and assist with the application process.

6. Trademark Class and Nature of Use:

Ensure you are considering the appropriate class (category) of goods or services under the Nice Classification, as trademarks are categorized under different classes. A name might be available in one class while already being used in another.

7. File a Trademark Application:

If your search returns no conflicting marks, you can proceed to file a trademark application with the Trademark Registry. This can be done online via the IP India website. The trademark will be examined, and if there are no objections, it will be registered.

8. Monitor the Trademark Status:

After filing your application, you should monitor the trademark journal for any objections or oppositions raised by others. This is a necessary step to ensure no one else claims ownership of a conflicting mark.

Any person can check the status of Application from the site of Trademark Registry, you just need the Application Number for the same.

Steps to Check the Status of Your Trademark Application:

1. Visit the Official Trademark Registry Website: Go to the Trademark Registry’s official site by clicking on the following link: https://ipindiaservices.gov.in/eregister/eregister.aspx
2. Select the Trademark Application / Registered Mark Option: On the homepage, click on the Trademark Application / Registered Mark option to begin the process.
3. Choose the National/IRDI Number: Choose the appropriate option for either the National or IRDI number, depending on your application type.
4. Enter Your Application Number and Captcha: Input your Trademark Application Number and the displayed Captcha Code, then click on the View button to proceed.
5. Click on the Trademark Number: After viewing the application details, click on the Trademark Number to access further information.

Check the Status: On the top-left section of the page, you will find the status of your trademark application.

Trademark classification is essential for registering a trademark, as it categorizes goods and services into different classes. The Nice Classification (NCL) system, established under the Nice Agreement, organizes goods and services into 45 distinct classes:

• Classes 1–34: Cover goods (e.g., chemicals, machinery, clothing, food items, etc.).
• Classes 35–45: Cover services (e.g., business management, telecommunications, legal services, etc.).

To determine the correct class for your goods or services, you can use the EUIPO (European Union Intellectual Property Office) Classification Tool.

Steps to Identify the Correct Trademark Class

Step 1: Visit the Classification Website

Click on the following link to access the official classification tool:

https://euipo.europa.eu/ec2/

Step 2: Navigate to Classification Resources

Once you land on the website, locate and click on the “Classification Resources” tab at the top of the page. This section provides various tools to help classify goods and services.

Step 3: Select “Nice Class Headings”

Under the classification resources section, find and click on “Nice Class Headings.” This option will display a list of all 45 trademark classes, along with a general description of the types of goods or services each class covers.

Step 4: Browse the Class List

The website will present a detailed class-wise list, categorizing goods and services according to the Nice Classification. You can manually browse through the classes to get an idea of where your goods or services may fit.

Step 5: Use the Search Bar

To quickly find the relevant class, enter the name of your product or service in the search bar provided. For example:

• If you search for “cosmetics”, the system may return results under Class 3 (Cosmetic and Cleaning Preparations).
• If you search for “advertising services”, it will likely fall under Class 35 (Business & Advertising Services).

Step 6: Review the Suggested Classification

The system will display a list of terms that match your search. Carefully review the results to determine the most appropriate class for your trademark application. If multiple classes appear relevant, you may need to register under more than one class.

“Formality Check Fail” in the context of trademarks refers to a situation where an application submitted for trademark registration does not meet the basic formal requirements set by the Indian Trademark Registry. This failure does not pertain to the substantive examination of the trademark’s distinctiveness or eligibility but rather focuses on ensuring that the application is complete and meets the necessary procedural requirements.

Here are some common reasons for a “Formality Check Fail”:

1. Incorrect or Incomplete Application Form:

• If the application form (Form TM-A) is filled out incorrectly or if mandatory fields are missing (e.g., applicant details, trademark name, class of goods/services), the Registry will reject the application at the formality check stage.

2. Incomplete or Invalid Signature:

• The application must be signed correctly by the authorized person (applicant or attorney). If there is a problem with the signature (e.g., missing or invalid), the application will fail this check.

3. Incorrect Fees:

• If the payment of fees is not made correctly or if the wrong fee category is selected (for example, choosing the wrong number of classes or applicant type), the application may fail the formal check.

4. Missing Documents:

• Trademarks, depending on the nature of the application, may require supporting documents (e.g., identity proof of the applicant, proof of use of the trademark, logo representation, etc.). If any required documents are missing or incorrect, the application may fail.

5. Class Selection Error:

• If the applicant does not select the correct class of goods/services or fails to provide the necessary detail about the goods/services covered by the trademark, the application may fail.

6. Inadequate Representation of the Trademark:

• If the trademark image (logo, design, etc.) is not provided in the correct format, resolution, or dimensions, it may result in the failure of the formality check.

7. Incorrect Applicant Details:

• The name, address, or contact details of the applicant may not match the official records or may be incomplete or incorrect.

The status of “Formality Check Pass” means that the trademark application has successfully met all the basic procedural requirements and formalities set by the trademark office. This is the initial stage of the application process, indicating that the application is now ready for further examination.

Here’s what happens when your trademark application shows the “Formality Check Pass” status:

1. Application Meets Basic Requirements:

• The application form (Form TM-A) is complete.
• The required fee has been paid correctly.
• The signature is valid.
• All necessary documents (e.g., logo, identity proof, proof of use, etc.) have been submitted.
• The class of goods/services has been selected correctly.

2. Next Step – Substantive Examination:

Once the Formality Check pass, the application moves on to the next stage: Substantive Examination.

• A Trademark Examiner will review the trademark for its distinctiveness, availability, and any potential conflicts with existing trademarks.
• During this stage, the examiner will determine whether the trademark is registrable based on various factors, including whether it is deceptively similar to existing marks or violates public policy.

3. Examination Report:

• After the substantive examination, the Trademark Office will issue an Examination Report.
• If the application meets all legal requirements, it may be accepted for registration.
• If there are objections or issues (such as similarity to an existing trademark), the applicant will be given an opportunity to respond.

4. No Objections – Advertisement in Trademark Journal:

If there are no objections or after the objections are resolved, the trademark will be published in the Trademark Journal. This is an important step because it allows other parties to raise any opposition to the trademark’s registration within a specific period (usually 4 months).

5. Registration (if no opposition):

If no opposition is filed or if the opposition is resolved in your favor, your trademark will be registered, and you will receive the Trademark Registration Certificate.

The following are some reasons behind an application faces the Formality check fail:

• Incorrect Class– Trademark is divided into 45 classes. The appropriate class need to be selected after checking the list of items a particular class covered. If the class is not correct, your applicaton will not proceed further and marked as “Formality check fail” in Trademark by the department.
• Improper Information- The name, address, state and other details must be as per power of attorney; category of mark, class, product description, agent registration number, etc. all the relevant information must be filled.
• Improper Documents- Power of Attorney, User Affidavit must be properly notarized, If applicant opt for MSME/ Start-up benefit in Trademark, then in such a case MSME/ Start-up Registration certificate must be attached with the application. Also on POA & User Affidavit appropriate amount of stamp duty shall be made as per Schedule I of Stamp act of respective state.
• Inappropriate goods or services description- Description must be provided accordingly for the goods or services applicant is dealing with.

MIS F refers to the “Misleading/Falsely Represented” status of a trademark application in India.

This status is used when a trademark application has been flagged for containing false or misleading information. This could involve:

1. Incorrect Details: If the applicant has provided false information, such as wrong ownership details, class of goods/services, or any misrepresentation related to the mark.
2. Deceptive Mark: The mark may be considered misleading or deceptive if it falsely suggests a connection to an existing brand, business, or geographical location, or could mislead the public about the origin, nature, or quality of the goods or services.

Outcome:

• If an application is marked MIS F, it may face objections from the trademark examiner.
• The applicant will be given a chance to clarify the issues or amend the application to remove misleading representations.

The status “Marked for Exam” in the trademark registration process signifies that the application has successfully passed the formality check and is now awaiting detailed examination by a Trademark Examiner.

Key Points About “Marked for Exam” Status:

✅ Indicates the application is under examination – The Trademark Registry has accepted the application for review and assigned it for a legal examination.

✅ Review for compliance – The examiner will check whether the application meets legal and statutory requirements, including:

• Distinctiveness: Whether the trademark is unique and capable of distinguishing goods/services.
• Availability: If the mark is similar to any existing trademarks.
• Legal Issues: Ensuring it does not violate any laws or prohibited terms.

✅ Next Step – Examination Report: Once the examination is complete, the examiner will issue an Examination Report, which may lead to:

• Acceptance (if no objections are found).
• Objection (if there are legal or similarity concerns, requiring a response from the applicant).
• Hearing (if further clarification is needed).

This is a crucial phase in the trademark registration process, as it determines whether the application will proceed to publication or face objections.

The status “Awaiting Reply to Examination Report” indicates that the Trademark Examiner has raised objections to your trademark application during the examination process. The application cannot proceed further unless the applicant provides a satisfactory response

Key Points About This Status:

🔹 Objections Raised – The Trademark Examiner has found issues in your application, such as lack of distinctiveness, similarity to existing trademarks, or other legal concerns.

🔹 Time Limit for Response – The applicant must submit a reply within 30 days from the date of the Examination Report.

🔹 Response Requirements – The reply should clarify, justify, or modify the application to overcome the objections. It may include:

• Legal arguments proving the distinctiveness of the mark.
• Evidence of prior use (if applicable).
• Amendments to the application (if required).

🔹 Consequences of Non-Response – If no response is filed within the stipulated period, the application may be abandoned, and the trademark will not proceed further.

Next Steps After Reply Submission:

Once the response is submitted:

✔ If the examiner is satisfied, the application moves forward for publication in the Trademark Journal.
✔ If the objections persist, a hearing may be scheduled.

Timely and well-prepared responses are crucial to ensuring the successful registration of the trademark.

If the examiner examines the trademark application and, after hearing the applicant’s response to the objection, he/she refuses the application, the trademark status shows ‘refused.’

The trademark status can also show ‘refused’ in cases when a third party is able to oppose the trademark application successfully.

Common Reasons for Trademark Refusal

1. Lack of Distinctiveness – If the trademark is too generic, descriptive, or commonly used, it may not qualify for registration.
2. Similarity to Existing Trademarks – If the proposed mark is too similar to an already registered trademark, it may cause confusion among consumers.
3. Deceptive or Misleading Nature – If the trademark misrepresents the nature, quality, or geographical origin of goods/services.
4. Improper Classification – If the application is filed under the wrong trademark class, it may lead to refusal.
5. Insufficient Description of Goods/Services – If the application lacks clarity about the goods/services covered under the trademark.
6. False or Misleading Ownership Claims – If there are false statements regarding ownership, usage details, or prior rights.
7. Similarity to Well-Known Trademarks – If the mark closely resembles a famous or well-known trademark, it may be refused to prevent dilution.
8. Offensive or Immoral Content – Trademarks containing offensive, obscene, or immoral elements are not permitted.
9. Failure to Respond to Trademark Office Actions – If the applicant fails to reply to objections within the given timeframe, the application may be refused.
10. Trademark Infringement – If the applied mark is found to violate the intellectual property rights of another registered trademark.
11. Misleading Trademarks – Marks that may deceive the public regarding the nature or quality of the goods/services.
12. Lack of Evidence of Use – If proof of prior or continuous use is required but not provided, the application may be rejected.

When your trademark application status shows “Refused,” it means the Trademark Examiner has determined that your trademark does not meet the necessary legal requirements for registration under the Trademark Act, 1999.

The first step is to carefully review the Examination Report or the official communication from the Trademark Registry to understand the specific reasons for the refusal, which may include issues like similarity to an existing trademark, lack of distinctiveness, or the trademark being deceptively similar to another mark.

If you believe the refusal is incorrect or can be overcome, you can file a response addressing the objections raised, such as providing evidence of distinctiveness, modifying the trademark to resolve similarities, or presenting legal arguments to counter the examiner’s decision.

If the issues cannot be resolved through a response, you can request a hearing with the examiner to further clarify your position. Should the refusal remain after the hearing, you have the option to appeal the decision to the Intellectual Property Appellate Board (IPAB).

Alternatively, if the refusal is based on insurmountable objections, you may need to consider revising your trademark and submitting a new application. It is essential to act within the given timeframes, typically 30 days, to avoid abandonment of the application.

If any trademark is added to the trademarks journal and advertised there, the status of the trademark application shows ‘Advertised before accepted.’ Any third party can oppose such trademark application within 4 months of being advertised.

• If no opposition is filed within this period, the Registrar reviews the application again and formally accepts the trademark.
• Once accepted, the status changes to “Advertised and Accepted.”
• After completing the final registration process and issuing the certificate, the status is updated to “Registered.”

The purpose behind the advertisement of a trademark in the Trademark Journal for a period of 4 months is to provide a public notice and an opportunity for third parties (such as other trademark owners or interested individuals) to raise any objections or oppose the registration of the trademark if they believe it conflicts with their existing rights. Here’s why this step is important:

1. Public Awareness:

The advertisement serves as a public announcement that a trademark application has been filed and is moving forward. It allows businesses, individuals, and other stakeholders to become aware of new trademarks that are being registered.

2. Opportunity for Opposition:

The 4-month period gives any interested party the opportunity to file an opposition against the trademark registration if they believe it may infringe on their own trademark or cause confusion in the marketplace.

3. Protecting Existing Trademark Owners:

The advertisement period acts as a protective mechanism for existing trademark holders. If another business files for a trademark that is too similar to theirs, they can use the opposition process to prevent the new trademark from being registered.

4. Transparency and Fairness:

The Trademark Journal is a tool for transparency in the trademark registration process. It ensures that the process is open and fair, allowing anyone with a legitimate concern about the trademark to voice their opposition before it is granted exclusive rights.

5. Ensuring Legal Certainty:

The publication also allows the public and other businesses to confirm whether a mark has been applied for or registered. This transparency reduces the chance of future legal disputes regarding trademark rights, as everyone can see which marks are in the process of registration.

6. Legal Standing:

If an opposition is filed during this period and is successful, the application may be rejected or amended, preventing the potential for legal conflicts in the future once the trademark is officially registered.

The Indian Trademarks Office, under the Controller General of Patents, Designs, and Trademarks (CGPDTM), Ministry of Commerce and Industry, is responsible for publishing the Trademark Journal of India.

This journal serves as an official public record that contains details of:

• New trademark applications that have been examined and are ready for advertisement.
• Accepted trademarks that may proceed to registration.
• Oppositions filed against advertised trademarks.
• Decisions on trademark disputes or hearings.

The Trademark Journal is published weekly and allows the public to review trademarks before they are officially registered. If anyone believes that a published trademark conflicts with their existing rights, they can file an opposition within four months from the date of advertisement.

This process ensures transparency and fairness in trademark registration, preventing conflicts and protecting intellectual property rights.

When a third party files an opposition against a trademark application within four months from the date of its advertisement in the Trademarks Journal, the application status changes to “Opposed.”

A trademark opposition is typically filed if the opposing party believes that the applied trademark:

• Is similar or identical to an existing registered trademark.
• May cause confusion among consumers.
• Is descriptive, generic, or misleading in nature.
• Violates any legal provisions under the Trademarks Act, 1999.

Once opposed, the application enters the opposition proceedings, where both parties (the applicant and the opponent) must submit their arguments and evidence before the Trademark Registrar. The decision on whether to register or reject the trademark depends on the outcome of these proceedings.

If the opposition is successfully defended, the trademark proceeds toward registration. However, if the opposition is upheld, the application may be refused or abandoned.

A trademark application is marked as “Abandoned” when the applicant fails to take necessary actions within the time limits prescribed under the Trademarks Act, 1999.

Common Reasons for Trademark Abandonment:

1. Failure to Respond to the Examination Report:
   • If the applicant does not submit a reply to the Examination Report within one month from the date of issuance, the application is abandoned.
2. Non-Filing of Counter-Statement in Opposition Proceedings:
   • If a trademark application is opposed by a third party, the applicant must file a counter-statement within two months from receiving the notice of opposition. Failure to do so results in abandonment.
3. Non-Attendance at Show-Cause Hearings:
   • If the Trademark Registrar schedules a show-cause hearing and the applicant fails to attend or provide a valid reason for absence, the application may be abandoned.
4. Failure to Renew a Trademark Application (for Renewal Cases):
   • If a trademark owner does not apply for renewal before the expiration of the trademark, it can lead to abandonment.

Impact of Abandonment:

Once a trademark application is abandoned, the applicant loses all rights over it, and the mark becomes available for new applicants to register. If the applicant still wishes to register the mark, they must file a fresh application and start the process again.

To avoid abandonment, applicants should regularly check the status of their trademark application and respond to official notices within the stipulated deadlines.

The time it takes to get a trademark approved and registered in India can vary depending on various factors, but on average, the process generally takes between 18 months to 3 years from the date of filing the application. This timeline can be broken down into different stages, each of which may involve varying lengths of time:

1. Initial Filing and Acknowledgment (1-2 weeks):

• Once you file your trademark application (Form TM-A), you will receive an acknowledgment receipt from the Trademark Office.

• The official filing date is noted, and the application is processed for the formality check.

2. Formality Check (1-2 months):

This is where the Trademark Office checks whether all the documents are in order, the application is complete, and the required fees have been paid. This process typically takes about 1-2 months.

• If everything is in order, the application proceeds to the next stage; if not, you may be asked to submit missing documents or correct errors.

3. Examination (6-12 months):

• After passing the formality check, the application is marked for examination. The Trademark Examiner reviews the application for conflicts with existing trademarks, distinctiveness, and other legal requirements.
• This can take anywhere between 6 to 12 months, depending on the workload of the Trademark Office and the complexity of the application.
• If the examiner raises objections, you will be required to respond. This may extend the timeline if further clarifications or legal arguments are needed.

4. Publication in Trademark Journal (1-3 months):

• If the application passes the examination stage (either no objections or objections are resolved), the trademark is advertised in the Trademark Journal.
• The advertisement period lasts for 4 months during which third parties can file an opposition if they believe the mark conflicts with their own.
• If no opposition is filed, the application moves forward to the next stage. If there is an opposition, the process could take longer, depending on the resolution of the opposition.

5. Registration (1-3 months):

• After the opposition period ends, if no objections or oppositions remain, the application moves forward for registration.
• The Trademark Office will issue the Trademark Registration Certificate, which grants you exclusive rights over the mark.
• This step generally takes 1 to 3 months after the opposition period.

6. Total Timeline:

• Without opposition: Typically, the process can take 18 to 24 months (about 1.5 to 2 years).
• With opposition: If an opposition is filed, the process may extend to 3 years or more, depending on how long the opposition proceedings take.

Yes, the TM (Trademark) symbol can be used without registering your trademark. However, there are some key points to understand about using the TM symbol and the difference between it and the ® (registered trademark) symbol:

1. TM Symbol:

• The TM symbol is used to indicate that you are claiming the mark as your trademark, even if it is not yet registered.
• It signals to others that you are using the mark as a brand or identifier for your goods or services.
• You are free to use the TM symbol as soon as you start using the trademark in commerce, i.e., once you begin offering the product or service under that mark.
• Important: Using the TM symbol does not provide legal protection or exclusive rights, but it can help in asserting your claim to the mark in case of disputes.

2. Registered Trademark Symbol (®):

• The ® symbol can only be used once your trademark has been officially registered with the Trademark Office.
• After the trademark is registered, it gives you exclusive legal rights to the mark and helps protect it from infringement by others.
• Using the ® symbol without a registered trademark can lead to legal consequences.

Benefits of Registering a Trademark:

While you can use the TM symbol without registering, there are significant benefits to registering your trademark:

• Legal Protection: Once registered, you have exclusive rights to use the mark in connection with the goods or services it represents, and you can take legal action if someone infringes your mark.
• Public Record: A registered trademark becomes part of the public record, making it easier to assert ownership and prevent others from using similar marks.
• Enhanced Protection: Registration provides you with nationwide protection and stronger legal standing in case of disputes.
• Right to Use ®: After registration, you can use the ® symbol, indicating that your trademark is protected by law.

If the applied class for your trademark is wrong, it can create several issues in the trademark registration process. In the Trademark Act, 1999, the classification of goods and services is based on the Nice Classification System, which organizes goods and services into 45 classes.

Choosing the wrong class for your trademark can lead to complications, including delays or even rejection of your application. Here’s what can happen:

1. Objections from the Examiner:

• When the Trademark Examiner reviews your application, they may find that the goods or services listed in your application do not align with the class you’ve applied under.
• If the class is incorrect, the examiner may issue an objection, asking you to correct the class. This will delay the process and require you to respond with the correct class.

2. Delays in the Process:

• The wrong class can lead to a delay in the processing of your trademark application, as you will need to amend the class and resubmit the application.
• You may be asked to provide a justification or clarification regarding the goods or services to align with the correct class.

3. Rejection or Refusal:

• If the mistake in the class is not corrected or is found to be a serious error, the application may be refused or rejected by the Trademark Office.
• In some cases, the office may consider the application incomplete until the issue is resolved.

4. Opposition or Confusion:

• If the incorrect class leads to confusion regarding the scope of your trademark, or if it overlaps with another business’s trademark in a different class, third parties may file an opposition against your application, further complicating the process.

The trademark registration process involves several steps, and each step must be carefully followed to ensure that the trademark gets registered successfully. Below is an overview of the key steps involved in the trademark registration process under the Trademark Act, 1999:

1. Trademark Search:

• Purpose: Before applying for a trademark, it is advisable to conduct a trademark search to ensure that your trademark is unique and does not conflict with any existing registered trademarks.
• How: This can be done through the Trademark Registry’s database or by seeking the help of a trademark attorney. The search will help identify potential conflicts and avoid wasting time or money on a mark that is already taken.

2. Filing the Trademark Application:

• Purpose: After confirming the uniqueness of your trademark, you need to file a trademark application with the Indian Trademark Office (Intellectual Property Office).
• Forms: The application is typically filed using Form TM-A for a new trademark.
• Details: The application should include:
  • Name and address of the applicant.
  • The mark (word, logo, or a combination).
  • A clear representation of the mark.
  • The class of goods or services under which the trademark is to be registered (according to the Nice Classification system).
  • A description of the goods/services the mark represents.
• Filing Fees: The fee depends on the number of classes you are registering the mark under.

3. Formalities Check (Formality Check):

• Purpose: The Trademark Office will first verify that the application is complete and that all necessary documents and fees are in order.
• Outcome: If the application is in order, it is accepted and moved to the next stage. If there are issues, you will be asked to correct or provide missing information.

4. Examination of the Application:

• Purpose: After passing the formalities check, the application is examined by the Trademark Examiner.
• Review: The examiner reviews the trademark for any conflicts with existing trademarks and checks if it meets the requirements for distinctiveness, public policy, etc.
• Examination Report: If the examiner finds any issues (such as similarity with an existing trademark), an Examination Report is issued with objections.

5. Reply to Examination Report:

• Purpose: If objections are raised, you must respond within the specified time (usually 30 days).
• Reply: Your response may involve:
  • Clarifying issues raised by the examiner.
  • Amending the application (e.g., adjusting the description or logo).
  • Providing evidence to overcome objections.
• If the examiner is satisfied with your response, they will proceed to the next step.

6. Advertisement in the Trademark Journal:

• Purpose: Once the application is accepted, it is published in the Trademark Journal.
• Duration: The trademark is advertised for 4 months to allow third parties to file oppositions if they believe your trademark conflicts with their own.
• Opposition Period: If no one opposes the trademark within the 4-month period, the process moves forward. If opposition is filed, the case will go for resolution before the Trademark Office.

7. Opposition (if any):

• Purpose: If any third party files an opposition against your trademark during the 4-month advertisement period, you will be notified.
• Response to Opposition: You must respond to the opposition by either:
  • Defending the uniqueness of your trademark.
  • Resolving the dispute through negotiation or amendment of your trademark.
• If the opposition is unsuccessful, the application proceeds to registration.

8. Registration of the Trademark:

• Purpose: After the opposition period expires (or any opposition is resolved in your favor), the trademark is officially registered.
• Certificate of Registration: The Trademark Office will issue a Trademark Registration Certificate, which grants you exclusive rights to use the trademark for the goods/services it is registered under.
• Validity: A registered trademark is valid for 10 years, and you can renew it indefinitely in 10-year increments.

9. Post-Registration:

• Use of ®: Once your trademark is registered, you can use the ® symbol to indicate that your trademark is protected under law.
• Monitoring and Enforcement: It’s important to monitor the market for potential infringement of your trademark and take action if necessary.
• Renewal: As mentioned, trademarks need to be renewed every 10 years to maintain protection.

The mode of replying to an Examination Report for a trademark application is as follows:

1. Online Submission:
   • The applicant or their authorized agent can submit the reply online through the gateway provided on the homepage of the office website www.ipindia.nic.in , provided the applicant or authorized agent has a level III digital signature.
2. Physical Submission:
   • Alternatively, the reply can be submitted personally or by post at the Head Office or the appropriate office of the Trade Marks Registry.
3. Supporting Documents:
   • Any affidavit or supporting documents can also be submitted along with the Reply to the Examination Report.

This process ensures that the applicant or their authorized agent can address the office objections raised in the Examination Report in a timely and proper manner.

If your trademark application faces objections related to formality requirements, it means that the Trademark Office has identified an issue with the documentation, application details, or other procedural aspects. These are usually minor issues that can be resolved relatively quickly, but they still need to be addressed promptly to avoid delays in the registration process.

Here’s what you should do in case of objections related to formality requirements:

1. Understand the Objection:

• Review the Objection Notice: The Trademark Office will send an Objection Notice that outlines the specific formality issues that need to be addressed. These could include:
  • Missing or incorrect documents (e.g., power of attorney, priority documents).
  • Incorrect details in the application (e.g., incorrect applicant name or address).
  • Improper classification of goods/services (e.g., wrong class).
  • Signature issues (e.g., missing or invalid signature).
  • Payment issues (e.g., incomplete fee payment or incorrect fee amount).
• Identify the exact issue that is causing the objection. This will help you focus on the correct resolution.

2. Correct the Mistakes or Provide the Missing Information:

• Document Corrections: If the objection is related to incorrect or missing details, you will need to provide the correct information. For example, if there’s a spelling error in the applicant’s name or address, you will need to provide the corrected version.
• Submit Missing Documents: If any documents were omitted (like a signed power of attorney), make sure to gather and submit those.
• Fee Payment: If the fee payment was incorrect or missing, ensure that you make the correct payment and provide proof.
• Class Correction: If the objection is due to the wrong class being selected, you can amend the application to reflect the correct class of goods or services.

3. Responding to the Objection:

After identifying the issues, you will need to respond to the Trademark Office by filing a reply. This should be done through Form TM-M (if you are amending the application) or a response to the objection.

• Your response should include:
  • A clear explanation of the corrections made or documents provided.
  • Any additional documents that support your changes (such as a corrected power of attorney or proof of payment).

4. Submit the Response Within the Specified Timeframe:

• You must respond to the objection within the time period given by the Trademark Office (usually 30 days from the date of the objection notice).
• Failing to respond within the prescribed time can result in the abandonment of your application.

5. Wait for the Trademark Office’s Review:

• Once you have submitted your response, the Trademark Office will review the corrections and decide whether the application can proceed further.
• If the issues are resolved satisfactorily, the application will proceed to the next stage (examination or advertisement in the Journal).
• If there are further issues or objections, the Trademark Office may send another notice, and you will need to respond accordingly.

6. Professional Help (if needed):

• If you are unsure about how to correct the objections or need help addressing more complex issues, consider consulting a trademark attorney or agent. They can help you draft the response and ensure that your application complies with all the formality requirements.

In case of objections related to the classification of goods and services mentioned in the trademark application, the following actions can be taken:

1. Objection: Goods/Services Do Not Fall in the Class Mentioned
   • Amendment Request: The applicant may file a request to amend the application by correcting the class if the goods or services were wrongly classified.
   • Defense: The applicant may submit that the goods or services have been rightly classified according to the classification of goods or services published by the Registrar, and thus, there is no need for amendment.

2. Objection: Some Goods/Services Do Not Fall in the Class

1. • Amendment Request: The applicant may file a request for amendment by deleting the goods or services that do not belong in the specified class.
   • Defense: Alternatively, the applicant may assert that, as per the classification published by the Registrar, all the goods or services in the application do indeed fall under the class mentioned.

These steps allow the applicant to either correct the application or defend the current classification if they believe it is in line with the Registrar’s published classification.

When the registry sends an objection on the relative grounds of refusal (due to the existence of identical or similar trademarks for similar goods or services), the applicant can take the following actions:

1. Clarify Differences Between Trademarks:
   • The applicant may submit a statement explaining that the trademarks cited as conflicting in the examination report are different from the applicant’s trademark in terms of appearance, sound, meaning, or overall impression.
   • The applicant can argue that the goods or services covered in their application are distinct from those covered by the conflicting marks.
2. Obtain Consent/No Objection from the Conflicting Mark Proprietor:
   • The applicant may also provide evidence in the form of a consent letter or a No Objection Certificate (NOC) from the proprietor of the conflicting trademark, stating that they have no objection to the registration of the applicant’s mark.

By taking these steps, the applicant can address the objections on relative grounds and demonstrate that their trademark should not be refused based on the existence of similar or identical marks.

The matter of registering a trademark application is set down for hearing under the following circumstances:

• When Objections Remain: If the office objections to the acceptance of the trademark application cannot be waived, even after considering the applicant’s response to the examination report, the matter will be set down for a hearing.
• Show Cause Hearing: This hearing, commonly referred to as a show cause hearing, is scheduled and conducted at the appropriate office (offline/online) of the Trade Marks Registry.

The purpose of this hearing is for the applicant to present their case and respond to any objections raised by the registry, potentially leading to the resolution of any issues preventing the acceptance of the trademark application.

To know when your trademark hearing is scheduled, you need to follow a few steps. Generally, a hearing for a trademark application may be scheduled if there is an opposition, objection, or dispute that needs to be resolved, or if there is a need for further clarification regarding your application.

Here’s how you can check when your trademark hearing is scheduled:

1. Check the Trademark Application Status Online:

• Visit the Indian Trademark Office Website: You can check the status of your trademark application on the official IP India website.
  • Go to www.ipindia.gov.in.
• Track Your Application:
  • Select “Trademark” under the “Online Services” section.
  • Then, click on “Public Search” or “Check Status”.
  • Enter your Application Number or Receipt Number to find the status of your application.
• If a hearing is scheduled for your case, the status will usually show “Hearing Scheduled” or indicate a date and time for the hearing.

2. Review the Examination Report or Objection:

• If the Trademark Examiner has raised any objections or if there is an opposition to your trademark application, you may receive a communication or Examination Report from the Trademark Office.
• This notice may include details about when the hearing is scheduled and any necessary actions you need to take before the hearing.
• The notice could be sent by email or post. Make sure you keep an eye on the communication from the Trademark Office.

3. Respond to the Examination Report or Opposition:

• If you’ve received an objection or an opposition notice, the Trademark Office may schedule a hearing if the issue isn’t resolved through correspondence or documentation alone.
• In such cases, the Trademark Registry will send a hearing notice to the applicant and the opposing party. The notice will specify the date, time, and place of the hearing.
• If you don’t receive a response or hearing notice and the status shows an objection or opposition, it’s a good idea to respond promptly to avoid unnecessary delays.

4. Check with the Trademark Office (Manual Follow-up):

• If you are unsure of the hearing date or need more specific information, you can also contact the Trademark Office directly.
• You can either:
  • Call the Trademark Office where your application was filed.
  • Visit the Trademark Office in person (this may not be convenient or necessary if the application is being processed online).
  • Email the Trademark Office for updates on the status or hearing details.

5. Use a Trademark Attorney or Agent:

• If you have hired a trademark attorney or agent, they will typically handle all communications, including the scheduling of hearings.
• They will ensure you are notified of any hearing dates and can assist with preparing for the hearing and responding to any issues that arise.

6. Monitoring the Journal for Updates:

• In some cases, if your application has been contested or if a decision is pending based on the outcome of a hearing, you may see updates in the Trademark Journal.
• You should monitor the Trademark Journal as well, as the publication may contain notices about hearings or final decisions related to your application.

The status “Ready for Show Cause Hearing” in the context of a trademark application indicates that the Trademark Office has reviewed your application and is now proceeding to schedule a Show Cause Hearing. This usually happens after an objection or opposition has been raised against your trademark application, and the office is seeking clarification or a formal response from you regarding the issues at hand.

A Show Cause Hearing is scheduled when:

1. Objections from the Examiner: The Trademark Examiner has raised objections about your trademark (such as distinctiveness, similarity to other marks, or non-compliance with the requirements of the Trademark Act).
2. Opposition: There may have been an opposition filed against your trademark by a third party during the publication in the Trademark Journal. This could be due to claims that your mark is too similar to theirs or infringes on their rights.
3. Failure to Respond or Resolve Issues: If you did not satisfactorily respond to the objections, or if the issues remain unresolved, the office may schedule a Show Cause Hearing for you to present your arguments or clarifications.

Grounds of Objection under Section 9 – Absolute Grounds for Refusal

Section 9 primarily deals with absolute grounds for refusal of registration, which means the refusal is based on the inherent characteristics of the trademark rather than its similarity to an existing mark.

1. Non-Distinctiveness (Section 9(1)):
   • A trademark will be refused registration if it is not capable of distinguishing the goods or services of one person from those of others. In other words, a trademark must have distinctiveness to be eligible for registration.
   • Trademarks that are too common, generic, or descriptive of the goods or services they represent are not considered distinctive.
     • Example: A mark like “Best Coffee” for coffee products would be refused because it is descriptive of the quality of the product.
2. Descriptive or Generic Marks (Section 9(1)(b)):
   • Marks that are merely descriptive of the quality, quantity, intended purpose, value, geographical origin, or other characteristics of the goods/services are not eligible for registration.
     • Example: “Sweet” for sweeteners or “Fast Food” for restaurants.
   • Generic terms that have become common names for the goods or services in the market will also be refused.
     • Example: “Computer” as a mark for a computer manufacturing company.

1. Marks Lacking Distinctive Character (Section 9(1)(c)):
   • If the mark consists of common shapes or designs that are customarily used in the trade or are needed to identify the nature of the goods/services, they may be rejected. For instance, a simple geometric design or a shape that is not distinctive enough for the particular goods/services cannot be registered.
     • Example: A simple circular shape for a watch or a rectangular box design for packaging.
2. Marks Consisting of Deceptive or Misleading Features (Section 9(2)):
   • A trademark that is deceptive or misleading with respect to the goods or services it is intended to represent cannot be registered.
     • Example: A mark that gives the impression of being of a particular quality, origin, or nature but is not, could be misleading and is therefore not registrable.
     • Example: “Genuine Leather” for goods that are made of synthetic materials.
3. Marks Consisting of Commonly Used Symbols (Section 9(3)):
   • Trademarks that are made up of common symbols, motifs, or signs that are used widely in trade and do not have inherent distinctive character will be rejected.
     • Example: A mark consisting solely of a common star symbol or heart shape for a wide range of goods.
4. Marks Contradicting Public Policy or Morality (Section 9(4)):
   • A trademark will be refused registration if its use would be contrary to public policy or morality. This provision prevents the registration of trademarks that may be offensive, discriminatory, or socially unacceptable.
     • Example: A trademark with offensive language, hate symbols, or those promoting violence or discrimination.

Steps to Overcome Objections under Section 9:

1. Respond to the Objection in Writing:
   • When the Examination Report is issued, you will need to file a response within the specified time (usually 30 days).
   • In your response, address each objection raised by the examiner, providing arguments, evidence, and legal precedents to counter the objection.
2. Submit Supporting Evidence:
   • If you are claiming secondary meaning, provide evidence of use in the marketplace (e.g., advertisements, sales records, media coverage) to show that your mark has become distinctive over time.
   • If the mark is descriptive but has acquired distinctiveness, provide evidence demonstrating public recognition of the mark.
3. Amend the Trademark (if applicable):
   • If the examiner’s objection is based on something amendable (such as slight modification in the wording or the addition of a logo), you may amend the mark and submit the updated version.
4. Request a Hearing (if needed):
   • If the examiner still refuses to accept your response or if there are complex objections that need more detailed discussion, you can request a Show Cause Hearing. This hearing will allow you to present your arguments in person.
5. Seek Legal Help:
   • If you are unsure of how to address the objections or need assistance preparing your response, it is advisable to consult with a trademark attorney. They can help you craft a solid response to overcome the objections raised under Section 9.

Grounds for Objection under Section 11

1. Similarity with Existing Registered Trademark (Section 11(1)):
   • A trademark shall not be registered if it is identical or deceptively similar to an existing registered trademark.
   • This includes cases where the marks are so similar that their use would likely cause confusion or deception among consumers.
   • It also applies if the marks are identical or confusingly similar in terms of sound, appearance, or meaning.
2. Similarity with Well-Known Trademarks (Section 11(2)):
   • Even if the trademark is not identical to an existing one, it cannot be registered if it is similar to a well-known trademark.
   • This includes situations where the use of the mark would take unfair advantage of or dilute the distinctiveness of a well-known trademark.
   • Well-known trademarks are those that have a high degree of recognition across a wide geographical area.
3. Marks Identical or Similar to a Mark with Prior Use in India (Section 11(3)):
   • A trademark shall not be registered if it is identical or similar to a prior-used mark that is known in India, even if the prior mark is not registered.
   • If a trademark has been in use for some time and has established a reputation, any identical or similar mark may cause confusion or harm the goodwill of the earlier mark.
4. Descriptive Marks (Section 11(4)):
   • A trademark that is descriptive of the goods or services it represents may be rejected.
   • For example, a mark that directly describes the nature, quality, or geographical origin of the goods/services may be considered generic and not distinctive enough to be registered.
   • Examples of descriptive marks include terms like “Fresh” for fruit juices or “Fast” for delivery services.
5. Marks Containing Names/Signs of Public Interest (Section 11(5)):
   • Marks that include generic names, common surnames, or descriptive terms that are used by the public for trade are not eligible for registration.
   • Marks that consist of or resemble a government emblem, national flag, or any symbol that is of public interest cannot be registered. For instance, you cannot register a trademark that includes the image of the Indian flag.
6. Marks Contrary to Public Policy or Morality (Section 11(6)):
   • A trademark will be refused if its use is contrary to public policy or morality.
   • For example, marks that include offensive, immoral, or inappropriate content, such as those related to hate speech or discriminatory symbols, would be refused registration.
7. Conflict with Official Signs or Symbols (Section 11(7)):
   • Trademarks that include official signs or symbols (such as the Red Cross or symbols of international organizations like the UN), or those that are likely to mislead consumers regarding their association with government or international organizations, will be refused registration.

Under the Trade Marks Act of 1999 in India, Section 11 outlines grounds for objection to the registration of a trademark. The objections typically relate to the trademark being devoid of distinctiveness, being descriptive or non-distinctive, and being identical or similar to an existing trademark among others.

To effectively overcome objections raised under Section 11, consider the following strategies:

1. Distinctiveness: Ensure that your trademark is distinctive. If the objection is based on it being non-distinctive, substantiate how your trademark has acquired distinctiveness through usage or reputation in the market. This can be proven through evidence of sales, advertising, and market surveys.

2. Disclaimers: If the objection arises from a portion of the mark being descriptive, you might consider filing a disclaimer for that portion while retaining the distinctive elements of the trademark.

3. Coexistence Agreements: If the objection is due to similarity with a pre-existing trademark, negotiate a coexistence agreement with the owner of the existing mark. A properly drafted agreement can help clarify that both trademarks can coexist in the relevant market, potentially aiding your application.

4. Amend the Application: If the trademark can be modified to distinguish it from existing marks (by changing the design, altering spelling, or adding a unique element), consider revising the application.

5. Evidence of Use: Provide evidence that your trademark has been used in commerce, demonstrating that it serves to identify your goods or services clearly and uniquely in the minds of consumers.
6. Legal Precedents: Refer to legal precedents or past trademark registrations that highlight the distinctiveness or uniqueness of your mark to support your argument against the objection.
7. Expert Opinions: Obtain expert testimonies or opinions that support the claim of distinctiveness or that challenge the grounds of the objection.
8. File an Appeal: If the application is refused and you believe you have valid grounds for registration, you have the option to appeal the decision before the Intellectual Property Appellate Board (IPAB) or the appropriate forum.
9. Consult a Trademark Attorney: It’s advisable to consult with a trademark attorney who can help navigate the legal complexities and aid in developing a robust strategy for overcoming objections.

10. Strategic Communication: In your responses to the objections raised by the Trademark Registry, ensure that your communication is clear, concise, and backed by evidence to effectively counter the points raised against your application.

The hearing of a trademark application can be adjourned under various circumstances, including:

1. Party Request: Either party can request an adjournment with valid reasons, such as needing more time to gather evidence.
2. Procedural Issues: Adjournments may occur if there are unresolved procedural matters before the hearing.
3. Emergencies: A party unable to attend due to an emergency can request an adjournment.
4. Mutual Consent: Both parties may agree to an adjournment for convenience.
5. Hearing Officer’s Discretion: The officer conducting the hearing has the authority to grant or deny adjournments based on the circumstances.

After the hearing, the next steps taken by the Trade Marks Registry are as follows:

1. Consideration of Evidence: The Hearing Officer will carefully consider various factors, such as:
   • Evidence of use of the mark
   • Distinctiveness of the mark
   • Existence of any earlier similar marks
   • Nature of the goods or services covered under the application
   • Other relevant facts related to the trademark application.
2. Possible Outcomes:
   • Acceptance for Registration: If the Hearing Officer is satisfied with the application, they may accept the trademark for registration.
   • Acceptance with Conditions: The Hearing Officer may accept the application with conditions, such as specifying the use of the trademark or limiting the geographical area of trade.
   • Proposed Advertisement: In some cases, the Hearing Officer may propose that the application be advertised before it is accepted.
   • Refusal: If the Hearing Officer finds that the trademark does not meet the necessary requirements, they may refuse to register the trademark and will provide reasons for the refusal.

These are the possible actions the registry may take after a trademark hearing, depending on the evaluation of the application.

Yes, an applicant can withdraw their trademark application during the course of the hearing. Here’s how the process works:

1. Withdrawal Request:
   • The applicant can request to withdraw the application, or the authorized agent acting on behalf of the applicant may also request the withdrawal.
2. Submission of Withdrawal Letter:
   • A withdrawal letter must be submitted in writing to the Hearing Officer.
   • The letter should be uploaded into the system for official records.
3. Verification:
   • The Hearing Officer will verify the genuineness of the withdrawal letter and the authority of the person who is withdrawing the application. This will be checked based on the records of the application.
4. Processing the Withdrawal:
   • If the withdrawal is done by a competent person, the Hearing Officer will treat the application as withdrawn, make the necessary remarks in the system, and update the status of the application accordingly.

In summary, the applicant or their authorized agent can withdraw the trademark application, but it must be done formally with proper documentation and verification by the Hearing Officer.

If the hearing officer is not convinced by the submissions made during the hearing regarding a trademark application, several outcomes could occur:

1. Denial of Application: If the hearing officer finds the applicant’s arguments and evidence insufficient to meet the legal requirements for trademark registration, they may deny the application. This decision would mean that the applicant cannot register the trademark in question.

2. Issuance of a Refusal Notice: The hearing officer may issue a refusal notice that outlines the reasons for the denial. This notice would provide clarity on the specific issues that led to the decision, which is important for the applicant to understand any shortcomings.
3. Opportunity to Amend: Depending on the jurisdiction and specific circumstances, the hearing officer may allow the applicant to amend the application or provide additional evidence to address the concerns raised. This could involve submitting a revised application or new supporting documents.

4. Possible Further Proceedings: If the application is denied but there are grounds for appeal, the applicant may have the option to appeal the decision to a higher authority or tribunal. Specific procedures for appeals will depend on the local laws governing trademarks.

5. Implications for Future Applications: A denial by the hearing officer may also carry implications for any future trademark applications by the same applicant, especially if the reasons for denial relate to the distinctiveness or likelihood of confusion with existing marks.

6. Costs and Preparations: Denial may also result in costs incurred during the application process. If the application is refused, the applicant should carefully assess the decision and determine if it would be beneficial to consult with a trademark attorney to strategize for possible next steps or to improve future applications.

A Hearing officer typically communicates their decision to the applicant through a formal written document, which may take the form of:

1. Written Decision: A detailed written decision that outlines the findings of fact, the application of the relevant law, and the reasoning behind the decision. This document will clearly state whether the trademark application is approved, refused, or conditionally approved.

2. Order: A formal order that sets out the decision and any directions or requirements that the applicant must comply with. This could include instructions to amend the application, provide additional evidence, or take other specific actions.
3. Notification Letter: A letter that informs the applicant of the decision and provides instructions on the next steps. This letter may be accompanied by the written decision or order.
4. Official Gazette: In some cases, the decision may be published in the official trademark gazette or journal, especially if the application is approved and the trademark is proceeding to registration.

The Trademark Journal contains the following:

1. Public Notices and Notifications: Any notices or notifications issued by the Trademark Office.
2. Accepted or Advertised Applications: Trade mark applications that have been accepted or ordered to be advertised before acceptance.
3. Re-advertisements: Applications that are re-advertised, if ordered by a competent officer.
4. Corrigenda/Further Notifications: Corrections or further notifications regarding earlier published applications.
5. List of Registered/Updated Trademarks: A list of trademarks that have been registered, renewed, removed, or withdrawn.
6. Post-Registration Changes: Updates such as assignments or transmissions recorded after registration.
7. International Non-Proprietary Names: International non-proprietary names as published by the World Health Organization (WHO) from time to time.
8. Other Relevant Information: Any other information deemed necessary for publication by the registry.

The Trademark Journal serves as an official publication for the trade mark office to keep the public informed about the status and updates regarding trademarks.

MIS R refers to the “Miscellaneous Request” form (Form MIS R) used in the Indian trademark system. It is used for submitting certain specific requests to the Trademark Registry that do not fall under other specific categories, such as:

• Request for correction of a mistake: If there’s a typographical error or a mistake in the trademark application, you can use Form MIS R to request the correction.                                               
• Amendment of application: If you need to modify certain details in your trademark application or registration, such as the name or address of the trademark owner, you can file a request using Form MIS R.                                         
• Request for a change of name: If the ownership of the trademark changes (such as from an individual to a company), this form can be used to request an update.                                      
• Other Miscellaneous Requests: This form is generally used for any other request that doesn’t have a separate prescribed form under the Trade Marks Rules.

There is no fee associated with submitting a reply to the examination report itself. However, if you seek assistance from a professional (such as a trademark attorney or agent) to draft or file the reply, they may charge a nominal fee for their services.

Before submitting the reply, it is advisable to verify the correctness of the reply, either by reviewing it yourself or confirming with the professional assisting you, to ensure that the response is accurate and meets the registry’s requirements.

After filing the reply to the objection, the next steps are as follows:

1. Waiting Period: There is a waiting period of 15 days after submitting the reply to the objection.
2. Possible Outcomes:
   • Positive Response: If the response is favorable, your trademark will be advertised in the Trademark Journal, signaling that it has been accepted for registration.
   • Negative Response: If the response is unfavorable, you will be required to appear in a trademark hearing to address the objections raised.

Under the Trade Marks Act, 1999, the provision for the renewal of a trademark is outlined in Section 25 of the Act. Here is a detailed breakdown of the relevant provisions related to trademark renewal according to the Trade Marks Act, 1999:

Section 25 of the Trade Marks Act, 1999 – Renewal of Registration

This section deals with the renewal process and the circumstances under which a registered trademark can be renewed.

1. Period of Registration

• A trademark is registered for an initial period of 10 years.
• After the 10-year period, the trademark can be renewed for subsequent periods of 10 years each.

2. Application for Renewal (Section 25(1))

• The owner of a registered trademark must apply for renewal in order to continue enjoying the protection of the trademark after the initial 10 years.
• The application for renewal must be filed before the expiration of the 10-year period.

3. Renewal of Trademark (Section 25(2))

• If the application for renewal is filed within 6 months after the expiration of the initial 10-year period (i.e., during the grace period), the trademark can still be renewed.
• However, if the renewal is filed during the grace period, the owner will be required to pay a late fee in addition to the regular renewal fee.

4. Request for Renewal (Section 25(3))

• The renewal application must be filed with the Registrar of Trademarks in the prescribed form (Form TM-R).
• The renewal fee must be paid as per the rules.

5. Failure to Renew (Section 25(4))

• If the renewal application is not filed within the stipulated time period (i.e., within the grace period), the trademark will be removed from the register.
• Once the trademark is removed from the register, the trademark owner loses all rights associated with the trademark, and the mark will no longer be protected.

6. Renewal of Trademarks with Multiple Classes

• If a trademark is registered in multiple classes, the trademark owner must apply for renewal of the trademark in each class separately and pay the renewal fee for each class.

No, there is no limit on the number of times a trademark can be renewed. A trademark can be renewed indefinitely, as long as it continues to be used and the renewal application is filed within the specified time frame. The protection of the trademark can continue for as long as the renewal process is followed, and the trademark remains in active use.

In general, a trademark is initially registered for 10 years, and it can be renewed for additional 10-year periods indefinitely, provided the requirements for renewal are met.

Following are the easy steps for renewal of Trademark:

1. Go to the Official Trademark Portal: Visit the IP India website at gov.in.
2. Log in to Your Account:

1. • If you already have an account, log in using your credentials.
   • If you do not have an account, create a new account by registering on the portal.

3. Select the Renewal Option:

1. • Once logged in, select the “Renewal” option under the “Trademark” section.
   • Enter the trademark registration number and details to search for the trademark.

4. Pay the Renewal Fee:

1. • After entering the details, you will be asked to pay the renewal fee.
   • The fee is ₹4,500 per class for individuals/startups, and ₹9,000 per class for companies.
   • You can pay via credit card, debit card, or net banking.

5. Submit the Application:

1. • Once you have completed the form and paid the renewal fee, submit the application.
   • If the application is filed by a trademark agent, a power of attorney may need to be provided.

To file an application for trademark renewal in India, follow these steps:

1. Prepare for Renewal:

• Review Your Trademark: Ensure the trademark you want to renew is still valid and that you are the rightful owner.
• Identify the Correct Class(es): Know the class(es) under which your trademark is registered. The renewal fee is charged per class.

2. Access the Trademark Portal:

• Go to the official Indian Trademark Portal: https://ipindia.gov.in.

3. Login or Register:

• If you already have an account, login using your credentials.
• If you do not have an account, you will need to register on the portal.

4. Select the Trademark Renewal Option:

• After logging in, navigate to the “Trademark” section.
• Select the option for “Renewal” of an existing trademark.

5. Enter Trademark Details:

• Provide the Trademark Registration Number and other relevant details about the trademark you are renewing.
• Ensure the trademark number matches the registered trademark you intend to renew.

6. Fee Payment:

• Calculate and Pay the Renewal Fee: The fee is typically ₹4,500 per class for individuals and small enterprises, and ₹9,000 per class for companies. Additional fees apply if the application is filed after the expiration date (late fee).
• Choose the Method of Payment: You can pay the fees online through debit/credit cards or net banking.

7. Submit the Application:

• After filling in all required details and making the payment, submit your renewal application.
• You may need to upload some documents, such as a power of attorney (if filed by an agent) or any other required documents.

8. Receive Acknowledgment:

• Once the renewal application is submitted successfully, you will receive an acknowledgment from the trademark office.
• The application will be processed, and the trademark will be renewed once the payment and details are verified.

9. Track the Status:

• You can track the status of your renewal application through the “Track Application Status” section on the trademark portal.

10. Renewal Certificate:

• Once the renewal is processed and accepted, you will receive the Renewal Certificate confirming that your trademark is protected for another 10 years from the renewal date.

The renewal application for a trademark is generally processed and examined by the Indian Trademark Registry. Here’s how the registry verifies and examines the renewal application:

1. Verification of Formalities:

• The trademark registry first ensures that the formalities of the renewal application are met. This includes verifying:
  • Correct Applicant Details: Ensuring the applicant’s details (such as name, address, etc.) are accurate.
  • Application Details: Confirming the renewal request matches the correct trademark and its registration number.
  • Fee Payment: Checking that the required renewal fees have been paid and that the amount is correct. If payment is not made or is incorrect, the application will be flagged.

2. Checking the Status of the Trademark:

• The registry will also verify whether the trademark is still valid and active. This includes:
  • Checking that the trademark is not subject to revocation or cancellation proceedings.
  • Ensuring the mark is still in use or has not become abandoned or discontinued.

3. Examination of the Renewal Application:

• The examiner at the trademark registry examines whether the renewal application complies with the procedural requirements. This involves reviewing:
  • Correctness of Documents: Ensuring all required documents are attached (if any).
  • Timeliness of Renewal: Verifying that the renewal application is filed within the appropriate time frame (i.e., within the last 6 months before expiration or within the grace period).

4. Late Fees (If Applicable):

• If the renewal application is filed after the expiration of the trademark registration but within the 6-month grace period, the registry checks if the late fee has been correctly paid.
• If the late fee is not paid, the application may be rejected or flagged for correction.

5. No Need for Further Examination of Distinctiveness:

• Unlike the initial registration process, the renewal does not involve a substantive examination of the distinctiveness of the trademark or its potential conflicts with other marks.
• However, if there are any objections related to procedural issues (such as missing documents or incorrect details), the registry may ask the applicant to correct them.

6. Issuance of Renewal Certificate:

• If everything is in order and there are no objections or issues with the application, the trademark registry will proceed with the renewal and issue a renewal certificate.
• This certificate confirms that the trademark has been renewed for an additional 10 years.

A renewal application is not published in the Trademark Journal for opposition because it is not a new trademark application.

 It is simply a process of extending the trademark’s protection for another 10-year period, and since no new claim is being made on the trademark, there is no opportunity for third parties to oppose it.

A renewal certificate is granted by the trademark registry after the following steps:

1. Successful Renewal Application: The application for renewal is filed correctly.
2. Fees Paid: The renewal fee has been paid.
3. No Issues Raised: There are no objections or issues with the renewal application.

Typically, it takes 1-2 months for the renewal certificate to be issued after the application is submitted. The certificate serves as official confirmation that the trademark has been successfully renewed for another 10-year period.

The following individuals or entities can file an application for the renewal of a trademark in India:

1. Registered Trademark Owner:

• The owner of the trademark (or their legal representative) is the primary party who can file the renewal application. This is typically the person or entity that holds the trademark rights.

2. Legal Representatives:

• If the trademark owner is unable to file the renewal application themselves (due to reasons like incapacity or death), a legal representative can file on their behalf.

3. Authorized Trademark Agent:

• The trademark owner can also appoint a trademark attorney or agent to handle the renewal process. This is common for businesses that prefer to manage their trademark filings through professionals.
• The agent must be authorized by the trademark owner to act on their behalf, usually through a power of attorney.   

4. Legal Heir or Successor:

• In case the trademark owner passes away, the legal heir or successor can apply for the renewal of the trademark.
• The legal heir must provide the necessary documents to establish their relationship and authority to file the renewal.

5. Company or Organization:

• In the case of a company, partnership firm, or other organizations, the renewal application can be filed by the authorized representative of the company or firm, usually a director or legal officer.

The due date for filing the renewal application for a trademark in India is as follows:

1. Before Expiry:

• The trademark renewal application can be filed within the last 6 months before the expiration of the 10-year registration period.

2. Grace Period (After Expiry):

• If the renewal is not filed before the expiry, a grace period of 6 months is provided after the expiration date during which the trademark can still be renewed.
• However, if you renew your trademark during the grace period, you will need to pay an additional late fee (surcharge) along with the renewal fee.

Example:

• If your trademark registration expires on December 31, you can file the renewal application anytime between July 1 and December 31 without late fees.

After December 31, you have until June 30 of the following year (the 6-month grace period) to file for renewal with a late fee (surcharge).

Trademark renewal fee for renewing a trademark in India is provided in the First Schedule of the Trademark Rules, 2017. The official fee for Trademark renewal in India is INR 9,000/- for filing application for trademark renewal in one class. The official fee for filing trademark renewal with surcharge is INR 4500/- (surcharge) plus the renewal fee.

Important Note: The fees listed above represent the official government fees and do not include any professional fees that may be charged by trademark agents or attorneys assisting with the renewal process.