Salient Features of Trademark Act, 1999
- Provision for registration of Trade Mark for services was introduced.
- The definition of Trade Mark has been enlarged and includes shape of goods, combination of colours etc.
- Reduce timeline in the registration of Trade Mark Act, 1999.
- Introduction of definition of “Well known Trade Marks” and provide enhanced protection to well-known Trade Mark.
- Renewal period is extended to 10 years as compared to 7 years.
- Facility of multi class application permitted.
- Facility of e filing of application.
Some Important definition(s)
- Collective Mark – means a trademark distinguishing the goods or services of members of an association of persons (not being a partnership with the meaning of the Indian Partnership Act, 1932) which is the proprietor of the mark from those of others.
- Goods – means anything which is the subject of trade or manufacture.
- Mark – INCLUDES a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.
- Service – 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.
From now onwards we will learn how we shall proceed with online application for registration of Trademark in India
An applicant by himself or through its legal Attorney/practicing professional can file an application for registration of trademark. An applicant can himself file an application for registration of Trademark but it is always recommendatory that applicant should appoint legal authorized attorney for filing an application of Trademark because of several reasons:
- Government Fees – The government fees for filing an application is Rs.4,500/- (for Individual, Startup and Small Enterprises) and Rs.9,000/- (in all other case)
- Amendment process – Registrar of Trademark arises certain queries in the application of Trademark which contains question of facts and question of laws also and every amendment shall be filed after paying government fees and it also delay your application registration process.
- Selection of relevant class – In the Trademark Act there are 45 classes and every business has its own separate class and the application filed in wrong class will not serve the purpose of the applicant.
An application shall be made by login the portal of ipindia and the same can be access through this link https://ipindia.gov.in/ .
Step I – The applicant shall login after using its credentials and proceed for filing an application through TM-A for fresh applicant and the following page will comes
Step II– Once the above screen appears the applicant shall choose type of applicant and proceed further.
Step III – On the next screen the applicant needs to mention the class of goods/services in which applicant deals and as per Trademark Nice classification there are 45 classes and applicant has to choose its kind of business in the relevant class.
45 Class List of terms (We have mentioned all the classes here for the easy reference)
- Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; Unprocessed artificial resins, unprocessed plastics; Fire extinguishing and fire prevention compositions; Tempering and soldering preparations; Substances for tanning animal skins and hides; Adhesives for use in industry; Putties and other paste fillers; Compost, manures, fertilizers; Biological preparations for use in industry and science
- Paints, varnishes, lacquers; Preservatives against rust and against deterioration of wood; Colorants, dyes; Inks for printing, marking and engraving; Raw natural resins; Metals in foil and powder form for use in painting, decorating, printing and art
- Non-medicated cosmetics and toiletry preparations; Non-medicated dentifrices; Perfumery, essential oils; Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations
- Industrial oils and greases, wax; Lubricants; Dust absorbing, wetting and binding compositions; Fuels and illuminants; Candles and wicks for lighting
- Pharmaceuticals, medical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for human beings and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides
- Common metals and their alloys, ores; Metal materials for building and construction; Transportable buildings of metal; Non-electric cables and wires of common metal; Small items of metal hardware; Metal containers for storage or transport; Safes
- 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
- Hand tools and implements, hand-operated; Cutlery; Side arms, except firearms; Razor
- Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; Apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; Recorded and downloadable media, computer software, blank digital or analogue recording and storage media; Mechanisms for coin-operated apparatus; Cash registers, calculating devices; Computers and computer peripheral devices; Diving suits, divers’ masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimming; Fire-extinguishing apparatus
- Surgical, medical, dental and veterinary apparatus and instruments; Artificial limbs, eyes and teeth; Orthopaedic articles; Suture materials; Therapeutic and assistive devices adapted for persons with disabilities; Massage apparatus; Apparatus, devices and articles for nursing infants; Sexual activity apparatus, devices and articles
- Apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes
- Vehicles; Apparatus for locomotion by land, air or water
- Firearms; Ammunition and projectiles; Explosives; Fireworks
- Precious metals and their alloys; Jewellery, precious and semi-precious stones; Horological and chronometric instruments
- Musical instruments; Music stands and stands for musical instruments; Conductors’ batons
- Paper and cardboard; Printed matter; Bookbinding material; Photographs; Stationery and office requisites, except furniture; Adhesives for stationery or household purposes; Drawing materials and materials for artists; Paintbrushes; Instructional and teaching materials; Plastic sheets, films and bags for wrapping and packaging; Printers’ type, printing blocks
- Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; Plastics and resins in extruded form for use in manufacture; Packing, stopping and insulating materials; Flexible pipes, tubes and hoses, not of metal
- Leather and imitations of leather; Animal skins and hides; Luggage and carrying bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery; Collars, leashes and clothing for animals
- Materials, not of metal, for building and construction; Rigid pipes, not of metal, for building; Asphalt, pitch, tar and bitumen; Transportable buildings, not of metal; Monuments, not of metal
- Furniture, mirrors, picture frames; Containers, not of metal, for storage or transport; Unworked or semi-worked bone, horn, whalebone or mother-of-pearl; Shells; Meerschaum; Yellow amber
- Household or kitchen utensils and containers; Cookware and tableware, except forks, knives and spoons; Combs and sponges; Brushes, except paintbrushes; Brush-making materials; Articles for cleaning purposes; Unworked or semi-worked glass, except building glass; Glassware, porcelain and earthenware
- Ropes and string; Nets; Tents and tarpaulins; Awnings of textile or synthetic materials; Sails; Sacks for the transport and storage of materials in bulk; Padding, cushioning and stuffing materials, except of paper, cardboard, rubber or plastics; Raw fibrous textile materials and substitutes therefor
- Yarns and threads, for textile use
- Textiles and substitutes for textiles; Household linen; Curtains of textile or plastic
- Clothing, footwear, headwear
- Lace, braid and embroidery, and haberdashery ribbons and bows; Buttons, hooks and eyes, pins and needles; Artificial flowers; Hair decorations; False hair
- Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; Wall hangings, not of textile
- Games, toys and playthings; Video game apparatus; Gymnastic and sporting articles; Decorations for Christmas trees
- Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk, cheese, butter, yogurt and other milk products; Oils and fats for food
- Coffee, tea, cocoa and artificial coffee; Rice, pasta and noodles; Tapioca and sago; Flour and preparations made from cereals; Bread, pastries and confectionery; Chocolate; Ice cream, sorbets and other edible ices; Sugar, honey, treacle; Yeast, baking-powder; Salt, seasonings, spices, preserved herbs; Vinegar, sauces and other condiments; Ice [frozen water]
- Raw and unprocessed agricultural, aquacultural, horticultural and forestry products; Raw and unprocessed grains and seeds; Fresh fruits and vegetables, fresh herbs; Natural plants and flowers; Bulbs, seedlings and seeds for planting; Live animals; Foodstuffs and beverages for animals; Malt
- Beers; Non-alcoholic beverages; Mineral and aerated waters; Fruit beverages and fruit juices; Syrups and other non-alcoholic preparations for making beverages
- Alcoholic beverages, except beers; Alcoholic preparations for making beverages
- Tobacco and tobacco substitutes; Cigarettes and cigars; Electronic cigarettes and oral vaporizers for smokers; Smokers’ articles; Matches
- Advertising; Business management, organization and administration; Office functions
- Financial, monetary and banking services; Insurance services; Real estate affairs
- Construction services; Installation and repair services; Mining extraction, oil and gas drilling
- Telecommunications services
- Transport; Packaging and storage of goods; Travel arrangement
- Treatment of materials; Recycling of waste and trash; Air purification and treatement of water; Printing services; Food and drink preservation
- Education; Providing of training; Entertainment; Sporting and cultural activities
- Scientific and technological services and research and design relating thereto; Industrial analysis, industrial research and industrial design services; Quality control and authentication services; Design and development of computer hardware and software
- Services for providing food and drink; Temporary accommodation
- Medical services; Veterinary services; Hygienic and beauty care for human beings or animals; Agriculture, aquaculture, horticulture and forestry services
- Legal services; Security services for the physical protection of tangible property and individuals; Personal and social services rendered by others to meet the needs of individuals
Step IV – After choosing the relevant class the complete application page will open and applicant need to fill the complete application page tab wise.
Step V – Add proprietor – applicant need to add the details of the business entity in the option and click submit and after adding the proprietor details the jurisdiction of Trademark application will automatically get prefill.
Step VI – Category of Mark – There are Six types of mark and applicant shall choose which is the relevant mark for its application. The list of 6 marks are mentioned below:
Wordmark – A word mark registers the word one would want to use and renders stronger and wider protection to one’s business. Once registration is granted for a word trademark, the applicant has the right to use and represent the word in any format or font which grants it extensive protection including exclusive rights to the word as a whole and also allows the applicant to depict it in various formats regardless of its style for all the goods and services in respect of the mark. In other words, by filing a word mark, one would prevent third parties from using one’s brand name in any regard.
Colour Mark – Color marks are marks that consist solely of one or more colors used on particular objects and the applicant claimed specific color on its brand and the protection shall be granted to only for that specific color.
Device – An application shall be claimed as device when word mark filed with the logo and applicant claims the same as a whole mark in the format of logo.
Shape of goods – When the applicant claims specific shape of its goods than application shall be filed under this category.
Sound Mark – A sound trademark is a trademark where sound is used to perform the trademark function of uniquely identifying the commercial origin of products or services of the applicant.
Three Dimension – trademark which makes use of the three-dimensional shape of a product or its package/container to achieve distinction in the concerned jurisdictional marketplace
Step VII – once the applicant chooses the relevant category of mark than applicant need to mention the description of goods and services. The extra care to be taken at the time of mentioning the goods/services description like the description shall not be in an inclusive term and shall contain only the words which the applicant deals primary and shall not relate with the different class.
Step VIII – Statement as to use of mark – Here applicant use one option out of two either the application file on proposed to be used basis or by claiming user date. An applicant shall take care that if application is filed on user date basis than applicant must attach the User affidavit of the same along with relevant evidence. However, if the application is file on proposed to be use basis than no document shall be file with the application.
Step IX – Any other important information or statement – Here applicant can mention if any information applicant wants to convey before the registrar, however the said field is optional and the applicant can proceed further without mentioning the details in this tab.
Step X – After filling all the above details the applicant needs to click on the attach documents tab and attach the relevant documents as per the application and proceed for Digitally sign & Submit button. For digitally sign applicant can refer the Digital signature user manual which can be access through this link https://ipindiaonline.gov.in/trademarkefiling/UsefullDownloads/DSCManual.pdf
Step XI – Once the application is successfully file applicant shall click on the payment button and make the payment online and the receipt will generate at the same time and application number shall be allotted to the applicant which shall be used for all future correspondences.
Validity of Trademark
- Once a Trademark is registered in India, the same shall be valid for 10 years from the date of its Registration, it can be renewed for further next 10 years from the date of expiration by filing a renewal application in form TM-R.
- Any amendment in the trademark application can be filed through filing of TM-M with fees.
- Once a Trademark is registered the Registered Owner will get an exclusive right to use such Trademark in India only.
Meaning of different status of Trademark
- “Send To Vienna Codification” – It is one of the initial stages of the trademark registration process, any trademarks comprising figurative elements/logo is assigned a Vienna Code by the Indian Trade Mark Registry. Once the Vienna codification is done, the status of trademark application is usually changed to Fomalities Chk Pass or Formalities Chk Fail.
- “Formalities Chk Pass/Fail” – The Trade Mark Registry usually checks if the basic requirements are met such as: whether the applicant has attached User affidavit, MSME certificate, POA (when filed through an agent) and whether appropriate translation/transliteration has been filed when the trademark is not in English/Hindi. When such basic requirements are not met, the status could be reflected as “Formalities Chk Fail” otherwise “Formalities Chk Pass”.
- “Marked for Exam” – when the trademark application has been assigned to an Examiner. Examiner either accepting the trademark for publication or raising objections as to its registrability and issued its examination report on the merits of case.
- “Exam Report Issued”/”Accepted” – This status is used by the Registry when no objections are raised by the Examiner as to the registrability of the trademark or when the objections, if comes, are overcome by way of written submissions or hearing, if conducted.
- “Objected” – when the Examiner raises some objections regarding the registrability of the trademark than the status will show as objected and the applicant need to respond accordingly as per the examination report.
- “Advertised before acc” or “Advertised” or “Accepted & Advertised” – when the trademark application is advertised/published in the Trade Marks Journal. This is one of the final stages in the trademark registration process. Once the trademark is published in the Trade Marks Journal, 4 months’ time is given for any third party to oppose the registration of the trademark. If no oppositions are filed during the 4-month opposition period, then the trademark registration certificate is issued.
- “Opposed” – when a third party has filed an opposition to the registration of your trademark. The notice of opposition is sent by the Registry to the applicant or its agent. In order to contest the opposition, a counter statement should be filed within 2 months from the date of receipt of notice of opposition from the Registry, failing which the trademark application will be abandoned and cannot be revived. Post the counter statement the relevant procedure shall be followed by both the party.