Trade Mark Rules, 2017 and Its Implications By CS Shiriti Kumari


The Trade Mark Rules, 2017 have been notified and have come into effect from 06th March, 2017.  New TM Rules, 2017 will streamline and simplify the processing of Trade Mark applications.

Some salient features of the revamped Rules 2017:

  • Number of Trade Mark (TM) Forms have been reduced from 74 to 8.
  • To promote e-filing of TM applications, the fee for online filing has been kept at 10% lower than that for physical filing.
  • Based on stakeholder’s feedback, the fees for Individuals, Start-ups and Small Enterprises have been reduced from that proposed in the draft Rules – i.e. only Rs 4,500 as against Rs 8,000 for e-filing of TM applications proposed at the draft stage.

“Startup” here means:

  • an entity in India recognized as a startup by the competent authority under Startup India initiative,
  • In case of a foreign entity, an entity fulfilling the criteria for turnover and period of incorporation / registration as per Startup India Initiative and submitting declaration to that effect.

“Enterprise” here means:

An industrial undertakings or a business concern or any other establishment, by whatever name called, engaged in the manufacture or production of goods in any manner pertain to any industry specified in the first schedule to the Industries (Development and Regulation) Act, 1951 (65 of 1951) or engages in providing or rendering or any services or services in such an industry.

Explanation: In calculating the turnover, reference rates of foreign currency of Reserve Bank of India shall prevail.

An entity will be identified as a start-up:

I) Till up to five years from the date of incorporation.
II) If its turnover does not exceed 25 crores in the last five financial years.
III) It is working towards innovation, development, deployment, and commercialization of new products, processes, or services driven by technology or intellectual property.
  • Modalities for determination of well-known trademarks have been laid out for the first time.
  • The provisions relating to expedited processing of an application for registration of a trade mark have been extended right upto registration stage (hitherto, it was only upto examination stage).
Over all fees have been rationalized by reducing the number of entries in Schedule I from 88 to just 23.
  • Number of adjournments in opposition proceedings has been restricted to a maximum of two by each party, which will help dispose off matters in time.
  • Modalities for service of documents from applicants to the Registry and vice-versa through electronic means have been introduced to expedite the process; e-mail has been made an essential part of address for service to be provided by the applicant or any party to the proceedings so that the office communication may be sent through email.
  • Hearing through video conferencing has been introduced.
  • Procedures relating to registration as Registered User of trademarks have also been simplified.

A trademark (popularly known as brand name) in layman’s language is a visual symbol which may be a word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking. The legal requirements to register a trademark under the Act are:

  • The selected mark should be capable of being represented graphically (that is in the paper form).
  • It should be capable of distinguishing the goods or services of one undertaking from those of others.
  • It should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person.

Properly used and promoted, a Trademark may become the most valuable asset of a business. Trademarks such as Coca Cola, HP, Canon, Nike and Adidas serve as an indication of origin of the goods as well as an indication of quality. 

It is also essential to obtain trademark registration for the business name/trade name under the Trademarks Act. Registration of a company or business name under the Companies Act does not in itself give protection against others who might commence using identical or similar marks.

TM 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.

Use of TM, SM and  ® Symbols

  • 'TM' stands for Trademark
  • 'SM' stands for Service mark.

‘TM’ Symbol this symbol can use with the brand name until your trademark is not registered and the application is in pending status. This is to inform the public of his exclusive claim over the brand. The claim may or may not be valid depending upon the result of trademark registration.

‘SM’ Symbol It is also a kind of trademark which Service Mark, but it identifies and distinguishes the source of a service rather than a product. For example, you will use TM for a product and SM for a service like housekeeping.

Among all the words which are being mentioned above, TM is the most common word which is being used frequently by owners of the brand.

The use of TM and SM symbols notifies the public that the company is claiming exclusive ownership of the trademark and can generally be used by one who has filed a trademark application.

The ® symbol, can be used only once the trademark is registered and the registration certificate is issued

Also, you may use the registration symbol only in connection with the goods and / or services in respect of which the trademark is registered.  The registration process is the same for both trademarks and service marks. 

Types of trademarks that may be registered in India

  • Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark.
  • An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.
  • Letters or numerals or any combination thereof.
  • The right to proprietorship of a trademark may be acquired by either registration under the Act or by use in relation to particular goods or service.
  • Devices, including fancy devices or symbols
  • Monograms
  • Combination of colors or even a single color in combination with a word or device
  • Shape of goods or their packaging
  • Marks constituting a 3- dimensional sign.
  • Sound marks when represented in conventional notation or described in words by being graphically represented.

Apply for a Trademark

Any person or business claiming to be owner can apply for a trademark including:

  • Individual,
  • Company
  • Proprietor
  • Society

It is preferable that you apply for the trademark as an individual. In a case of a proprietor or company, if you close or change the name of the business, your trademark will become invalid. However, in a case of individual, this problem won’t arise.

According to the Trade Marks Act, 1999 and the general legal position in India, the following can constitute a Trademark:

  • Names
  • Invented or coined words
  • Numerals, letters, devices
  • Combination of colours and shapes of goods
  • Slogans
  • Domain Names
  • Signatures
  • Sounds (also known as sound marks)
  • Three-dimensional (3-D) marks
Sounds TM

An application for the registration of a trademark consists of a sound as a trademark, the reproduction of the same shall be submitted in the MP3 format not exceeding thirty seconds’ length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations”. Such application has to be filed on Form TM – A with the sound in a MP3 format. Further it is necessary to provide the musical notes in the application.

Benefits from a trademark

The Registered Proprietor of a trademark can create establish and protect the goodwill of his products or services;

Intellectual Proprietary privileges in relation to a trademark may be established through actual use in the marketplace and registration provides for:

  1. Exclusive Rights – Registered trade marks owners have exclusive right to use their marks in trading. They also have the rights to take legal action for infringement under the Trade Mark Law against others who use their marks without consent. They can either take civil action or lodge complaints to Enforcement Division for appropriate actions under the Trade Description laws.
  2. Legal Evidence – Registration certificate issued by Registrar Office is a prima facie evidence of trade mark ownership.  A certificate of registration serves as an important document to establish the ownership of goods exported to other countries.   

Further benefits are:

  • he can stop other traders from unlawfully using his trademark,
  • Can sue for damages and secure destruction of infringing goods and or labels.
  • The Government earns revenue as a fee for registration and protection of registration of trademarks
  • The Legal professionals render services to the entrepreneurs regarding selection registration and protection of trademarks and get remunerations for the same
  • The Purchaser and ultimately Consumers of goods and services get options to choose the best.

 

TM Classes (Nice Class 1-45)

TM class brings together the classification databases (Goods and Services descriptions or terms) of each Participating (Trade Mark) Office (PO) to facilitate the process of classifying your Goods & Services. This classification is a necessary step when applying for a trade mark, whether an international trade mark, a European Union trade mark which gives you trade mark protection in all the EU states, or country specific trade mark.

When you search for a classification term in TMclass, you will see in which Participating Office databases that term appears. If the term doesn't appear in an Participating Office database it doesn't mean that the term will necessarily be rejected by the Participating Office. However the application procedure in a Participating Office may take longer, if you choose a term that is not part of the database of that Participating Office because it cannot be classified automatically and has to be revised by an examiner.

If you choose terms from more than one class you may be required to pay extra fees. For example, in the EUIPO, the registration fee includes the possibility to choose from 3 classes, whereas in the UK office (UKIPO) each additional class has a small fee. Check with the Participating Office where you are registering your trade mark.

The Nice Class Headings describe in very broad terms the nature of the goods or services contained in each of the 34 classes of goods and 11 classes of services. Each class has Explanatory Notes which describe the type of product or service included, and in some cases not included in a class. The Alphabetical List sets out specific items of goods and a range of services in alphabetical order, in each case showing the appropriate class.

The details for finding the appropriate class code (1- 45)See Class Details:

Class 01  Chemicals

Class 02  Paints, Coatings & Pigments

Class 03  Cleaning Products, Bleaching & Abrasives, Cosmetics

Class 04  Fuels, Industrial Oils and Greases, Illuminates

Class 05  Pharmaceutical, Veterinary Products, Dietetic

Class 06  Metals, metal castings, Locks, Safes, Hardware

Class 07  Machines and Machine Tools, Parts

Class 08  Hand Tools and implements, Cutlery

Class 09  Computers, Software, Electronic instruments, & Scientific appliances

Class 10  Medical, Dental Instruments and Apparatus

Class 11  Appliances, Lighting, Heating, Sanitary Installations

Class 12  Vehicles

Class 13  Firearms, Explosives and Projectiles

Class 14  Precious Metal ware, Jewellery,

Class 15  Musical Instruments and supplies

Class 16  Paper, Items made of Paper, Stationary items

Class 17  Rubber, Asbestos, Plastic Items

Class 18  Leather and Substitute Goods

Class 19  Construction Materials (building - non metallic)

Class 20  Furniture, Mirrors,

Class 21  Crockery, Containers, Utensils, Brushes, Cleaning Implements

Class 22  Cordage, Ropes, Nets, Awnings, Sacks, Padding

Class 23  Yarns, Threads

Class 24  Fabrics, Blankets, Covers, Textile

Class 25  Clothing, Footwear and Headgear

Class 26  Sewing Notions, Fancy Goods, Lace and Embroidery

Class 27  Carpets, Linoleum, Wall and Floor Coverings (non textile)

Class 28  Games, Toys, Sports Equipment

Class 29  Foods - Dairy, Meat, Fish, Processed & Preserved Foods

Class 30  Foods - Spices, Bakery Goods, Ice, Confectionery

Class 31  Fresh Fruit & Vegetables, Live Animals,

Class 32  Beer, Ales, Soft Drinks, Carbonated Waters

Class 33  Wines, Spirits, Liqueurs

Class 34  Tobacco, Smokers Requisites & Matches

Short definitions - Services

Class 35  Advertising, Business Consulting

Class 36  Insurance, Financial

Class 37  Construction, Repair, Cleaning

Class 38  Communications

Class 39  Transport, Utilities, Storage & Warehousing

Class 40  Materials Treatment, Working

Class 41  Education, Amusement, Entertainment, Reproduction

Class 42  Scientific and technological services and research and design relating thereto

Class 43  Services for providing food and drink; temporary accommodations.

Class 44  Medical services; veterinary services; hygienic and beauty care for human beings or animals

Class 45  Personal and social services rendered by others to meet the needs of individuals

Trademark Registration Process

Investing your time and money to build a particular brand and seeing the same brand name being used by another, robbing you of your hard-earned brand reputation is not an agreeable state of affairs. Many a time, trademark (TM) owners end up in protracted litigation because when the time was right, they did not do trademark registration in India of their brand name. Trademark registration process of the brand name is not a difficult task. A few simple steps, as explained below and you would have the much-needed legal protection of your brand name registration in India.

1.   Trademark Search

TM class helps you to search for and classify Goods and Services (terms) needed to apply for trade mark protection. You can also translate a list of Goods and Services and verify if those terms appear in the classification databases through link: http://euipo.europa.eu/ec2/



Find Details without Trade Mark Number/Application Number

If you don’t know the Application  Number of the Trade Marks, whose  details are to be find, click the button ‘Details without Trade Mark Number/Application Number, key-in the Trade Mark, Proprietor Name, Class and Goods/Services and click the Search buttons to list the Registered/Pending application status of you mark.

In the Trade Mark column enter the Trade Mark (min. 3 characters) in  the Proprietor Name column enter the name of the owner (minimum 5 characters- do not prefix M/s,Mr., Mrs., Smt., Dr. etc.)

The details of a specific Trade Marks can be viewed by clicking on the corresponding TM class in the list obtained in Find Details without Trade Mark/Application Number:- http://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx:

1.   Filing Trademark Application

Guidelines to be followed while filing application:

  • AvoidSuperlative or Laudatory wordsg. Premium, Gold, Deluxe
  • Avoid Descriptive wordsg. Coffee shop for coffee bars; Cooler for Refrigerators
  • Avoidtrademarks Confusing Similar to existing trademarks
  • Avoidwords which have direct reference to the Character or Quality of the product/service. E.g. Best Choice, Easy Cook, Super
  • AvoidCommon Personal Names or surnames. Such names are registrable only if it has acquired distinctiveness through advertisements and long use

Requirements for filing a trademark application

  • The name, address and nationality of the applicant. If the applicant is a partnership firm, the names of all the partners. Also mention whether any minor is a partner.
  • If the applicant is a company, the country or state of incorporation.
  • A list of goods and/or services for which registration is required.
  • Soft copy of the trademark to be registered.
  • If the mark contains or consists of non-English words, a translation of those words into English is required.
  • If the application is to claim priority from an earlier filed convention application, details of that application is also required (application number, filing date, country and goods/services). A certified priority document or its duly notarized copy is to be submitted. If the certificate is not in English, a certified/notarized English translation is also required. If it is not readily available, the application can be filed based on the basic application number, date of the application and country of the application. A copy of the priority document can be submitted within 1 month from the filing date of the application.
  • Date of first use of the trademark in India, if at all used
  • Power of attorney simply signed by the applicant (no legalization or notarization is required). For Indian clients, power of attorney to be executed in 100 Rs. stamp paper and signed by the applicant. The power of attorney is not required at the time of lodging the application and can be submitted later with no additional cost.

Preliminary advice by Trademark Registrar:

The new Rules prescribe that such a request for preliminary advice from the Registrar can be filed under Form TM-M whereby any person who intends on filing a trademark.

Trade Marks Office to confer “well-known” status:

Provisions for determining and declaring a trade mark as “well-known” have been incorporated in the new Rules. More particularly, a proprietor can now submit a request to the Trade Marks Office along with a statement of case and relevant evidence, which support the claim of the mark’s well-known status with an application under Form TM-M by paying amount of INR 1, 00,000.

Presently, there are 81 trademarks designated with the status of a “Well-Known” trademark by a competent authority such as the IPAB, Hon’ble High Courts and other lower Courts, the Trade Marks Registry, etc;

The official fee for such a request has been fixed at INR 100,000. Before determining a trade mark as “well-known”, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objections.

2.   TM Examination

(The examination might take around 12-18 months. The examiner might accept the trademark absolutely, conditionally or object.)

If accepted unconditionally, the trademark gets published in the Trademark Journal. If not accepted unconditionally, the conditions to be fulfilled or the objections would be mentioned in the examination report and a month’s time would be given to fulfill the conditions or response to the objections.

Once such response is accepted, the trademark is published in the Trademark Journal. If the response is not accepted, one can request a hearing. If in the hearing, the examiner feels that the trademark should be allowed registration, it proceeds for publication in the Trademark Journal.

3.   TM Publication

The step of publication is incorporated in the trademark registration procedure so that anyone who objects to the registering of the trademark has the opportunity to oppose the same. If, after 3-4 months from publication there is no opposition, the trademark proceeds for registration. In case there is opposition; there is a fair hearing and decision are given by the Registrar.

4.   Registration Certificate

Once the application proceeds for trademark registration, following publication in Trademark Journal, a registration certificate under the seal of the Trademark Office is issued.

5.   Trademark Renewal

The trademark can be renewed perpetually after every 10 years. Hence, your logo or brand name registration can be protected perpetually.

As seen from the above, trademark registration process does not require much effort. It is a simple process but one which is nonetheless very important for brand name registration. We, at Intepat, can help you with the entire process of registration without you worrying about deadlines and responses. Hence, understand the power of your brand name registration and take steps in protecting it today.

The new Rules prescribe that a renewal application can be filed one year prior to the validity date of a trademark.

Salient features

  1. Multi class applications are allowed in India. However, statutory filing fees will be applicable for each class.
  2. Classification of goods and services is according to NICE classification (45 classes).
  3. Prior use of the trademark is not mandatory for filing. Therefore, applications can be filed on a 'proposed to be used' basis.
  4. Power of attorney is required (if filed through an agent/attorney)
  5. Applications are examined as to registrability and availability based on existence of prior filed applications. Once accepted, it is published in the Trademarks Journal and an opposition may be filed by a third party within 3 months (extendable by one month). If no opposition is filed, the registration certificate is issued thereafter.
  6. A trademark may be subject to removal on the grounds of non-use, if it is not used for a continuous period of 5 years.
  7. The registration is valid for 10 years from the date of application and can be subsequently renewed every 10 years by payment of renewal fees.
  8. Priority can be claimed provided the application is filed within 6 months from the date of the filing in the convention country.

Guidelines to Find and View Details of Registered Trade Marks and Application Status

There  may  be  few  errors  and  omissions in  the  data  viewed  herein  which  can   be   rectified/updated   by   applying   to   the   concerned   Trade   Marks  Registry with supporting documents.

Trade Mark Application/ Registered Mark

If you know the Application Number of the Trade Mark (same as the Registered Trade Mark Numbers) whose details are to be find, enter the Trademark application/registered trademark and click the view buttons via link http://164.100.176.37/eregister/eregister.aspx:

After selecting the option, next type your Application number of filed TM via link http://164.100.176.37/eregister/eregister.aspx:-

General Remarks

The indications of goods or services appearing in the class headings are general indications relating to the fields to which, in principle, the goods or services belong. The Alphabetical List should therefore be consulted in order to ascertain the exact classification of each individual product or service.

Goods

If a product cannot be classified with the aid of the List of Classes, the Explanatory Notes and the Alphabetical List, the following remarks set forth the criteria to be applied:

  1. A finished product is in principle classified according to its function or purpose. If the function or purpose of a finished product is not mentioned in any class heading, the finished product is classified by analogy with other comparable finished products, indicated in the Alphabetical List. If none is found, other subsidiary criteria, such as that of the material of which the product is made or its mode of operation, are applied.
  2. A finished product which is a multipurpose composite object (e.g., clocks incorporating radios) may be classified in all classes that correspond to any of its functions or intended purposes. If those functions or purposes are not mentioned in any class heading, other criteria, indicated under (a), above, are to be applied.
  3. Raw materials, unworked or semi-worked, are in principle classified according to the material of which they consist.
  4. Goods intended to form part of another product are in principle classified in the same class as that product only in cases where the same type of goods cannot normally be used for another purpose. In all other cases, the criterion indicated under (a), above, applies.
  5. When a product, whether finished or not, is classified according to the material of which it is made, and it is made of different materials, the product is in principle classified according to the material which predominates.
  6. Cases adapted to the product they are intended to contain are in principle classified in the same class as the product.

Services

If a service cannot be classified with the aid of the List of Classes, the Explanatory Notes and the Alphabetical List, the following remarks set forth the criteria to be applied:

  1. Services are in principle classified according to the branches of activities specified in the headings of the service classes and in their Explanatory Notes or, if not specified, by analogy with other comparable services indicated in the Alphabetical List.
  2. Rental services are in principle classified in the same classes as the services provided by means of the rented objects (e.g., Rental of telephones, covered by Class 38). Leasing services are analogous to rental services and therefore should be classified in the same way. However, hire- or lease-purchase financing is classified in Class 36 as a financial service.
  3. Services that provide advice, information or consultation are in principle classified in the same classes as the services that correspond to the subject matter of the advice, information or consultation, e.g., transportation consultancy (Cl. 39), business management consultancy (Cl. 35), financial consultancy (Cl. 36), beauty consultancy (Cl. 44). The rendering of the advice, information or consultancy by electronic means (e.g., telephone, computer) does not affect the classification of these services.
  4. Services rendered in the framework of franchising are in principle classified in the same class as the particular services provided by the franchisor (e.g., business advice relating to franchising (Class 35), financing services relating to franchising (Class 36), legal services relating to franchising (Class 45)).

 

FOLLOWING REMARKS RECEIVED WHILE REGISTERING TRADEMARK

"Send to Vienna Codification"

 

It is one of the initial stages of the trademark registration process where the status in the Trade Mark Registry website shows as "Send To Vienna Codification". As a part of the trademark registration process, any trademarks comprising figurative elements/logo is assigned a Vienna Code by the Indian Trade Mark Registry. This is one of the first steps taken by the Registry where the trademark comprises a figurative element/logo. The Vienna code is assigned based on the nature of the figurative element/logo. Such figurative elements/logos are codified according to the Vienna Agreement as per the link: http://www.wipo.int/classifications/nivilo/vienna/index.htm#

Vienna codification is done so that trademark searches can be conducted for artwork/logo. Once the Vienna codification is done, the status of trademark application is usually changed to Formalities Chk Pass or Formalities Chk Fail. 

"Formalities Chk Pass”

It is one of the initial stages of the trademark registration process where the status in the Trade Mark Registry website shows as Formalities Chk Pass. The Trade Mark Registry usually checks if the basic requirements are met such as: whether the POA has been uploaded (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".

 

"Formalities Chk Fail"

 

 

It is one of the initial stages of the trademark registration process where the status in the Trade Mark Registry website is shown as Formalities Chk Fail. This could happen in instances such as non-filing of POA, non-filing of translation/transliteration when the trademark is not in English/Hindi, filing in wrong class, etc. The reason for the Formalities objection should be ascertained and appropriate action should be taken for the application to move forward for registration.

 

"Marked for Exam"

 

The status shows as "Marked for Exam" when the trademark application has been assigned to an Examiner. The trademark would be examined as to its registrability under the various Sections of the Trade Marks Act. An examination report is then issued either accepting the trademark for publication or raising objections as to its registrability. At this stage, the applicant needs to wait for the examination report to be issued.

 

"Exam Report Issued" / "Accepted"

 

The status "Exam Report Issued" or "Accepted" is used by the Trade Mark Registry to indicate that the trademark application has been ordered for publication in the Trade Marks Journal prior to registration. 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 are overcome by way of written submissions or hearing. No action is required by the applicant at this point unless the application does not move forward for journal publication.

 

 

"Objected"

 

The status is shown to be as "Objected" when the Examiner raises some objections regarding the registrability of the trademark. The examination report citing the objections can be viewed in the Trade Mark Registry website. In order to overcome the objections, a written response needs to be filed with the Trade Mark Registry within one month from the date of receipt of examination report, failing which the trademark application may be treated as abandoned by the Registry. If the Examiner is not convinced with the written response, a hearing is posted for allowing arguments to be put forth in person.

 

"Advertised before acc" or "Advertised" or "Accepted & Advertised"

 

 

The status is shown to be as "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 usually issued within 3 months thereafter.

 

"Opposed"

 

The status is reflected as "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, failing which the trademark application will be abandoned and cannot be revived. No extension of time is granted for filing the counter statement.

 

"Send Back to EDP"

 

 

 

When there are errors regarding data entry of applications which needs to be rectified, the application is sent to EDP Section and the status is shown as "Send Back to EDP". This could also happen in cases where the documents are not digitized properly. The status would remain as "Send back to EDP" till these issued are rectified by the EDP Section.

 

"Send to PRAS"

 

 

PRAS refers to Pre-Registration Amendment Section. Any amendments which have been filed prior to registration such as amendment of proprietor details, address, specification of goods, etc. are dealt by PRAS Section. 

 


Territorial Jurisdictions of TMR Offices

 

MUMBAI

 

The State of Maharashtra, Madhya Pradesh, Chhattisgarh and Goa

 

AHMEDABAD

 

The State of Gujarat and Rajasthan and Union Territories of Daman, Diu, Dadra and Nagar Haveli

 

KOLKATA

 

The State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim, Tripura, Jharkhand and Union Territories of Nagaland, Andaman & Nikobar Islands

 

NEW DELHI

 

The state of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Uttarakhand, Delhi and Union Territories of Chandigarh

 

CHENNAI

 

The state of Andhra Pradesh, Telangana, Kerala, Tamilnadu, Karnataka and Union Territories of Pondicherry and Lakshadweep Island

 

FORMALITIES AND GOVERNMENT FEES FOR MAJOR TRADEMARK TRANSACTIONS Trade Mark Rules 2017

For filing new applications there are prescribed forms depending on the nature of application such as

First Schedule

Particular’s

Amount in INR.

Corresponding Form Number

 

For Physical filing

For E-filing

 

Application for registration of a trademark /collective Marks / Certification Mark / Series of trademark for specification of goods or services included in one or more than one classes.

 

 

TM-A

Where the applicant is an Individual / Startup/Small Enterprise

  5,000

    4,500

In all other cases (Note: Fee is for each class and for each mark )

   10,000

   9,000

On a notice of opposition under section 21(1), 64, 66 or 73 or application for rectification of register under section 47 to 57, 68, 77 or application under rule 99, 103, 135,140 or On application under section 25 of Geographical Indication of Goods (Regulations and Protection) Act, 1999 to invalidate a trademark or counter statement related thereto. (Note: Fee is for each class opposed or counterstatement filed)

  3,000

   2,700

TM-O 

For renewal of registration of a trademark under section 25 for each class

  10,000

   9,000

TM-R 

Application for renewal with surcharge of registration of a Trademarks under section 25 (3) for each class

5,000 Plus renewal fee applicable under entry 3

4,500 Plus renewal fee applicable under entry 3

Application for renewal with surcharge/ restoration and renewal of a Trademarks under section 25 (3), 25 (4) for each class

10,000 Plus renewal fee applicable under entry 3

9,000 Plus renewal fee applicable under entry 3

On application under section 45 to register a subsequent proprietor in case of assignment or transfer for each trademark

   10,000

   9,000

TM-P 

On application for: Certificate of the Registrar under section 40(2), or For approval of the Registrar under section 41, or Direction of the Registrar for advertisement of Assignment without goodwill under section 42, or Add or alter a registered trademarkunder section 59(1) for each trademark, or Conversion of specification under Section 60 for each trademark.

   3,000

   2,700

On application for: Extension of time for applying for direction under section 42 for advertisement of assignment without goodwill, or Extension of time for registering a company as subsequent proprietor of trademarks under section 46(4),or Consent of Registrar to the assignment or transmission of a certification trademark under section 43, or Change a name and / or description of a registered proprietor or a registered user of a trademark under section 58 for each trademark.

2,000

1,800

On application for: Dissolution of association between trademark sunder section 16(5), or Change in address or address for service in India of Registered Proprietors under section 58 for each trademark, or Request for cancellation of an entry in the register or part thereof under section 58 for each trademark.

   1,000

   900

Application under section 49 to a registered user of a registered trademark in respect of goods or services Or On application under clause (a) of sub-section (1) of section 50 to vary the entry of a registered user of one trademark where the trademarks are covered by the same registered user in respect of each of them Or On application under clause (b), (c) or (d) of sub-section (1) of section 50 for cancellation of entry of a registered user of one trademark Or On notice under rule 95 (2) of intention to intervene in one proceeding for the variation or cancellation of entries of a registered user of a trademark (Note: applicable fee is for each mark)

   5,000

    4,500

TM-U 

Request for search and issue of certificate under rule 22(1)

   10,000

   9,000

TM-C

Request for an expedited search and issuance of certificate under rule 22 (3)

Not allowed

   30,000

On application for: Extension of time, or Certified copy, or Duplicate Registration Certificate, or inspection of document,or Particulars of advertisement to registrar, or seeking grounds of decision of Registrar, or Enter in the register and advertise a note of certificate of validity under rule 127, Amendment in trademark application, or Particulars of advertisement of a trademark to Registrar under rule 41.

   1000

   900

TM-M

On application for: Deposition of regulation of collective trademark under section 66 or alteration of regulation of certification trademark under section 74 (2), or Seeking Registrar preliminary advice, or For division of an application.

   2,000

   1,800

On application for: Review of Registrar’s decision, or Petition (not otherwise charged) for obtaining Registrar’s order for any interlocutory matter in a contesting proceeding, or Any other matters not covered in other TM forms.

   3,000

    2,700

On request for an expedited certificate of the Registrar (other than a certificate under section 23(2) of the Act) or certified copies of the documents under proviso to rule 122 (Note: for entry in respect of each registered trademark or for each document)

    5,000

   4,500

On application under rule 34 for expedited process of an application for the registration of a trademark

 

 

Where the applicant is an Individual / Startup/Small Enterprise

Not allowed

   20,000

In all other cases (Note: fee is for each class and for each mark)

Not allowed

   40,000

Request to include a trademark in the list of well- known trademark(Note: applicable fee is for one mark only.)

Not allowed

  1,00,000

On application for registration of a person as a trademark agent under rule 147 & 149.

   5,000

   4,500

TM-G 

For continuance of the name of a person in the Register of a trademark Agents under rule 150 for every Five year to be paid on or before 1st day of succeeding financial year.

   10,000

   9,000

On application for restoration of the name of a person to the Register of trademarks agents under rule 153 within 3 years from the date of removal of registration.

5,000 Plus continuation fee as mentioned in entry number 20

4,500 Plus continuation fee as mentioned in entry number 20

On application for an alteration of any entry in the Register of trademarks Agent under rule 154

   1,000

   900

Handling fee for certification and transmission of international application to International Bureau with MM2(E)

Not allowed

   5,000

 


FAQ’S

  1. My Company Name is already registered under the Companies Act. Why should I go for trademark registration of my company name/trade name?
  • Registrations of Company Names, Business Names or Domain Names do not provide ownership or a monopoly right in a name as do trademark registrations.
  1. How do I find out whether a trademark / brand name is already registered in India?
  • A search of the Indian Trademark Registry database will indicate whether there are any marks identical or deceptively similar to your trademark in India. The trademark search can be conducted in the official Trade Mark Registry website in India in the link copied below: https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx
  1. What is the difference between trademark registration and copyright registration for logo?
  • A logo can be protected both under the Trade Marks Act and Copyrights Act. Trademark Registration enables you to obtain protection for the brand name and also provides certain amount of protection to the manner in which the trademark is represented. However, if you need exclusivity for the representation of your trademark or logo, a copyright registration is strongly recommended. Copyright registration does not however offer any protection for the brand name.
  1. Can any correction be made in the application or register?
  • 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.
  1. Can a registered trademark be removed from the register?
  • 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?
  1. What is the validity of a trademark registration?
  • Once the trademark is registered, it is valid for a period of 10 years from the date of application. The registration can then be renewed indefinitely as long as the renewal fees are paid every 10 years.
  1. How long does it take to register a trademark?
  • Trademark Registration is a lengthy process and it takes around 18-24 months to obtain registration in a straight-forward case, without any objections or oppositions. However, the trademark application number is usually issued within one or 2 days after filing.
  1. Can I use the ® symbol?
  • You may use the ® (Registered symbol) next to your trademark once your trademark is registered and registration certificate is issued. Kindly note that it is an offence, with penalty, to falsely claim that your trademark is registered. Till the registration is obtained, you can represent your trademark along with the letters TM to indicate that you claim rights over your trademark.
  1. What are different types of trademarks that may be registered in India?
  • Types of Trademarks :
  1. Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark.
  2. An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.
  • Letters or numerals or any combination thereof.
  1. The right to proprietorship of a trademark may be acquired by either registration under the Act or by use in relation to particular goods or service.
  2. Devices, including fancy devices or symbols
  3. Monograms
  • Combination of colors or even a single color in combination with a word or device
  • Shape of goods or their packaging
  1. Marks constituting a 3- dimensional sign.
  2. Sound marks when represented in conventional notation or described in words by being graphically represented.
Author: CS Shiriti Kumari (Founder of Compliance Calendar LLP)
She can be reached at founders@compliancecalendar.in

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