Trademark Registration

Trademark Registration

A Trademark (TM) is a distinct symbol, sound, mark, design, phrase, pattern, or a combination of any of these. TM is a form of Intellectual Property (IP) that helps customers distinguish your brand from others within the business and legal ecosystem. In India, the (CGPDTM) Controller General of Patents, Design, an office under the Ministry of Commerce and Industry grants trademarks. The Trademark Act 1999 is the primary legislative framework that governs trademark registration and prevents/protects fraudulent use of TM.

A registered TM empowers its owner to sue anyone for injunctions, damages, and other remedies in case of trademark infringement. A TM remains valid for 10 years and requires renewal application periodically. Ideally, a business must renew TM one year before the expiration date. However, in case you miss the deadline, you’ll be provided a 6 month grace period commencing from the date of expiration.

Having a TM ownership and your TM registered are two different aspects. You become a TM owner as soon as you start using your mark while selling goods and services. Use of the TM symbol indicates your intent to register, however, does not provide legal protection until the TM is registered. Thus, companies with unregistered trademarks use the TM symbol whereas those who have successfully obtained the authorization can affix the R symbol with their mark.

A mark cannot be registered as a TM if it is created to deceive the public, hurt religious sentiments, cause confusion, and contain obscene matter. Moreover, proposed trademarks that are identical to an existing registered trademark, are offensive, general, unreliable, and not unique are likely to be rejected by the Registrar.

Trademark Registrations are done through “Lexlivo” in Delhi NCR, Mumbai, Bengaluru, Chennai & every major Indian city. We offer a wide range of quality trademark services such as TM filing, trademark search, trademark renewal, and patent registration, among others. We will assist in choosing a TM that is unique, prepare for any potential rejection, and ensure your TM protection.

Procedure for Trademark Registration

● Submit Application Form :
Fill the simple application form provided on our website.
● Trademark Search :
Our Experts will determine whether your TM is Unique and Available for Use.
● Class Selection :
To Trademark your Goods/ Services/ other elements, we’ll recommend an appropriate class from 45 listed classes.
● Trademark Application Filing :
'Lexlivo' will file your trademark application with the Concerned Authorities within 3 days and obtain your TM number.
● Receive Your Trademark :
Your TM will be registered within 1.5-2 years in case of no TM Objection.
 

Documents Required for Trademark Registration

As a Trademark Attorney, we will present your TM application form before the TM Registry. To commence the application process, we will be requiring an Authorization Letter or Power of Attorney (Form TM-48) that will authorize us to act as your attorney/ trademark agent. As soon as we receive the signed power of attorney which is nothing but an official document signed by you, we will compile all your documents and file with the concerned authorities. Provide the following documents to register your TM :
● Proof of Identity : Aadhar Card or PAN Card.
● Proof of Identity : Bank statement, Electricity Bill, Utility Bill, etc.
● Certificate of Incorporation : If the TM is registered by a company.
● Partnership Deed : In case the TM is registered under a Partnership Firm.
● User Affidavit : Claims prior use of TM in commerce (while selling goods and services).
● Form 48 : A form signed by you authorizing an agent (Lexlivo) to file the application on your behalf.

Documentation – Detailed Breakdown

● For Individuals : Individuals who are willing to get their TM registered have to provide their personal details such as name, nationality, address, and proof of identity (Aadhar Card, Voter ID card, Passport, etc).
● For Companies : Companies (Private Limited, Proprietorship, OPC, LLP, Partnership firm, etc.) are required to submit documentation such as Incorporation Certificate, Company’s PAN card, Udyog Aadhar Certificate, Name and Address of Authorized Signatories (Partners, Directors, etc).
● Use of Logo with Tagline : If a trademark application is prepared for a tagline containing only words, applicants do not have to submit logo details. However, if the tagline is in conjunction with a logo, the logo must be submitted in black and white format. The number of words in the logo must exactly be the same as specified in the application for a TM.
● Brand Name & Logo : Although not strictly mandatory, an applicant can submit a clear, black-and-white pictorial copy of their logo while filing for Brand Name Trademark registration.
● User Affidavit : A user affidavit, also referred to as ‘Statement of Use’ is a legal document that confirms the use of trademark ™ in commerce even before its filing with the Registrar. It states that TM proposed for registration is already in use for a significant amount of time, and thus requires the applicant to provide evidence of this ‘prior usage’.
● Proof of TM Use : To prove that the proposed TM is used in connection with the goods and services, an applicant can submit Invoice or Sales Records, Product Packaging, Website Screenshots, and Advertising and Promotional Materials.
● MSME or Start-up Recognition : The Government of India has reduced the TM government registration fees by 50% for body corporates operating as MSMEs and Start-Ups in India.
● Signed Form TM–48 : If the trademark is filed through an attorney, it is essential to submit a signed Form TM-48. It allows trademark agents to act on behalf of their clients before the Indian Trademark Registry.

What Can be Registered As a Trademark?

● Name
A name including the personal or surname of the applicant or the signature of the person e.g., the name Dhirubhai Ambani can be trademarked.
● Word
A word that is not directly descriptive of the character or quality of the goods/service. For example, Google is a word that has been trademarked.
● Numbers
Alphanumeric or Letters or numerals or any combination thereof. For example 555 brands.
● Images
Image, symbol, monograms, 3-dimensional shapes, letters, etc. For example the tick in the Nike logo showcase logo registration as a trademark.
● Sound Sound marks in audio format. For example, the sound in an advertisement jingle.

Except these, the other things that can be trademarked are an invented word or any arbitrary dictionary word or words, letters or numerals, devices which may include fancy devices or symbols, monograms, a combination of colors or a single color in combination with a word or device, the shape of goods or their packaging, 3- dimensional sign, slogans and phrase, logo, graphic content, etc.

Who can Apply Trademark Online?

In context to the tm rules and regulations in India, things like sound, logo, words, phrases, colors, images, symbols, initials, or a mixture of all these can be registered.
A trademark application can be made by :
● Private firms
● Individuals
● Companies- Limited Liability Partnership, OPC, Private limited, Public, Partnership, etc.
● NGO’s
Note : In the case of NGOs and LLP companies the trademark has to be applied for registration in the name of the concerned business or a company.

Any person, pretending to be the proprietor of a tm used or intended to be applied by him, may apply in writing in a prescribed manner for registration. The application must include the tm, the goods or services, the name and address of the candidate with power of attorney, and the time of use of the mark. The application must be in English or Hindi. It must be registered at the appropriate office.

Advantages of Trademark Registration

● Consultation
● Application Preparation
● Name search & approval
● Application Filing
● Same Day Filing
● Government Fees

Advantages of Trademark Registration

● Legal Protection Against Infringement
TM registration safeguards a brand against infringement, allowing it to take legal action in case a third party uses it without prior permission.
● Distinct Identity
TM creates an easily recognizable and unique mark, enabling customers to distinguish the brands instantly and eliminate instances of imitation and counterfeiting by competitors.
● Marketing Tool
TM registration acts as a vital marketing tool, helping brands to stand out from competitors, expand their customer base, enhance brand credibility, and increase the company’s value and attractiveness.
● Global Recognition
A TM that is registered and filed in India is permitted to be registered in other countries (outside India as well). Moreover, foreigners can also get their trademarks registered and filed in India.
● Enhance Brand Value
A registered TM enhances a company’s net worth, goodwill, and brand value in the market as consumers link TM with optimal quality and performance.
● Competitive Advantage
A trademark helps brands create a strong market presence, demonstrate authenticity and quality of goods and services, and thus give a competitive edge against rivals.
● Sales and Market Share
A legally protected brand can easily enter into new locations and expand its business, ultimately leading to increased market share and profitability.
● Additional Revenue Stream
Trademarks can be sold, assigned, licensed, franchised, and used commercially, allowing businesses to generate additional sources of income.
● Protect Commercial Goodwill
A trademark’s registered owner has the power to build, secure, and protect the goodwill of his/her goods or services.
● Valuable Asset
For a brand, a trademark is a valuable asset that can also be pledged as collateral to secure funding from the lenders.
● Right to Use R Symbol
The company can use the registered symbol (®) once the TM is filed. The logo is legitimate legal proof that the TM is already registered and cannot be used by another individual or company.
● Exclusive Rights
The proprietor of a registered TM receives exclusive rights over their TM item, preventing others from using deceptively similar or identical trademarks. Moreover, the same trademark can be applied by the owner for all the products that fall under the same classes.

Steps In Trademark Application

● Step 1 : Trademark search (1 day)
For brand registration, Lexlivo checks trademark availability or checks brand name availability on the behalf of their customers to make sure that their desired name or design has not already been taken or isn’t too similar to an already existing tm.
● Step 2 : Create trademark application (1 day)
Once we ensure that your chosen name or design is available & exclusive, we will send you an authorization letter which has to be duly signed by you and returned to us. These letters give our lawyers the authority to file a trademark application on your behalf.
● Step 3 : Trademark application submission (1 day)
Once we receive the authorization letter & provided that no information is incorrect or partial, our lawyers will file the tm on your behalf, and you can immediately start using the ™ symbol. We will provide you with the TM application number.
We file the tm either at the central tm department office or online. A tm can be filed online only by a registered lawyer or agent.
● Step 4 : Trademark registration (1.5 years)
Once a trademark application is complete, your application will be verified by the tm office. The government can also raise an objection on if your name is similar to some other tm in the same class, or the name is deemed obscene, hurts religious sentiments.
In case no objection is raised, the tm registrar will publish an advertisement in the tm journal. If no tm opposition is filed by any party within a period of 4 months, the tm should be registered within the next 6 months. During this period, we constantly provide you with updates regarding the status of your application. You will need to pay the additional fee in case of such objections.
● Step 5: Hearing before Registrar
If the object has been filed on your tm and the opposition doesn’t agree with your response, then a hearing is held before the registrar. We appoint lawyers (charges extra) to take up your case in front of the registrar.

Trademark Objected

If a Trademark is registered and the status is shown as “Objected” this indicates that the authority has received 1 or more objections on the tm, this can be because of duplication of existing registered trademarks, or else the trademark will be offensive even if there are various other reasons for trademark objection. The objection is raised under section 9 and section 11. In Section 9 the objections are made if the authority determines the tm to be descriptive of goods. To overcome such objection you are required to give proper evidence and prove distinctive of your tm.

In Section 11 the objections are made by the authority when they see the same tm which means such a tm already exists for similar goods, services, or products. When the objection is done, the candidate is required to make sure that he/she gives appropriate documents within the provided time, this will help you to overcome the objection.

Trademark Renewal

Just applying for trademark registration won’t work for the long-term. The tm remains valid just for 10 years after that one needs to file for Trademark Renewal.
Trademark renewal must be filed before the expiry of the tm. The renewal application form must be made and filed before the deadline to have the seamless protection of the tm without any chances of litigation.
● Protection from Frivolous Litigation : It is likely to have seamless tm protection without any risks of litigation. Renewal of trademarks makes it difficult for someone to maintain rights over it other than the tm owner.
● Increase of Ownership Rights : One can get security from infringement of rights over the brand name. The exclusive rights over the tm are continued for 10 years after each renewal. So it provides permanent protection of your brand and goodwill generated by the brand.
● Brand Name Registration and Security :
Upon successful registration of brand name, renewal of tm guarantees constant and unhindered protection of the same. Failure of renewal depict a lapse of legal protection in the Brand name.
● Monetary Returns :
A tm owner has the particular right to allot or license the tm to someone else in return for some monetary benefit. Thus, one can earn a profit from a register trademark as well.

Renewal Process and Forms
● The application for renewal is done in form TM-12.
● The application can be executed by either the registered owner of the tm or an agent approved by him.
● You must take the help of a professional to register for the renewal of a tm application to guarantee that the mark is well protected. This is because you may need to increase the scope of protection. After all, if your brand has lasted 10 years, it’s likely that it will have outgrown the classes you had 1st registered it under.
● Filing a trademark renewal application increases protection by another 10 years. The trademark registrations are applicable for another 10 years and renewed again before expiry.

Validity of a Registered Trademark

Once a trademark application is registered in the tm office or online, the candidate can begin applying the TM symbol on products or services, and if the trademark is registered, then the candidate specifies the ® symbol over his trademark. All registered trademarks are valid for 10 years from the date of registration.

At the end of the validity of a tm, a tm can be renewed simply by giving the Government fee for registration within 6 months via “Form TM-12”, from the date of expiry of the tm.
An expired tm can be renewed through Form TM-13 (Restoration & Renewal) after 6 months and within 1 year from the expiration of the last registration of the tm.

Important Things Know About the Online Trademark Registration

Nowadays, with the arrival of technological advancements, trademark registration can be quickly made online. You can get the help of a registered tm attorney to register online without needing to visit the registry office.

● VIENNA Codification Process
In the tm process, Vienna codification is a significant step. It is an international classification that is provided once you fill the application form. At this point, your application for registration will be expressed as – Sent for Vienna codification.
● Examination of tm
After the trademark application is provided for the Vienna classification, the tm will be considered by the tm officer following specific guidelines and procedures. The officer may accept or deny the application as per his/her choice.
● Hearing before tm Registrar or Officer
If the tm application is denied, the candidate can go for a hearing. If the officer is satisfied with the given documents then the application will be transferred. If the officer is not satisfied, once again the application gets denied. If he/she is not entirely convinced about the reason for rejection, then the Intellectual Property Appellate Board can be reached.
● General tm Protection Solution
We offer a complete suite of solutions for the protection of your tm in India. Before application of the mark and post-application of the tm, “Lexlivo” will assist you with consultation on protecting your tm. But, please note that the final authority for registration of a tm is held only by the tm Registrar, and “Lexlivo” or its Employees can at no-stage guarantee registration of a trademark.
● Trademark Search
Before applying for a tm, we conduct a trademark search. Under the Trade Marks Act, the same or related tm cannot be registered. It is simple to learn an identical trademark from a trademark search. However, the test for connection is applied by a tm Examiner on a case-to-case basis. So, “Lexlivo” or its employees cannot predict which trademark applications will be disapproved.
● Trademark Objection
In case a trademark application is disapproved by the tm Examiner, a reply can be submitted to the objection proposed, by the candidate with facts and points supporting the registration of the tm. Based on the reply, the Examiner can call for a hearing or allow the tm filing to continue or refuse the trademark application.
● Trademark Opposition
Before the trademark registration process is complete, the tm Registrar will publish the tm to be registered in the tm Journal along with this, he will allow 90 days for any person to raise opposition.
● Certificate of Registration
When you have passed all these stages, and your application is approved, then you can start using the ® symbol which means that the tm has been registered. The entire procedure depends on the government which may take 1-2 years.
● Infringement Trademark
Trademark watch services will help alert businesses of any potential trademark infringement and enable proactive protection, early detection, and reduced risks of costly legal battles.