2. Key Areas
KEYAREAS
Introduction
Qualities of Good Trade Mark
Registration Process
Class Search
2
KEYAREAS
Public Search
TM Applications and it’s fee
Examination Report and Responses
Acceptance and Advertising
Certificate of Trade Marks
3. INTRODUCTION
A trademark is a visual symbol which may be
a word - Har Din Fashion Karo
name - Athreya
Device -Device -
Label -
Numerals -
combination of color -
4. Easy to pronounce, spell, remember.
Should be distinctive and should not have deceptive similarity.
Should not be descriptive.
QUALITIES OF A GOOD TRADEMARK
4
Should not be descriptive.
Laudatory words such as best , perfect etc., to be avoided.
5. Definitions
Trademark
•Trademark is a distinctive sign or indicator used by an individual or an
organization and is applied to the articles of commerce so as to identify the
products of one trader from those of another. Simply, a trademark is a warden of
trader.
•A collective trademark or collective mark is trademark owned by an
organization (such as an association), whose members use it to identify
Collective
Mark
organization (such as an association), whose members use it to identify
themselves with a level of quality or accuracy, geographical origins, or other
characteristics set by the organization. Example “CS” device used by the
Institute of Company Secretaries of India .
Service Mark
•A Service mark is same as a trademark except that it identifies and
distinguishes the source of a service rather than a product
6. HOW IS A TRADEMARK DESIGNATED IN INDIA ?
TM
- For an unregistered trademark, - For a registered trademark.
A trademark is designated by the following
-
that is, a mark used to promote
or brand goods.
7. Registration Process
Application in TM-1 Form
Issue of Examination
Report
Accepted Objections raised
Publication in Journal
for public opposition
If no objections,
Accepted
Issuance of
Certificate of
Registration
Reply to ER
Hearing date will be
fixed
Accepted
Refused/Withdrawn/
Abandoned
8. INFORMATION REQUIRED FOR REGISTRATION OF TRADE
MARK/SERVICE MARK IN INDIA
1. Name of the Company (Applicant)
2. Constitution of the Applicant
(Individual/ Sole Proprietorship/
Partnership / Society / Limited
Company/ Trust )
3. Name(s) of Proprietor/Partners/
6. Nationality of the Applicant
7. Mention the Trade Mark to be
registered
8. Mention Goods / Services in respect
of which the Trade Mark is to be
registered
Managing Director
4. Address
5. Name of the Contact Person With
Designation
/Telephone/Mobile/Fax/Email
9. Date of first use of the Mark by you
in India, if any
10. Previous owners and other
particulars, if any
9. CLASS SEARCH
THE FOURTH SCHEDULE TO TRADE
MARKS RULES, 2002
NICE CLASSIFICATION OF
TRADEMARK
1. Brief Classification of Goods and
Services
1. Lengthy Classification of Goods and
Services
2. Goods - Class 01 to Class 34
Services - Class 35 to Class 45
2. List of Good & Services in Class Order
List of Good & Services in Alphabetical
Order
9
3. Under Trade Marks Rules 2002 _ Only
India
3. Under World Intellectual Property
Organization (WIPO)- 83 Countries
15. TM APPLICATIONS - FIRST SCHEDULE OF TRADE MARK RULE
Sl.N
O
Particulars Statutory
Fee
Corresponding
Form Number
1. Application to register a
trade mark for a
specification of goods or
services included in one class
[Section 18(1)]
4000 TM-1
2. On a single application 4000 – per TM-512. On a single application
under section 18(2) for the
registration of a trade mark
for different classes of goods
or services.
4000 – per
class
TM-51
3. Form of Authorization of
Agent in a matter or
proceeding under the Act
[Sec 145 and rule 21
NA TM-48
16. Sl.NO Particulars Statutory
Fee
Corresponding Form
Number
4 Correction of a clerical error or for
amendment under section 18(4), 22
and 58
500 TM-16
5. On request for a duplicate or
further copy of certificate rule
500 TM-59
further copy of certificate rule
62(3)
6 For renewal under section 25 of
the registration of a trade mark at
the expiration of the last
registration
5000 TM-12
7. On a request under rule 40(1) to
state grounds of decision
10000 TM-15
17. EXAMINATION REPORT AND THEIR REPLIES
The objections
When a trademark application is received by an examiner, it has to be
verified whether the application can be allowed to be registered. In
general, examiners would look into the following aspects
Information and Format – They will check if the application has beenInformation and Format – They will check if the application has been
filed in the correct form, whether all the relevant details are included and
the specification of goods/services mentioned fall under the appropriate
class.
Absolute Grounds – The next aspect examiners look into, is to see
whether the trademark is distinct and it does not describe the goods.
Example
If a baker got the trademark “bakery” or “baker” registered, no other baker
would be able to operate.)
18. Once the Application has been made to the trade mark authorities, the
applicant must wait for a minimum period of 6-8 months to get the
Examination Report from the trade mark office.
Response to Examination ReportResponse to Examination Report
If the examiner has any objection as mentioned above, an Examination
report will be uploaded in the website of the trademark registry specifying
the grounds for objection.
The trademark applicant or the attorney of the applicant has to file a
response to the objections raised in the examination report within 30 days
from the date of ER. While there is no fixed format or requirement to be
complied with, there are certain factors that need to be kept in mind while
drafting and filing a reply.
19. Hearing
After the filing of Response to Examination Report, a show cause notice for
hearing will be sent to the applicant or Authorized person to appear for hearing.
Acceptance and Advertising in the TM Journal
After hearing, if our logo or mark is allowed by the trade mark authorities then
“Acceptance of Trade mark” will be published in Trade Mark Journal and the
Hearing/Acceptance/Certificate of Registration
“Acceptance of Trade mark” will be published in Trade Mark Journal and the
trade mark authorities will wait for 30 days from the date of publication to note
if any public opposition is raised.
Certificate of Registration of Trademark
If no objection is filed, or if the objection is dismissed by the Registrar, he shall
enter the trademark in the register and a Registration Certificate shall be
issued.
20. Note:
If, a trademark is rejected, then the decision of the Trademark Registry is
appealable to the Intellectual Property Appellate Board.
A Trademark is valid for ten years,
It shall be renewed after the expiry of the time period on payment of requisite fees.
