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WHAT WE DO - TRADE MARK

GET TRADEMARK PROTECTION. SECURE YOUR RIGHTS, BUSINESS AND PRESTIGE

Search  

It is desirable to conduct a Trade Mark search of the index of the registered and pending applications in the official digital database to ascertain the existence of prior registrations of identical marks or deceptively similar marks in respect of the same goods.   

Search report

  • Relevant registered/published applications
  • Classification of Goods or Services
  • Search strategy adopted including combinations of the proposed word or phrase
  • Comments from the searcher’s point of view with detailed analysis
  • A copy of every cited document will be attached (optional)
  • Any person by applying in Form TM-55 and payment of an official prescribed fee can get an opinion from the registrar as to the distinctiveness of the proposed mark by mentioning the mark as well as the goods or services confined to a given class. The Registrar will give his advice ordinarily within 7 days of filing this request.
  

Filing trademark application  
Filing an Indian application   Any person claiming to be the proprietor of a mark used or proposed to be used by him may apply in the prescribed form along with the prescribed fees to the Registrar for registration of the mark. The application shall be made to the Registrar where the applicant carries on business.    

Filing a convention application


In case of convention countries, a 6 month priority is allowed. Where an applicant has filed an application in any of the convention countries, he may file an application in India, within 6 months from the date of filing of the home country application and claim priority in India from that date. Where the applications have been made in more than one convention country, the period is to be considered from the date of the first application in the convention country.  

International Trademark Registration

Trademark registration is territorial in nature. Separate applications need to be filed in each country where the applicant wishes to register his trademark.  

Multi class applications are allowed in India. A multi class application is a single application for registration of a one trade marks made in different classes of goods or service. When registered, all the goods or services are recorded under a single trade marks number but fees to be paid for each class.

  
Requirements for filing Trade Mark application:
  • Full name, address and nationality of applicant(s)
  • The trade description viz. (manufacturer, merchant, trader, exporter, service provider, dealer etc.) or Firm name /Company name
  • Name of the proprietor or the name of the partners
  • If the applicant is a company, the country or state of incorporation
  • Address of the Business Place
  • If it is a Private Ltd. Company or a Public Limited Company, please furnish the Memorandum and Articles of Association
  • Description of the mark
  • In case the mark is stylized/logo/shape, graphical representation of the mark.
  • The reproduction of the mark should consist of a two dimensional graphic or photographic reproduction and at least three different views of the shape in question along with a written description
  • In the case of three dimensional mark, the reproduction of the mark shall consist of a two dimensional or photographic reproduction and at least three different views of the trade mark
  • List of goods/services for which the registration is required
  • The specification of goods or services if exceeds, the prescribed fee must be paid for each additional character. Also an Application in Form TM-61 must be filed along with the application for registration of the mark, if the number of characters in the goods/service specification exceeds 500.
  • Date of first use in India, if any, or whether the mark is proposed to be used. This can be verified from the first invoiceIf the product is medicinal preparation ,then can be verified from the Drug Endorsement made for the particular product in drug license.
  • Application for registration of an ordinary trademark (including a service mark) must be filed in Form TM-1. Application for registration of a trademark claiming Convention Priority must be filed in Form TM-2. To register a Collective Mark the application must be filed in Form TM-3, for Certification Marks the application must be filed in Form TM-4. To register a Series Mark the application must be filed in Form TM-8 and for registration of a trade mark for different classes of goods or services the application must be filed in Form TM-51.
  • Certified copy of priority document If the application claims priority from an earlier filed convention application [If the Certified Priority Document is in other language then Verified English translation must be required]along with Priority Country, Priority Application Number & Priority Date and goods/services. A copy of the priority document can be submitted within 1 month from the filing date of the application.]
  • Power of attorney (no legalization or notarization is required) or Form TM-48. It must be signed by the Applicant and duly stamped.
 
E-Filing of trade mark  
E-filing is a new service provided by the TMR in order to enable customers to apply for a Trade Mark on-line allowing from your
browser for you to:
  • Complete an electronic application form
  • Provide the associated attachments
  • Complete the necessary payment details 
 Documents:
A soft copy of the trademark in JPEG format
TM 48 (form of authorization) 
Prosecution of trade mark application
  • Preparation and filing ‘Response to Examination report
  • Attending show-cause hearing & representation of the case before the Registrar
   Opposition procedures
  • Drafting and filing all the relevant documents
  • Attending opposition hearings
 Infringement
  • Trademark infringement analysis/opinion
  • Defending Clients' intellectual property matters before various tribunals, and in the civil and criminal courts (action of infringement & passing off)
    Assignments, Mergers, Acquisitions & License agreements
  • Drafting & registration of assignments executed and notarized by both parties
  • Mergers and Acquisitions of body corporate
  • Drafting and vetting of Transfer of Technology, License and Franchise agreements
According to the law, the assignment of a trademark should not result in the creation of concurrent exclusive rights in more than one person with respect to the use of the same/similar mark in respect of same/similar goods. Confusion or deception can be avoided by territorial limitation or limitation of the goods.    

Renewals
   
Registration of a trade mark is valid for a period of ten years but can be renewed from time to time. An application for renewal can be filed not more than six months before the expiration of the last registration.
 

A trade mark is a visual representation attached to goods for the purpose of indicating their trade origin. For example, the trade mark ‘Lakme’ distinguishes the goods of Lakme Lever Company from those of say, the ‘Revlon’. The word ‘Revlon’ is a separate trade mark which distinguishes goods of 'Revlon'.  

Section 2(1)(m) of the Trade Marks Act, 1999 defines a mark as:
“Mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof”.
 

Section 2(1)(zb) defines "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors.  

The ‘trade mark” means a mark capable of being represented graphically; and which is capable of distinguishing the goods or services of one person from those of others. Mark includes amongst it name or word also. Name includes any abbreviation of a name; Lakmikant v. Patel v Chetanbhat Shah, AIR 2002 SC 275.
 

The definition of a trade mark includes the concept of service. In other words, a trade mark not only distinguishes goods but also services. A Service Mark, just like a Trade Mark is a mark used or intended to be used to identify, distinguish or indicate the source of origin of the service. In India, Service Marks can now be registered under Classes 35 to 42.
 

Section 2(1)(z) defines service as service of any description which is made available to potential users and includes the provision of services in connection with business of an 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.  

Section 2(1)(z) defines service as service of any description which is made available to potential users and includes the provision of services in connection with business of an 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.    

Different Classes of Goods and Services

India follows the International Classification of Goods or services (nice Classification) and has now introduced 45 classes, which include 11 service classes. An application can be made in a particular class depending upon the goods/services in relation to which the mark is being used or is proposed to be used. Multiple Class applications can also be made for the same mark.

 

 
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