Trademark
A Trademark Registration, also referred to as a trade-mark or trademark is a design, sign or expression which is easily recognizable. It is used in the identification of services or products coming from a specific source. Some trademarks, that can identify services, are known as service marks. Any legal entity, including a business organization or an individual, can own a trademark. The trademark can be present on a label, package, the product or a voucher. For corporate identity, some companies display their trademarks on company buildings.
The function of a trademark is to identify the owner of the brand for a specific service or product. One can license a trademark to others. For instance, in order to produce Smurf figurines, Bullyland received a license. The Lego Group bought a license from Lucasfilm. The objective was to come up with Lego Star Wars. You might also know that TT Toys is a manufacturer of replica cars for kids, that are licensed. The term ‘brand piracy’ refers to the use of unauthorized trademarks. This can be done by trading and producing counterfeit goods.
In case of trademark infringement, the trademark owner may go for a legal action. In most of the countries, registering a trademark involves a formal process. This is a precondition for taking legal measures against copyright infringement. In Canada, the US and some other countries, common law trademark rights are recognized. This indicates that the authorities can take action to prevent the use of trademarks, unless it is registered. Presently, the trademark owner can benefit from the common law trademarks in terms of legal protection, rather than registered trademarks.
How to apply for your trademark?
You need to produce the following during trademark application:
- The logo or word you want to use as trademark
- Power of attorney
- The applicant’s name, age, address, nationality, father’s name and contact details
- For a corporate, the authorized signatory’s name, age, address, nationality, father’s name and contact details are to be furnished
- Whether or not the owner is a partnership firm. If yes, you need to provide the name, nationality, address and contact details of all your partners.
- Description of the services or goods
- Specifying whether or not the trademark is proposed to be used, or already in use
Process of registering your trademark
First, you need to search for a suitable trademark. We can assist you during this process, using our tools. Besides, you can also use the government’s tool for searching trademarks or identifying it under the same class. After completing the search, the owner needs to proceed to the process of application. This is based on the details of similar or identical trademark applications, that have already been filed.
- Once you obtain the import license, you can benefit from various subsidies from the Export Promotion Council, Customs and DGFT in course of your business activities.
- The customs port or customs authorities would ask for the import export license while dispatching shipments from customs.
- In case you are an importer and want to send outside your country through your bank, the respective organization would ask for your import license.
- The bank will also ask for document from exporters when they receive money in the form of foreign currency into their bank accounts directly.
- Allotment of trademark application: When you file the application for the registration of trademark with the registrar, you will receive an allotment number within a couple of working days. Then you can track this application online through the search feature. When you get your allotment number, the TM symbol can be affixed beside the logo.
- Vienna codification: During the Vienna agreement (1973), the Vienna codification was established. This is a worldwide cataloguing of the figurative elements of marks. When you file the application, this classification will be applied by the trademark registrar to the trademark. This process is based on the figurative elements present in the marks. During this process, you will notice that the status of trademark application shows ‘sent for Vienna codification’.
- Examining the trademark: After completing the Vienna codification, an officer in the registrar office of trademark will be allocated with the application. This officer would be responsible for reviewing the trademark application for accuracy. Then an examination report would be generated for the same. The officer may object the application, or accept the same.
- Trademark objection: If the trademark officer objects the application, the applicant may appear before him or her and address the objections. In case the applicant is able to justify the same, it would be permitted for journal publication. However, if the officer is not happy with the reasoning, the applicant may approach the Intellectual Property Appellate Board to appeal the officer’s decision.
Actions involved in registering the trademarks
5. Publication of the journal: Once the registrar accepts the trademark registration, the proposed sign gets published in the journal of trademarks. This is a weekly publication, that carries all the trademarks that the registrar has so far accepted. When it gets published, the general public will get an opportunity to raise an objection to a particular registration, in case they think that it would harm their business. However, if no objection comes up within 90 days of the publication, the trademark is registered within a span of 12 weeks.
If any third-party opposes the application for trademark registration, the trademark hearing officer will call for a hearing. The opposing party and the applicant can appear before at the hearing. Both of them can come up with justifications for the rejection or the registration of the application. On the basis of the presented evidence, the hearing officer would decide whether or not the application would be accepted. One can also challenge the hearing officer’s decision by approaching the Intellectual Property Appellate Board.
6. Registration of trademark: In case the trademark application faces no opposition or objection, the trademark registration certificate and trademark manuscript will be prepared. When the certificate of trademark registration gets issued, it is considered that the trademark belongs to the owner. In the process, the owner gets an exclusive right to use the mark. Now you can use the sign along with your logo.
What is a trademark?
A trademark is a recognizable symbol, phrase, or word that denotes a specific product and legally differentiates it from all others of its kind. It can be registered or unregistered, and it may or may not expire. Trademarks are used to prevent confusion, protect brands, and generate revenue .
A trademark can be any word, name, symbol, or device used to identify and distinguish goods and/or services from those of others. It also indicates the source of the goods, even if unknown to the consumer .
Trademarks are generally considered a form of intellectual property and may or may not be registered. A registered trademark is denoted by the ® symbol, while an unregistered trademark is denoted by the ™ symbol .
Although trademarks do not expire, the owner must make regular use of it in order to receive the protections associated with them
How to select a good trademark?
Choose a distinctive, memorable, and relevant trademark. Avoid generic terms, check for existing use, ensure legal availability, and consider scalability. Seek legal advice to ensure proper protection.
Who can apply for a trademark and how?
Trademark registration is a legal process that provides the person or business registering the trademark exclusive rights to use the mark in connection with specific goods or services. Here’s a general guide on who can apply for a trademark and how the process works in the United States:
Who can apply for a trademark?
Individuals: An individual can apply for a trademark for their own goods or services.
Business Entities: This includes corporations, partnerships, limited liability companies (LLCs), and other legal entities.
Foreign Entities: Individuals and businesses from outside the United States can also apply for a U.S. trademark.
Trademark registration is a legal process that provides the person or business registering the trademark exclusive rights to use the mark in connection with specific goods or services. Here’s a general guide on who can apply for a trademark and how the process works in the United States:
How to apply for a trademark:
Determine Eligibility:
- Ensure that the mark is eligible for trademark protection. Generic terms or marks that may cause confusion with existing trademarks are typically not eligible.
Conduct a Trademark Search:
- Search the U.S. Patent and Trademark Office (USPTO) database to check if a similar mark is already registered.
Identify Goods or Services:
- Clearly define the goods or services associated with the mark. The application should specify the classes of goods or services in which protection is sought.
Create a Specimen:
- Submit a specimen, which is a sample of how the mark is actually used in commerce. This could be a label, packaging, website screenshot, etc.
File the Application:
- File the trademark application with the USPTO. This can be done online through the USPTO website using the Trademark Electronic Application System (TEAS).
Pay Fees:
- Pay the required filing fees. The amount depends on the filing option chosen and the number of classes of goods or services.
Review Process:
- The USPTO will review the application, and if there are no issues, it will be published in the Official Gazette for opposition. Others may oppose the registration if they believe it will harm their interests.
Registration:
- If there is no opposition or if any opposition is resolved in your favor, and all requirements are met, the USPTO will issue a registration certificate.
What are the different types of trademarks that may be registered in India?
In India, the different types of trademarks that may be registered include:
Individual Trademarks: For single entities.
Collective Trademarks: Used by association members.
Certification Trademarks: Indicate goods/services meet standards.
Shape of Goods: Includes product or packaging shape.
Service Marks: Identify and distinguish services.
Well-Known Trademarks: High-reputation marks.
Series Trademarks: Multiple marks in a single application.
Multi-Class Applications: Register in more than one class.
Scent Marks: Registration of scents.
Sound Marks: Registration for sounds (jingles, tunes).
Consult a trademark attorney for specific guidance on the registration process and requirements.
Who benefits from a trademark?
A trademark benefits brand owners by establishing a unique identity, building consumer trust, providing legal protection, and contributing to the overall success and value of a business. It offers exclusive rights, a competitive edge, and serves as a valuable marketing tool, fostering recognition and loyalty.
What are the benefits of registering a trademark?
- Legal Protection: Exclusive rights and legal recourse against unauthorized use.
- Brand Recognition: Establishes a unique and identifiable brand.
- Market Expansion: Facilitates national and international market entry.
- Asset Value: Enhances overall business value as a valuable asset.
- Consumer Trust: Builds confidence and signifies commitment to quality.
- Competitive Advantage: Prevents others from using a similar mark in the industry.
- Exclusive Use: Reduces the risk of brand dilution or confusion.
- Enforcement Rights: Allows legal action against infringement.
- Licensing Opportunities: Enables revenue through licensing or franchising.
- Global Protection: Provides trademark protection in multiple jurisdictions.
- Counterfeiting Deterrent: Acts as a deterrent against counterfeiting.
- Trademark Symbol Usage: Grants the right to use the ® symbol, indicating registered trademark status.
What are the formalities and government fees for major trademark transactions?
Trademark Registration:
- Formalities: Submit application with mark details.
- Fees: Vary by type, classes, and filing basis.
Trademark Renewal:
- Formalities: File renewal before expiration.
- Fees: Vary, payable at set intervals.
Trademark Assignment:
- Formalities: Record ownership transfer.
- Fees: Vary, may require documentation.
Trademark Licensing:
- Formalities: Execute licensing agreement.
- Fees: May need recording, fees vary.
Trademark Opposition:
- Formalities: File opposition to challenge.
- Fees: Fees for filing or responding.
Trademark Cancellation:
- Formalities: File cancellation petition.
- Fees: Vary for filing.
Trademark Search:
- Formalities: Conduct availability search.
- Fees: Vary; official fees may apply
What does the register of trademark contails?
The Register of Trademarks, maintained by the trademark office of a country or region, contains crucial information related to registered trademarks. The specific details may vary by jurisdiction, but typically, the register includes the following information:
Trademark Details:
- The registered trademark’s name, logo, or any distinctive elements that make up the mark.
Registration Number:
- A unique identification number assigned to each registered trademark for easy reference.
Applicant/Owner Information:
- Details about the individual or entity that owns the trademark, including their name and address.
Date of Application:
- The date when the application for trademark registration was filed with the trademark office.
Date of Registration:
- The date on which the trademark was officially registered after meeting all the requirements.
Goods and Services Classification:
- Information about the classes of goods or services for which the trademark is registered. Trademarks are categorized based on the Nice Classification system.
Trademark Status:
- The current status of the trademark, such as “Registered,” “Pending,” or “Expired.”
Renewal Information:
- If applicable, details about the renewal status and dates for maintaining the trademark registration.
Trademark Description:
- A description that defines the scope and nature of the goods or services associated with the trademark.
Trademark Image or Representation:
- For graphical or logo trademarks, there may be a representation or image of the mark as registered.
Opposition Details:
- If there were any opposition proceedings during the application process, relevant information about the opposition and its resolution may be included.
License or Assignment Information:
- Details about any licenses or assignments related to the trademark, indicating if the trademark has been authorized for use by other parties.
Access to the Register of Trademarks is typically public, allowing interested parties to search and verify the status and details of registered trademarks. It serves as a valuable resource for businesses, legal professionals, and the general public to understand the landscape of registered trademarks within a specific jurisdiction.
Can any correction be made in the application or register?
Can a registered trademark be removed from the register?
Yes, a registered trademark can be removed from the register due to reasons such as non-renewal, cancellation proceedings (non-use, genericide), voluntary surrender, invalidation or revocation, and court orders in legal actions like trademark infringement cases. Procedures vary by jurisdiction.