A Guide to Filing Trademark Application in India

In recent times, a trademark plays a crucial role in business, especially for brand recognition and the business's future as it adds more value to the brand than others. An individual, company, association, trust, society etc. can opt for it. Here are the guidelines for the procedures involved in the trademark application process and trademark administration in India.

Trademarks that can be registered:

Trademarks can be added in everyday language and symbols which remain in the public domain for use as giving exclusive rights to frequently used elements would provide others with a limitation to use. However, a 'trademark' is known as a mark that is capable of differentiating the goods and services of one person from others, including the shape, packaging or colour combination of goods as well under the section 2 (1) (zb) of the Trade Marks Act, 1999 ("the Act"). Moreover, Brand Names, Business or Company Name and Domain Names can also be trademarked.

Meanwhile, a certain type of trademarks like arbitrary or fanciful gives an added advantage as it could distinguish itself from others.

How to distinguish bad trademark choices:

There are a few things which should be kept in mind while thinking about trademarks. Under Section 9(1)(b) of the Act descriptive words which are related to the functionality or description of goods/services cannot be registered as trademarks - like "SUGAR-FREE" for a product that doesn't consist of sugar.

Apart from that, names that have geographical names in it can't be registered as it would be unfair to restrict the usage of the geographical term. Moreover, short abbreviations like "USB" are tough to register as they denote different things altogether. Even this rule applied for the common surnames like Smith, Patel, etc. and also for those words against the morals and ethics of the Indian community.

However, it is also noteworthy that, phrases, slogans, logos, and sound marks (like Yahoo Yodel), various combinations of colours and smell can be legally registered as trademarks.

How to make the right decision?

Making the right decision from the beginning is essential. Meanwhile, identifying keywords is also necessary as a trademark may be divided into several keywords based on the search. As an example, "BURBERRY" can be divided into "BUR" and "BERRY" as a separate keyword search for each word would help to provide the same or similar results as well.

Even a google search can give the desired result as well. However, one should keep the fact in mind that Indian Trademark law allows the registration of the same marks to that of a registered trademark if used under a different class of goods or services.

Meanwhile, social media sites like LinkedIn, Facebook, Twitter, Instagram, and YouTube also help. Therefore, a social media search can be useful for a strong trademark.

IP Databases which are used for the search:

  1. IP India Public Search – https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx
  2. Company/LLP name search on MCA website – https://www.mca.gov.in/
  3. WIPO International Database (For searching across multiple global jurisdictions) – https://www.wipo.int/classifications/nivilo/vienna/index.htm
  4. USPTO TESS (For filing Trademarks parallelly in India and USA) – http://tess2.uspto.gov

To File a Trademark, TM-A form is needed alongside fees to the office of Trade Marks Registry at Mumbai (Head Office) or its branch offices at Ahmedabad, Chennai, Delhi and Kolkata.

Documents required for it:

Alongside the TM-A form, the documents are needed: a soft copy of the logo, an authorization letter, an affidavit with the trademark, copy of a PAN Card and, MSMED/Udyam Adhaar Certificate as well, if available.