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How to Register a Trademark

Team YS
4th Oct 2011
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Trade Mark

Lawyers from VakilSearch Answer Choosing a ‘Class’

In order to apply for a trademark, the primary step is for the enterprise to determine the category under which it seeks protection. The Trade Marks Act, 1999 contains a total of 45 categories, in which Classes 1-34 deal with goods and Classes 35-45 deal with services.

 

Hypothetically, if you want to register a brand of harmonicas called Veeru, you would first be required to determine the class under which it falls. A harmonica, which is a musical instrument, falls under Class 15. If a logo in addition to the brand name is to be registered, they would both have to be registered separately but under the same class.

 

However, it is important to know that the registration of Veeru only under Class 15 would not in any manner preclude another company from using the same brand name for another class of product or services (Clothes, Automobiles or Telecommunication services, for instance)

 

Therefore, if one wishes to diversify one’s enterprise in the future to deal in other products or services in other Classes, it would be prudent to register your trademark in all those classes in order to obtain a greater degree of protection.

 

Also, one is precluded from registering trademarks which are well-known. For example, Ferrari is a very well known brand, and even though it does not make harmonicas, the use of its name is prohibited for other products as well due to the fact that it is extremely ‘well-known’.

 

 

Checking if the trademark you want is available and making an application

After determining the Class in which you wish to register your trademark, you may contact a reliable trademark lawyer in order to check if there are similar trademarks which have already been registered under that Class. It is essential that you explain the nature of the enterprise in detail so that the lawyer may be able to effectively advise you on whether or not the chosen class(es) are appropriate and whether or not you should register under additional classes as well.

 

Vakil Search
The next step would entail you authorising your lawyer to act in the capacity of your agent during the course of the trademark registration process. The fees charged are Rs. 3500 per Class by the Government and Rs. 1000-4000 per Class by a lawyer as legal fees. The registration of a trademark will therefore cost you approximately Rs. 5000-7500 per Class. The lawyer will then proceed to verify whether or not the trademark is available. This would entail an online as well as offline search. It is recommended, however, that you ask your lawyer to conduct both an online as well as offline search.

 

The lawyer would now begin to draft an application for the registration of your trademark. If the trademark you seek is unavailable, you can change/modify the name or logo. Similarly, if another company has a similar trademark which you think should belong to you, you can file appropriate proceedings with the help of a lawyer.

During this process you are required to decide whether or not the trademark should be registered in your name or your company’s name. Many small entrepreneurs register their trademark in their own name since this would allow them to use the trademark even if their business shuts down. Additionally, if you were to register the trademark in the company’s name the trademark will be owned by the company, and a Company’s shareholding may change from time to time.

An option many use is to register the trademark in your own name and then enter into a license agreement with the company. This provides greater security since the license may be revoked if the company is being closed.

Even if the trademark is available, the Trademark Registration Office may reject your application for a number of reasons, including:

The Trademark is merely ‘Descriptive’

If a trademark merely describes what the enterprise sells, you will not be able to obtain a trademark. For instance, obtaining a trademark for a car company called ‘Car’ will be difficult. However, obtaining a trademark for a car magazine called ‘Car’ would be easier since you are not actually selling cars but only telling readers about them.

The Trademark is ‘Non-distinctive’

The law requires trademarks to be ‘distinctive’. This means that a trademark cannot be similar to the trademark to an already existing company.

The Trademark is similar to a ‘well-known’ Trademark

In relation to the above point, you are prohibited from using a trademark that is similar to a ‘well-known’ trademark. For example, the use of the brand name ‘Ferrari’ is prohibited even though Ferrari does not and may never sell harmonicas.

Post-Application

After your lawyer files an application for the registration of your trademark, you should ensure that you get a receipt. A few days later, you will receive the Original Representation Sheet of your application. After this procedure, the trademark is granted in approximately 16-24 months. It may take a longer period if anyone objects to your being granted the trademark.

Additional points to remember

In addition to the above, you should bear the following in mind:

The registration of your trademark in India should be your primary priority before seeking protection in other countries.

You may use the ® symbol next to your name and logo only if your trademark is registered. If not, you may only use the ™ symbol. Utilisation of the ® symbol without having a registered trademark is an offence.

Having a registered trademark can save precious time and energy in litigation. If you do not have a registered trademark you would have to go through the laborious process of proving that someone else was trying to “pass off” their products as yours.

Lastly, investors conduct a thorough search of a firm/company’s intellectual property protection before they invest in your enterprise. Not having a protected trademark may affect you.

This article is brought to you by VakilSearch

VakilSearch is India’s leading online legal services provider for businesses and individuals. As the official partner of the Confederation of Indian Industry (CII) and knowledge contributor to Sulekha.com, the Hindu Business Line, Entrepreneur Magazine and the All India Rubber Association, VakilSearch reaches out to thousands of businesses, entrepreneurs and individuals on a regular basis. So when you visit vakilsearch.com, you can be assured of quality legal guidance and comprehensive documentation for your business and personal needs, at affordable prices.

Read VakilSearch's previous article on "How to Start a Playschool" here

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