Filing a Trademark? A Quick Go-Through (Part 1)Guest Author
Trademarks are an important part of every business. Your trademark will perform the important task of differentiating your business from those of others. A trademark may be in any form - word, picture, color, sign, design etc. While the law permits variety and ingenuity, it does put down certain fundamental criteria which have to be fulfilled, failing which the proposed mark will be refused registration. These conditions are:
- The mark proposed for registration must have a distinctive character.
- It must not comprise signs, words and representations which have become a customary part of the business (eg. like registering the word 'kilogram' as a trademark)
- It must not be a straightforward description of the kind, quality, intended purpose, (for example, registering the trademark 'Aeroplane' for a particular model of aircraft will not be allowed. But the trademark 'aeroplane beedis' will be registered.
A Quick Overview of the Registration Process
1. Who can Apply?
As per section 18 of the Trade Marks Act, 1999, any person claiming to be the proprietor of a trade mark used or proposed to be used by him can apply in writing to the Registrar. The application may be made in paper or online. The trade marks registry has nine offices all over the country with its head office in Mumbai.
While Section 18 of the Trade Marks Act, 1999 permits any person to apply, it must be noted that under Section 3(42) of the General Clauses Act, 1897 the word 'Person' includes a company, an association or a body of individuals. Thus, a company can authorize any officer to apply on its behalf. Such authorization may be given by means of a simple board resolution. Even a written authorisation to which the common seal of the company is affixed would do.
2. Get a Digital Signature
The trademark office directly accepts online applications for registration. These applications are initially published in the Trademarks journal for circulation among the public and to invite objections, if any. These applications have to be digitally signed by the applicant. A Class 3 digital signature would doubtlessly fulfil the role. Even a class 2 signature may be adequate. One may check with e-Mudhra, TCS or any other certification authority as mandated by the Information Technology Act, 2000.
3. Check your Class of Goods or Services
The Fourth Schedule to the Trade Marks Rules, 2002 contains a list of 45 Classes under which a trademark can be registered. Each class covers a certain category of industy. Classes 1 to 34 deal with goods whereas classes 35 to 45 cover services.
Therefore, the applicant should find out which class or classes correspond to his business activities and hence, would involve usage of his trademark. For example, the trademark 'Godrej' would definitely be registered under classes 36 and 37 (building construction and real estate affairs) for its real estate business, class 20 (furniture, see Godrej Interio) and class 11 (refrigerating, see Godrej Refrigerators). This clearly shows that one has to carefully analyse all the sectors of industry in which he will use his trademark. Then he should select the appropriate classes, and file accordingly.
4. Single or Multiple Filings - Filing fees?
An application for a trade mark has to be made by filling up the prescribed form. The relevant forms have been prescribed in the First Schedule of the Trade Marks Rules, 2002. For instance, if an applicant would like to register a single trademark, the filing fee amounts to Rs. 3500/- per mark per class. The appropriate form to be filled for this purpose would be Form TM-1. If an applicant wants to register one trademark for three classes, the relevant form would be Form TM-51 and the fee payable would be Rs. 3500 x 3 = Rs. 10,500/-.
Filing a trademark application is a two-stage process. The first is undoubtedly the filing stage, in which the application is submitted and published in the trade marks journal. In the second phase, if all goes well, the mark is registered as a trademark or, in the event of an objection, the matter goes through an administrative adjudication process. In this article, to keep things simple, I have just covered the basics of trademark filing. In my second article on this subject (part 2), I will explain the post-filing process.
Till then, happy filing!
Aditya Singh: Founder of thevakil.com, a portal offering insights into various aspects of Indian law.