The classification system allows different class for different type or product or service. Accordingly, applicant will have to apply for trademark protection under only that class which applies to its product or service and not other non-applicable classes. However, in certain situation a trademark can fall under more than one class and in such case it is advisable to file the application for trademark protection in all such applicable classes.
India follows the World Intellectual Property Organization's (WIPO) NICE Classification for trademark classes. The NICE Classification is an international classification of goods and services for the purpose of registration of trademarks. This classification system consists 45 classes; first 34 classes include Goods and rest of the classes, i.e. 35 to 45 include Services. Trademark has to be registered under these classes only.
Classes 1 to 34 are for different goods, while classes 35 to 45 are for various services, therefore it is necessary to have the details of the goods / services for which the trade mark is used or proposed to be used, so that we can classify the same and accordingly the search can be undertaken or applications can be filed in only applicable classes.
Trademarks are protected depending on the goods or services for which the same are being used or are proposed to be used , hence they are classified in separate classes.
TM registration under a particular class prevents others from registering the same mark in the same class. Trademark classification helps to clearly identify the goods and services covered by the mark.
Trade Marks are of different types i.e. word, logo, device, signature, numerals, combination of colours, etc.
The trademark to be registered must also be distinctive for the services or goods for which it is proposed to be registered.
One trademark maybe protected in different ways for maximum protection e.g. the trade mark PEPSI could be protected in one class as word mark as well as logo.
Similarly, a mark can also be registered as exclusive style of representation as follow :
For each of the above, there would be a separate application.
It is advisable that all the forms of a trademark must be applied for registration.
Search of availability of Mark is conducted from the available records of The Office of Registrar of Trade Marks, India from its website.
Registration of Trademark is NOT compulsory, however it is advisable to register a trademark, as Registration of Trademark provides an exclusive right to use the registered Mark for the products or services for which it is registered and provides you with the legal protection in the event of any infringement arises.
No, Statement or Affidavit of Use is required at the time of filing application if the mark is 'proposed to be used'.
However, if one claims a prior use of the mark which is being applied for registration then it would be necessary to file a Statement and/or an Affidavit testifying the use of the mark in the application as per the Trade Marks Rules, 2017.
The professional fees for drafting the Statement and/or Affidavit testifying the use of the mark for each application ranges between Rs.2,500/- to Rs.5,000/-.
As per the Trademark Rules, the specification of goods or services should not be unrealistically broad, otherwise, it will impinge the scope of use or intended use by others.
Size :
The size of the representation of the trade mark should, where practicable, be no larger than 8cm x 8cm.
Colour :
If the applicant is claiming a combination of colours, as applied to the goods or their packaging or as used in relation to their services, as a trade mark, they should claim this by identifying the trade mark as a colour trade mark on the application form. The exact description of the colour combination as well as supplying a graphical representation of the trade mark, the applicant must also provide a concise and accurate description of the trade mark on the application. The description, which should state precisely what the mark consists of and how the description relates to the representation, will be entered as an endorsement of the registration and will thereby help define the scope of the registration.
Example : In case of combination of colours applied to a pharmaceutical capsule, it would be : "The trade mark consists of a maroon colour applied to one half of a capsule at one end, and a gold colour applied to the other half, as illustrated in the representation on the application"
Black and white :
Before filing a Logo Trademark or a Logo Composite Mark or Device mark, you have to decide whether you are claiming the colour of the trademark or not. If colour is not claimed, it is advisable to file a black-and-white drawing of the mark. Black and white will benefit the applicant on a longer run., e.g. changing the yellow colour from Flipkart trademark may not remove its overall impression. We would still recognize the 'f' on a shopping bag in any colour. For this reason, it is common for trademark applicants to register their trademark in black and white or grayscale and then use the required colour scheme to maintain consistency of the brand strategy.
Do note that even if a representation of logo is submitted in black & white, applicant can still be able to use any choice of its colour for the mark in general trade or marketing.
A registered trademark is valid for a period of ten years from the date of application. After completion of 10 years period, the registration can be renewed, for further period of ten years on the payment of renewal fees and filing renewal application.
| Applicant Type | Application to be in the name of | Who can file / sign necessary documents |
|---|---|---|
| Company ( Pvt Ltd or Public Ltd ) | Company | Authorised Signatory ( authorised through board resolution) |
| Limited Liability Partnership ( LLP) | LLP | Any Authorised Partner |
| Partnership Firm | Partnership Firm with names of all Partners | Any Authorised Partner |
| Proprietorship Firm | Proprietor in his /her name | Proprietor |
| Individual | Individual in his /her own name | Individual himself / herself |
| Joint Owners | Both the owners | Both the owners |
Any mark which is identical or similar to an existing registered trademark or any trademark for which an application has been made, cannot be registered. Also, marks that would likely cause deception or confusion or are offensive in any way may not be registered. Geographical names, common names, common trade words and common abbreviation, any mark which comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India cannot be registered as a trademark.
Section 9 of the Trademarks Act provides 'absolute grounds of refusal' and Section 11 provides 'relative grounds for refusal' of the trademark application in India.
Trademark application can be filed with the trademark registry in 1 -2 days from receiving complete information, documents and payments from Client. However, it may take 8 to 24 months for the registry to complete their formalities and provide registration for the trademark.
No. Trademark registered in India will be valid only in India.
Register-Karlo works with experienced attorneys in all the services related to Trademark Registration. As such Register-Karlo through its attorneys can assist you in filing Application, drafting response to Objections of Examiner, hearing before Examiner, Drafting and filing Reply to Objections, hearings, etc., which shall be separate activity.
If the trademark examiner sends a hearing notice to the applicant and if there is no response to the hearing notice within 30 days of receipt, then the application is automatically refused. In such a case, a new application needs to be filed.
