Trademark Filing Fee

What is a trademark?

A trademark can be any word, phrase, symbol, design, or combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors.

The word “trademark” can refer to both trademarks and service marks. A trademark is used for goods, while a service mark is used for services.

A trademark:

· Identifies the source of your goods or services.

· Provides legal protection for your brand.

· Helps you guard against counterfeiting and fraud.

A common misconception is that having a trademark means you legally own a particular word or phrase and can prevent others from using it. However, you don’t have rights to the word or phrase in general, only to how that word or phrase is used with your specific goods or services.

For example, let's say you use a logo as a trademark for your small woodworking business to identify and distinguish your goods or services from others in the woodworking field. This doesn't mean you can stop others from using a similar logo for non-woodworking related goods or services.

Another common misconception is believing that choosing a trademark that merely describes your goods or services is effective. Creative and unique trademarks are more effective and easier to protect.

Owning a trademark vs. having a registered trademark

You become a trademark owner as soon as you start using your trademark with your goods or services. You establish rights in your trademark by using it, but those rights are limited, and they only apply to the geographic area in which you’re providing your goods or services. If you want stronger, nationwide rights, you’ll need to apply to register your trademark with us.

You’re not required to register your trademark. However, a registered trademark provides broader rights and protections than an unregistered one.

For example, you use a logo as a trademark for the handmade jewelry you sell at a local farmer’s market. As your business grows and you expand online, you might want more protection for your trademark and decide to apply for federal registration. Registering your trademark with us means that you create nationwide rights in your trademark.

Using the trademark symbols TM, SM, and ®

Every time you use your trademark, you can use a symbol with it. The symbol lets consumers and competitors know you’re claiming the trademark as yours. You can use “TM” for goods or “SM” for services even if you haven’t filed an application to register your trademark.

Once you register your trademark with us, use an ® with the trademark. You may use the registration symbol anywhere around the trademark, although most trademark owners use the symbol in a superscript or subscript manner to the right of the trademark. You may only use the registration symbol with the trademark for the goods or services listed in the federal trademark registration.

Understanding Trademark Applications in India

Section 18 of the Trademark Act, 1999 provides for application for registration of trademarks in India and enunciates that for registration of a trademark, an application is to be made to the Registrar and a single application can be made for registration of a trademark for different classes of goods and services by paying prescribed fee for each such class of goods and services.

Trademark applications in India can be filed under the following categories –

• Ordinary Trademark Application

• Multiclass Trademark Application

• Convention/Priority Trademark Application (claiming priority from a convention country)

Ordinary Trademark Application:

An ordinary trademark application refers to an application filed for a single class of goods or services. An ordinary application can be made in FORM TM-A along with the prescribed fee as mentioned in the Trademark Rules, 2017.

Multi-class Trademark Application:

A multiclass trademark application refers to an application filed for more than one classes of goods or services. A multiclass trademark application can be made in FORM TM-A which provides for filing of single application for different classes of goods or services (other than a certification or a collective trademark).

Multi-class trademark application consisting of more than one class of goods / services in one application can be filed in India. As per Section 18 (2) a single application may be made for registration of a trade mark for different classes of goods and services and fee payable therefor shall be in respect of each such class of goods or services.

Convention/Priority Trademark Application:

A Convention Trademark Application refers to an application for registration of a trademark claiming priority from a convention country. Section 154 of the Trademark Act embodies special provisions relating to applications for registration from citizens of convention countries. According to the said statutory provision – where a person has made an application for registration of a trademark in a convention country and thereafter, makes an application for registration of the said trademark in India within six months from the date of application made in the convention country, then the mark if registered shall be registered as of the date on which the application was made in the convention country.

A convention trademark application can be made for a single class of goods or services or for multiple classes of goods or services on FORM TM – A.

Apart from the aforesaid categories of trademark applications in India, the Indian Trademark Law also provides for registration of series trademark, collective trademarks and certification trademarks.

Trademark Registration in India

An application for trademark registration or brand registration shall proceed to registration where no notice of opposition is filed against the mark or where the opposition was filed and subsequently decided in favor of the applicant. The trademark or brand is then registered for a period of 10 years from the date of filing of the application and the registration certificate is issued.

Further, Does the Indian trademark law bestow protection to un- registered trademarks? What is the protection provided to an un-registered trademark in India?

If your trademark is not registered in India, then an action for passing off can be brought against a third party for misuse of an unregistered trademark.

As per Section 27 (2) of the Trade Marks Act, 1999 nothing in the Act shall be deemed to affect rights of action against any person for passing of goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.

Advantages of a registered trademark as compared to unregistered trademark in India

The following are the benefits or advantages of a registered trademark over an unregistered trademark in India-

• Only a registered proprietor has the legal right to use the ┬« symbol on its Trademark, which forms the prestige of the brand.

• The proprietor of a registered trademark can use the symbol ® in India in respect of those goods or services for which the mark has been registered. Using the symbol ® unless the mark has been registered in India is unlawful. Using symbol TM with trademark simply means that one claims to be the proprietor of the trademark through mark may not be registered.

• Statutory right over the trademark.

• Exclusive right to lease, license or assignment of the trademark.

• Suit for infringement can be filed only by a registered proprietor. Unregistered proprietor can file passing off suit only against an infringer.

• A registered trademark proprietor can also file recordal of license of his trademark with the Trade Marks Registry.

• Right to seek civil, criminal and administrative remedies.

• Right to seek both civil and criminal penalties against counterfeiters.

• Constructive notice of ownership of the Trademark.

Trademark Registration India

After filing trademark application in the prescribed form and payment of relevant fees, the mark will be examined, published and eventually proceed to registration, in case no opposition proceedings against the said trademark has been initiated or where an opposition against the said trademark was filed but was decided in favor of the applicant. Thereafter the trademark will be registered for a period of 10 years from the date of filing of the application in India and the certificate of registration will be issued.

Pursuant to brand name registration the insignia ® can be used along with the registered trademark. The Indian Trademark Act also provides that if a registered trademark is not used for a continuous period of five years and three months from the date of registration, then the same becomes vulnerable to cancellation action on grounds of non use.

Period for registration of a trademark

Section 23 of the Trademark Act, which provides for registration of a mark was amended in the year 2010. Pursuant to the amendment, a clause was added in the provision which provides that once an application has been accepted and not opposed or if opposed and decided in favor of the applicant, then the Registrar shall, unless the Central Government otherwise directs, register the trademark within eighteen months from the date of filing the Application.

Once the Trademark is registered, the Registration Certificate is immediately issued by the Registry upon change of status of the application on Registry’s website.

Trademark designation in India – When can the TM and ™ insignia / symbols be used?

A trademark can be designated by the following symbols:

An unregistered trademark in India can be depicted by the symbol TM or ™

The proprietor of a registered trademark can use the symbol ┬« in India in respect of those goods / services for which the mark has been registered. Using the symbol ┬« unless the mark has been registered in India is unlawful. Using symbol TM or ™ with trademark simply means that one claims to be the proprietor of the trademark. There is no prohibition on the use of the symbol TM or ™ in India.

The aforementioned symbols can be placed at any place in the trademark so long as it depicts true and correct registration of the trademark.

1. What are the qualities of a good trademark or a brand name in India? –

A good trademark in India should possess the following qualities-

• It should be easy to pronounce, spell and remember.

• It should not be generic or descriptive or common in respect of its goods or services.

• It should be distinctive and should not have deceptive similarity.

• It should not be copied / identical to any other existing trademark.

• It should not be similar to any other existing trademark.

• It should not be deceptively or confusingly to any other existing trademark.

• Laudatory word or words such as best, perfect etc.to be avoided.

• It should not be obscene, derogatory or hurt religious sentiments.

• The mark should be a coined word

• It should not be prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

If the mark is in any language other than English or Hindi, then the same should be filed with the appropriate translation and transliteration.

2. Who can file a trademark in India?

Any person or an entity which claims to be proprietor of a trademark can file a trademark application in respect of desired specification of goods or services. A mark filed for service is also referred to as a service mark i.e. a service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.

A trademark application can also be filed in India through a trademark agent. A trademark agent is an individual or lawyer or firm registered with the Indian Trade Marks Registry. Such Agents can file a trademark application on behalf of the applicant or proprietor of a brand.

Whether foreign proprietors or applicants apply for registration of trademark in India?

Yes, foreign proprietors or applicants can apply for registration of trademark in India. The Indian trademark Law is TRIPS obedient and provides for protection of well-known trademarks and recognizes trans-border reputation.

In order to file an application in India in the name of a foreign entity who does not have a principal place of business in India, an application can be filed through an Indian Trademark agent / attorney. In such case the jurisdiction of a trademark application is automatically selected from the address of the agent.

What type of mark can be filed or registered as a trademark in India?

Under the Indian Trademarks Act,1999 the following types or trademarks can be field or registered in India:

• Word Marks (including Invented or Coined Words)

• Letters

• Slogans

• Signature

• Numerals

• Devices

• Combination of colors

• Shape of goods

• Sound Marks

• 3D marks

3.Trademark Search and selection of a distinctive mark :

Prior to filing an application, it is very necessary to select a good trademark i.e. a mark which would not attract objections in future. Preliminary Trademark Search will determine similar or deceptively similar marks already in the Trademark Register. Additionally, while selecting a trademark it must be taken into consideration that the mark does not:

• Deceive the public or cause confusion;

• Hurt the religious susceptibilities of any class or section of the citizens of India;

• Comprise of any scandalous or obscene matter;

• Attract objections under the Emblems and Names (Prevention of Improper Use) Act, 1950;

• Have any negative connotation in India; If the proposed trademark is a foreign word, then it must be translated into English to ascertain its distinctiveness i.e. its translation in English shall not render a descriptive meaning

4. Jurisdiction for filing application

While applying for the Trademark, a proprietor has to file the mark in the appropriate Registry depending on the jurisdiction. In case of Indian Applicants, the appropriate office will be the place under whose jurisdiction the Applicant’s principal place of business falls. In case of Foreign Applicant’s appropriate office will be the place within whose jurisdiction the Applicant’s agent/attorney is based.

Can trademark application filed in one Trademark Office in India be transferred to another?

No, the jurisdiction of a trademark application in India is not transferrable. Once an application is filed with the Indian Trade Marks Registry, the jurisdiction as allotted as per the principal place of business of the applicant / agent would remain the jurisdiction for the lifetime of a trademark application.

5. Particulars to be mentioned while filing an application

• Name, address and nationality of the proprietor;

• Party Type i.e. proprietorship, partnership, individual, HUF, body incorporated;

• Trademark to be applied for i.e. wordmark, device mark, label, composite mark etc.

• Language of the mark;

• Translation or Transliteration of the trademark (if any);

• Class of goods or services in respect of which the trademark is to be filed;

• Specification of goods or services in respect of which the trademark is to be filed;

• User detail of the trademark i.e. Proposed to be used or used since date;

• State of Jurisdiction of the trademark/ appropriate office;

• Address of service details;

• Condition or Disclaimer with the mark (if any);

• Associated trademark (if any);

• In case the application is a priority/ conventional application then priority details of the trademark;

6. Documents to be filed

• Power of Attorney – Power of Attorney is required to be submitted at the time of e-filing of the application.

• In case of Priority Application – certified copy of the priority application as filed in the convention country.

• If use is to be claimed – Affidavit of use is required to be filed at the time of e-filing the application

7. Use of Trademark before filing an application for registration

If use of a mark is to be claimed, a statement of use in the form of an affidavit is required to be filed at the time of e-filing a trademark in India along with documentary evidence in support of such use.

As per the Rule 25 of the Trade Marks Rules 2017 in case, the use of the trademark is claimed prior to the date of application, the applicant shall file an affidavit testifying to such use along with supporting documents.

Is it mandatory or compulsory to use the trademark before filing a trademark application in India?

No, it is not mandatory or compulsory to use a trademark before filing an application for registration of the trademark in India.

It can be filed at any point in time i.e. before commercial use of the trademark as well as after use of the mark the trademark. If the application is being filed after use, then the date of first commercial use of the mark can be claimed in the application at the time of filing

Comprehensive e-filing of Trademark:

The Indian Trademark Registry has introduced the service of comprehensive e-filing of trademarks, which enable online filing of trademarks and facilitates the entry of aforesaid particulars along with the uploading of requisite documents online. The portal of comprehensive e-filing of trademarks can be accessed at http://ipindiaonline.gov.in/trademarkefiling/user/frmlogin.aspx .

With the objective to encourage online filing of Trademarks, a 10% discount on official fees has been provided for to applicants who choose to file the applications or forms online. This step is also a discernable move by the Government to ensure that it fulfills the promise of the Digital India Campaign and Government services are made less cumbersome for citizens by making available to citizens an improved online infrastructure and thereby making the country digitally empowered in the field of technology.

Who can apply for a Trademark Registration?

An application for registration of a trademark in India may be filed by any person claiming to be the proprietor or owner of a mark for those goods and services for which he is using or intends to use the mark. Such persons includes:-

• Limited or Private Limited Company

• Partnership Firms

• Sole Proprietor

• Individual

• Joint Individuals or Companies

• Trust

• Other Legal Entities

At the time of filing the application the proprietor must either be using the mark or have an intention to use the mark in the future.

It should be filed at the appropriate trademark office under whose jurisdiction the principal place of the business of the applicant in India falls. In case, the applicant is doing business outside India, then the application can be filed at the trademark office under whose jurisdiction the office of the agent is situated.

After filing the application, the same is then examined by the Registry, as to its inherent registrability and/or any similarity with existing marks. If any objection is raised, an official examination report is issued by Registry. To overcome the objection, a response to examination report along with the supporting documents showing the marks as used is required to be filed within one month from the receipt of the examination report.

If, following examination, the trademark application is considered allowable, acceptance order is issued, and thereafter the trademark is published in the trademarks Journal. If there are no oppositions filed within 4 months from the date of advertisement in the Trade Marks Journal, then the trademark registration certificate is issued.

It takes around 12-15 months to obtain registration in case no opposition is filed by a third party.

Duration of Registration

Once the trademark is registered, it is valid for a period of 10 years from the date of application. The registration can then be renewed for a further period of ten years from the date of expiration of registration or of the last renewal of the registration.

Trademark Registration duration in India

Once the trademark is registered in India, it is valid for a period of 10 years from the date of application. The registration can then be renewed for a further period of ten years from the date of expiration of registration or of the last renewal of the registration.

Correction of clerical error in the certificate of registration

The Act also makes provision for amendment or correction of any clerical error in the certificate of registration and states that the Registrar may amend the register or certificate of registration for the purpose of correcting a clerical error or an obvious mistake.

Cost of getting a Duplicate Registration Certificate in India

The Official Fees for getting a Duplicate Registration Certificate in India is as follows:

• For physically filing (non-online route)- INR 1,000

• For online filing or e-filing-INR 900

Trademark Refusal Grounds in India

To get statutory protection under the Trade Marks Act, 1999 it is mandatory to register a trademark. Once an application for registration for trademark is filed, the next step is examination of the trademark application by the Indian Trademark Registry. The Trademark Registry while examining the mark considers various Relative and Absolute Grounds of Refusal.

Therefore, it becomes imperative to know and understand the various grounds for refusal of trademark application in India, as it would be helpful in preventing or overcoming trademark refusal in India.

Grounds for Trademark Refusal in India

Trademark Application in India can be refused under two grounds:

a) Absolute grounds: Section 9 of the Trademark Act, 1999 lists down the absolute grounds for refusal of trademark application. The absolute grounds for refusal of trademark application in India inter alia includes that the trademark is devoid of any distinctive character, trademark consists of marks which designate the kind, quality, quantity values, geographical origins or time or production of the goods or services or the trademark is such that it causes confusion or deceives public etc.

b) Relative grounds: Section 11 provides relative grounds for refusal of a trademark application in India. The Relative grounds for refusal of trademark application in India inter alia includes that the trademark is similar or deceptively similar to an earlier trademark, similarity to an earlier trademark and the identity or similarity of the goods and services etc.

It is pertinent to mention here that while refusing a trademark application the Registrar is duty bound to record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision, as clearly stated in Section 18(5) of the Trade Marks Act, 1999. The same was also reinstated by the Delhi High Court in an order dated October 16, 2019 in Intellectual Property Attorneys Association v. The Controller General of Patents, Designs & Trade Marks & Anr, wherein it was held that ‘the Registrar of Trade Marks is duty bound to send the copy of the order passed under Section 18(5) of the Trade Marks Act containing the grounds for refusal/conditional acceptance and material used by him in arriving at his decision to the applicant. Rule 36 of the Trade Marks Rules is arbitrary, unreasonable and inconsistent with the mandatory provision of the statute insofar as it empowers the Registry to communicate the decision without the grounds for refusal/conditional acceptance. In that view of the matter, Section 18(5) of the Trade Marks Act shall prevail over Rule 36 of the Trade Marks Rules.’

Overcoming Trademark Refusal in India

An applicant may file a review petition before the Registrar to review its decision within 30 days of such refusal notice. Rule 119 of the Trade Marks Rules 2017 state thats ‘An application to the Registrar for the review of his decision under sub-section (c) of section 127 shall be made in Form TM-M within one month from the date of such decision or within such further period not exceeding one month thereafter as the Registrar may on request allow, and shall be accompanied by a statement setting forth the grounds on which the review is sought.’

Section 127 in The Trade Marks Act, 1999 states the Powers of Registrar and sub clause (c) of the Section states that ‘the Registrar may, on an application made in the prescribed manner, review his own decision’.

Further, on dismissal of review petition, the applicant also has an option of filing an appeal before the Intellectual Property Appellate Board (IPAB) within 3 months of the dismissal.

Trademark Filing Fee in India

Trademark Registration is available for Goods and Services. Under Trademark Registration process, goods and services are classified into 45 Classes of Trademark.

Regular Fee for application of a trademark by an individual is Rs.4500.00. Regular Fee for Company / LLP / Partnership / other applicants are Rs.9000.00.

If the Company / LLP / Partnership is a Start-up / Small Enterprise, then the Filing fee will be Rs.4500.00 only.

In case of application for multiple classes, separate application with relevant fee is required to be paid.

Trademark - Fee Structure

The filing Fee for Trademark Application and related process are as follows:

Trademark Fees

Trademark applications can also be filled online. The link below from the official website of Department of Promotion of Industry and Internal trade has pdf formats of the forms which can be used to fill the trademark application. https://ipindia.gov.in/form-and-fees-tm.htm.

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