Definition of Trademark Under the Trademark Act, 1999

The term Trademark is defined in section 2(zb) of the Trademarks Act, 1999, which mean a mark capable of graphical representation that can distinguish goods or services of one person from those of others. It is further provided that a Trademark may include the shape of goods, their packaging and a combination of colours.

Now, let’s understand the meaning of the term “Mark” Section 2(m) of the Act defines a Mark that includes following to be a Mark to include following. In other words following category of mark qualifies to be a Trademark if it satisfies the conditions prescribed in the definition of the Trademark stated above.

Types of Trademark Or Category In India

We have understood the meaning of the term Mark and Trademark in the above sections. Now let’s understand various Trademark categories that can be registered under the Trademarks Act, 1999. From the practical point of view, while filing the trademark application in TM-A (Earlier the name of the form was TM-1), the prescribed form for filing a trademark application in India, the applicant has to choose, category of Trademark, which can be only from below options. We would be described with illustration only about the below significant types of the Trademark.

1. Name

a. Product Name: You can register a particular product’s name as a trademark. Apple’s iPod is a product name trademark.

b. Business Name: Registering a company name as a trademark is the most common route businesses take. Ex: Bajaj.

c. Person’s Name/Surname: If your name plays an important part in generating revenue, then you can even trademark your name! Ex: Shah Rukh Khan has trademarked his name.

d. Abbreviations: Abbreviations of a company or brand name can also be a trademark. Ex: BMW.

2. Logo/Symbol

It is highly recommended to trademark a logo because it visually represents your brand. Your customers can recollect a logo faster than a name. A great example of a brand registration in India is the ‘swoosh’ of Nike.

3. Tagline

If you have a tagline for your brand, you can go ahead and trademark that as well. A tagline tells your customers what you stand for as a business. For example, KFC ‘It’s finger lickin’ good’.

4. Other Options

a. Colour Mark: You can register a trademark online for a colour or a combination of colours. (Ex: Cadbury has trademarked the colour royal blue)

b. Sound Mark: Musical notes or sounds can be trademarked via online trademark registration if we can prove that it’s distinctive. Nokia has trademarked its tune.

c. Scent Mark: Even scents can be trademarked in online trademark registration.

1. STEP 1 – Filing of Trademark Application

   The trademark application is submitted within 24 hours of filing it with appropriate documentation and payment. The trademark filing process is completely online, and an instant acknowledgement is issued immediately after the submission of the application. After the issuance of the acknowledgement receipt, the applicant may begin using TM over the trademark.

   STEP 2 – Processing of Application at Trademark Office

   After the application is submitted, it is thoroughly examined for any flaws. If any mistakes are found after the evaluation, the TM office either flags the application for further examination or declares that the application filing has failed. The errors must be corrected in either case.

   STEP 3 – Examination of Trademark Application

   A trademark examiner looks over the trademark application to determine whether or not the trademark is qualified for registration. After reviewing the trademark application, the examiner publishes an examination report outlining his findings.

   STEP 4 – Reply to Examiner Report

   The trademark applicant must respond to the examination report within 30 days of its receipt. The response to the examiner’s report is a critical drafting that can either help or hinder the trademark application. We strongly encourage applicants to assist us by providing as much information and documentation as possible, so that we can prepare a detailed and accurate response to the Examination Report.

   STEP 5 – Show Cause Hearing

   After receiving a written response to the examination report, the examiner either gets satisfied with the reply or calls the applicant for a show cause hearing. It is the result of the hearing that further decides the fate of the Trademark application.

   STEP 6 – Publication of Trademark

   The trademark application is published in the trademark journal once the examiner is satisfied that the trademark is valid. This either happens at the examination stage or at the show cause hearing based on the status of the application. Third parties may object to the trademark registration, but, if no objections are received within 90 days from the date of hearing, the process of registration shall move to the next step.

   STEP 7 – Issuance of Trademark Registration Certificate

   The next step is the registration of the trademark by the registrar. After the registrar successfully registers the trademark, he issues a Certificate of Trademark Registration, valid for ten years from the date of issuance. The trademarks must be renewed after every ten years to extend its validity period.

Documents Required

Initially, you have to provide us with the following details:

Applicant’s name
Business type
Business objectives
Brand/logo/slogan name
Registration address

The documents required are:

Signed Form-48
Identification proof of the signatory
Address proof of the signatory
Business proof (depends on the type of business)
Udyog Aadhar/MSME registration certificate (optional).