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TRADEMARKS
 
OUR SUBSTANCE

Our attorneys are seasoned intellectual property professionals:

  • Our trademark and copyright attorneys and Advocates are dedicated full-time specialists. Our attorneys and advocates have extensive knowledge gained from judicial and executive positions in the Indian Trademark Office, corporate legal department management positions and private practice.
  • Our trial attorneys are experienced in litigating the full spectrum of intellectual property cases. They are equally adept in using alternative dispute resolution procedures to obtain favorable and economical results for our clients.
  • Our attorneys have international and business experience in the strategic management of intellectual property portfolios, the acquisition and transfer of rights and the conduct of due diligence reviews in connection with large and small transactions.
WHAT IS TRADE MARK

The Trademark is a name mark, numeral, letter or a word or combination thereof either in the form of a symbol or with a word or combination thereof which is being used in the course of trade to enable the purchasing public to distinguish the product or the property mark or the goods from the similar goods of other manufacturers.

In relation to other provisions of this act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in course of a trade between the goods and some person having the right, either as a proprietor or as a registered user, to use the mark with or without any indication of identity of that person and include certification Trademark or collective mark.

 
LEGISLATION

The Trademark system in India is governed by the Trade Marks Act, 1999 and the Trade Marks Rules, 2002 effective from 26.02.2002.

 
WHO MAY APPLY

Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark.

 
THE SALIENT FEATURES OF THE PREVAILING ACT
  • The registration of Service Marks is introduced.
  • Creation of Appellate Board to hear appeals from the decisions of the Registrar;
  • The provision of protection of well known Trade Marks and tests for determination of such marks incorporated;
  • Single application for registration of a mark in different classes;
  • The shape of goods, packaging and combination of colours are included in the definition of mark and Trade Mark;
  • The term for Trade Mark registration is 10 years and renewable after every 10 years;
  • Convention of priority is available;
  • Registration of collective marks;
  • User evidence required for registration of Trade Mark not distinctive, e.g., Surname, three letter marks, etc.;
  • Descriptive and laudatory words can not be registered;
  • Trade Mark law does not recognize licensing under common law approved by the Courts although licensing;
  • First to use of the mark prevails over first to register the mark;
  • Trans border reputation is recognized.
  • Due to non-use of Trademark for continuous period of 5 years 1 month registration is liable to be cancelled.
  • In the matter of trade names / services passing off action also applies against infringement both civil and criminal action available.
  • International Classification of classes of goods and services are being followed.
CLASSIFICATION OF GOODS AND SERVICES - NAME OF THE CLASSES

(Part of an article or apparatus are, in general, classified with the actual article or apparatus, except where such parts constitute article included in other classes)

GOODS:
  1. Chemical used in industry, science, Photography, agriculture, horticulture and forestry, unprocessed artificial resins, unprocessed plastics, manure, fire extinguishing compositions; tempering and soldering preparations ; chemical substances for preserving foodstuffs; tanning substances; adhesive used in industry.
  2. Paints; varnishes; lacquers; preservatives against rust and against deterioration of wood; colorants mordents; raw natural resins ; metal in foil and power from for painters; decorators; printers and artists.
  3. Bleaching preparation and other substances for laundry use ; cleaning polishing ; scouring and abrasive preparations; soap; perfumery; essential oils; cosmetics; hair lotions;  dentifrices
  4. Industrial oils and greases; lubricants; dust absorbing, wetting and binding composition; fuels (including motor sprit) and illuminants; candle, wicks.
  5. Pharmaceutical, veterinary  and sanitary preparations; dietetic substances adapted for medical use food for babies; plasters, materials for dressings ; materials for stopping teeth, dental wax ; disinfections; preparation for destroying vermin ; fungicides, herbicides.
  6. Common metal and their alloys ; metal building materials transportable buildings of metal; materials of metal for railway tracks; non-electric cable and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal non included in other classes; ores.
  7. Machines and machines tools; motors and engines ( except for land vehicles) Machines coupling and transmission components (except for land vehicles); agricultural implements other then hand-operated; incubators for eggs.
  8. Hand tools and implements (hand-operated); cutlery; side arms; razors.
  9. Scientific, nautical, surveying, electric photographic, cinema autographic, optical weighing, measuring, signaling, checking  ( supervision), life saving and teaching  apparatus and instruments , apparatus for recording ,  transmission or  reproduction of sound or images ;  magnetic data carriers , recording discs; automatic vending machines and mechanisms for coin-operated apparatus ; cash registers, calculating  machines , data-processing equipments and computers ; fire extinguishing apparatus.
  10.  Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic article; suture materials.
  11. Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying ventilating, water supply and sanitary purposes.
  12. Vehicles; apparatus for locomotion by land, air or water.
  13. Fire arms; ammunition and projectiles; explosives; fire works.
  14.  Precious metals and their alloys and goods in precious metals or coated there with, not included in their classes; jewellery, precious stones; horological and other chronometric instruments.
  15.  Musical instruments.
  16.  Paper, cardboards and good made form these materials, not included in other classes; printed matter, bookbinding material; photographs; stationery, adhesives for stationery or household purposes, artists materials ( except apparatus ); plastic materials for packaging ( not included in other classes) ; playing cards, printers, type; printing blocks.
  17. Rubber, gutta percha, gum, asbestos, mica and goods made from these materials and not included in  other classes; plastics in extruded form for use in manufacture, packing, stopping and insulating materials, flexible pipes, not of metals.
  18. Leather and imitations  of leather, and goods made of these materials and not included in other classes ; animal skins, hides trunks and traveling  bags; umbrellas , parasols and walking sticks whips , harness and saddlery.
  19. Building materials, (non-metallic), non-metallic rigid pipes for building, asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
  20. Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
  21. Household or kitchen utensils and containers(not of precious metal or coated therewith); combs and sponges; brushes ( except paints brushes); brush making materials; articles for cleaning purposes; steel wool, unworked or semi_worked glass (except glass used in building); glassware porcelain and earthenware not included in other classes.
  22. Ropes, string, nets, tents, awnings tarpaulins, sails, sacks and bags (not included in other classes) padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.
  23. Yarns and threads, for textile use.
  24. Textiles and textile goods, not included in other classes; bed and table covers.
  25. Clothing, footwear, headgear.
  26. Lace and embroidery, braid; buttons, hooks and eyes, pins and needles; artificial flowers.
  27. Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall-hangings (non-textile).
  28. Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
  29. Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats.
  30. Coffee, tea, cocoa , sugar, rice , tapioca, sago, artificial coffee; flour and preparations made form cereals, bread, pastry and confectionery, ices;  honey, treacle; yeast, baking powder; slat, mustard; vinegar, sauces, (condiments); spices; ice.
  31. Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetable; seeds, natural plants and flowers; foodstuffs for animals, malt.
  32.  Beers, mineral and aerated waters, and other non-alcoholic drinks; frui8t drinks and fruits juices; syrups and other preparations for making beverages.
  33. Alcoholic beverages (except beers).
  34. Tobacco, smokers’ articles, matches.
SERVICES:
  1.  Advertising, business management, business administration, office functions.
  2. Insurance, financial affairs; monetary affairs; real estate affairs.
  3. Building construction; repair; installation of services.
  4. Telecommunications.
  5. Transport; packaging and storage of goods; travel arrangement.
  6. Treatment of materials
  7. Education; providing of training, entertainment; sporting and cultural activities.
  8. Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
  9. Services for providing food and drink: temporary accommodation.
  10. Medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
  11. Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.
TYPES OF TRADE MARK APPLICATIONS
  1. Application for trade mark for specification of goods or services in one class
  2. Application for trade mark in different classes of goods or services
  3. Convention application for trade mark, claiming priority date on the basis of filing in the Conventional Countries.
  4. Application for collective trade mark
  5. Application for certification trade mark
  6. Divisional application for trade mark
  7. Application for series trade mark
RIGHTS CONFERRED BY REGISTRATION

As per the provision of the Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by the Act.

It is to be noted that no person shall be entitled to institute any proceeding to prevent, or recover damages for, the infringement of an unregistered trade mark.

 
DETAILS REQUIRED FOR FILING AN APPLICATION FOR REGISTRATION OF TRADEMARK
  1. Full name, address of profession or business of the applicant and his / her nationality.
  2. Clear reproduction of the Trade Mark and translation must be indicated, if Trademark is in a foreign language.
  3. Copies of logo or a label, 10 prints of the each mark is required.
  4. Detail of products by which will be protected the Trademark and / or the classes of the International protection Classifications for which is being applied.
  5. List of goods.
  6. Date of first use in India.
  7. Power of Attorney (can be filed later).
TIME PERIODS AND PROCEDURES

No period has been specified for the Examiner to take up examination after an application for registration of a trade mark has been filed.
The prescribed time for submitting response to the First Examination Report (FER) is generally one month from the date of generation of the First Examination Report (FER).

When an application for registration of a trade mark has been accepted whether absolutely or subject to conditions or limitations, the same is advertised in the official trade mark journal.

Any person may, within three months from the date of advertisement or re-advertisement of an application for registration of a trade mark, file a request for opposition to registration to the said mark.

When the application has not been opposed and time for notice of opposition has expired; or the application has been opposed and opposition has been decided in favour of the applicant, the mark is registered as of the date of making of the said application.

On the registration of a trade mark, the Registrar issues a certificate in the prescribed form of the registration thereof, sealed with the seal of the Trade Mark Registry.

 
RENEWAL FEE

To keep the trade mark in force, renewal fee is to be paid every 10th year. The first renewal fee is payable before the expiration of the 10th year from the date of filing the registration of trade mark. If the renewal fee is not paid within the prescribed time, the trade mark will cease to have effect.

 
RESTORATION

Application for restoration of a trademark that lapses due to non-payment of renewal fees must be made within 12 months of lapse (less surcharge if request is made within six months). The application is to be filed in the appropriate office according to the jurisdiction.

 
OUR SERVICES

We provide our consultation in:-

    • SEARCH
    • PREPARING DOCUMENTS FOR FILING TRADEMARK
    • TRADEMARK FILING AND PROSECUTION
    • RENEWALS
    • RESTORATION
    • OPPOSITION
    • RECTIFICATION
    • ASSIGNMENTS /REGISTERED USER
    • APPEALLATE BOARD PROCEEDINGS
    • LITIGATION
    • TRADEMARK INFORMATION /WATCH
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