Trademarks Lawyers India | De Penning & De Penning

What is a trademark?

A trademark is a word, symbol, phrase, design, or any combination of these, which identifies and distinguishes the source or origin of a product or service. Other forms of identifying features which have come to be recognised as trademarks include business names, invented words, slogans, logos, sound marks, 3D marks, colour combinations, smells, textures, packaging and shapes.
A trademark distinguishes your goods or services from those offered by others. Many marks can be trademarked, including business names, invented words, slogans, logos, sound marks, 3D marks, and symbols. Without a trademark, your brand, reputation, and business can become vulnerable. A strong brand ensures that innovators, inventors, individuals and companies can confidently commercialize their products and services. Trademarks are used to drive innovation and economic growth, and we have the expertise in this field to ensure you succeed.
For legal advice that protects your business, get in touch today.

Why obtain a trademark?

There are various reasons to acquire a trademark. For example, a trademark:

evidences ownership of your goods or services

bolsters your market position, demonstrating your credibility and ensuring you stand out from the competition

protects your commercial interests by giving you legal recourse against infringement, deterring others from passing off their goods or services as yours

trademarks do not have a specific period of protection; they can be renewed indefinitely every 10 years.

Can I apply for a trademark?

Individuals, businesses, or not-for-profit organisations can apply for a trademark. Examples of parties eligible to apply for a trademark include:

individuals

companies and company owners

partnership firms

proprietorship firms

LLPs

societies or trusts

However, there are different requirements for each category of applicants.
An Individual can apply for a trademark, the application must specify the individual's full name.If there is more than one applicant (joint owners), the application must have the full name of all joint owners.
Where the applicant is a proprietorship firm, the full name of the Proprietor must be mentioned in the application. A business name or proprietorship name can be included in addition to the individual's name.
Where the applicant is a partnership firm, the application must include the names of all the partners. Where a partnership firm includes a minor in the partnership, the name of the minor's guardian must also be included in the application.
Where the applicant is a Limited Liability Partnership, the application must be made in the name of the LLP. If the intention is that the trademark must belong to the LLP, the application cannot be made in the Partner's name, as the LLP has its own distinct legal identity.
Where the applicant is a company incorporated in India (private limited company or one, person company or limited company), the application must be made in the company name. The Director or any authorised officer can sign the application.
Where the applicant is a foreign incorporated entity, the application must be made in its corporate name, as registered in the foreign country. The application must also provide information about the nature of registration, the country of incorporation and the law under which the company is registered. Where the foreign company has no principal place of business in India, the applicant's address for service in India must also be specified.
Where an application is made on behalf of a Trust or Society, the application should specify the name of the Managing Trustee or Chairman or Secretary representing the entity.

What can be trademarked?

De Penning and De Penning make the trademark application process straightforward.
We will scrutinise a trademark on its suitability for protection and enforcement.

Word marks

● Words, combination of letters and/or numerals (not their presentation)● Possible to trademark generic words if their use is arbitrary● Consider the connotations of your trademark in different regions

Figurative marks

● Non-standard stylisation, layout or characters● Use of graphics or colour● Changes to design after Registration of a trademark will not be protected

Collective marks

● Trademarked by collective organisations● The collective holds the rights to the mark● Members can use the mark to distinguish their goods and services

Well-known marks

● Recognised by the public in association with particular goods and services● The geographical reach and length of time for which the mark has been promoted will be examined● Prevents deceptively similar marks being adopted for goods and services in other fields

What cannot be trademarked?

A trademark may be refused if it:

1. does not possess any distinctive character2. exclusively alludes to the character, quality, quantity, intended purpose, values or geographical origin of goods or services3. is customary in the current language or the established practices of the tradea. However, where an application falls under 2,3 or 4, it may still be registered as a trademark if the trademark has acquired a distinctive character due to its use or is a well-known trademark before the application is made.4. is identical or similar to an existing mark5. is likely to deceive or cause confusion to the publica. However, where the application falls under 4 or 5 above, and there is an honest concurrent use of the trademark, the Registrar may allow trademark registration.6. likely to hurt the religious sentiments of any class or section of citizens7. contains scandalous or obscene matter8. is unlawful (e.g. under the Emblems and Names (Prevention of Improper Use) Act, 1950, the law of passing off or copyright law)9. is for the shape of goods where the shape a. is the natural shape of the product b. is mandatory to obtain a technical result c. gives substantial value to the goods10. connotes personal name, surname or common abbreviation11. relates to a single chemical element or single chemical compound in relation to the preparation of a chemical substance preparation

Even when an applicant's proposed trademark satisfies the conditions under the act, it is open to the Registrar to refuse the application if he sees fit.[1]

[1] Geep Flashlight Industries Ltd. vs. Registrar of Trade Mark, AIR 1972 Delhi 179

01.

Trademark search
Confirm that no similar trademarks exist on the Trade Marks Register. Infringing on another party's intellectual property could provoke costly litigation.

02.

Filing an application
Apply at the office of the Trade Marks Registry, stating your trade style, the goods or services, and the date of commencement of use (if any).
Where the trademark is a logo or label, we need one representation in JPEG format, with good resolution, sent by mail.
Where to file an application?
A trademark application must be filed at the appropriate registry according to the jurisdiction.
Where the applicant is an Indian citizen, or the entity is incorporated in India, the application must be made to the registry under whose jurisdiction their principal place of business falls.
Where the applicant is a foreign entity, the application must be made to the registry under whose jurisdiction their agent/trademark attorney is located.
With headquarters in Chennai, De Penning and De Penning have branches in Kolkata, Mumbai and Delhi and have recently expanded into Bengaluru to serve a growing number of clients with jurisdiction-based filing requirements. The firm also has substantial experience working with international clients, especially in the US, UK, Japan, Switzerland, France, Sweden, Italy, Denmark, Europe, China, Korea and Australia.

03.

Examination
The examination can take 6 to 18 months. The examiner may accept your application absolutely, accept it conditionally or object to it.
If your trademark is accepted conditionally or objected to, you will be given a month to respond to the examiner's objections and fulfil any conditions for acceptance. Should your amended application still not be accepted, you may request a hearing.
After filing the application and allocation of the official application number, the following option is available. If you wish to expedite the prosecution of a trademark application, we have the option of filing an official request at the Trade Marks Registry.
As per the relevant provision of the Trade Marks Act, 1999 and the Trade Marks Rules, 2017, the Registrar will issue the Examination report on an expedited basis within three months from the date of filing of such request. Also, the entire processing of the application, including the opposition, if any, will be expedited.