Our knowledge and presence in this field has its roots in intellectual property protection stretching back over 165 years. De Penning and De Penning can advise on how to use trademarks to protect and promote your brand worldwide. Contact us today for expert legal assistance in obtaining trademarks in India and beyond.
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.