On 6th march, 2017 Government of India has replaced Trademark Rules 2002 with an Introduction of Trademark Rules, 2017.New Rules that has simplified trademark filing process. There has been an increase in Trademark fee for corporate entities.
Application fee of new trademark registration has been increased or certification mark, collective mark or series of marks for goods and services has been increased to Rs. 9000 in the case of e-filing and Rs.10000 in case physical filing.
The reduced fee of Rs.4500 for e-filing and Rs.5000 for physical filing as prescribed fee in case of individual start-up and small enterprises
Small enterprise in Trademark Rules 2017
Mostly enterprises engaged in manufacture or production of goods. Investment where the plant and machinery are not specified for a medium enterprise.
There are some enterprises which are engaged in providing or rendering services, it is also an investment in equipment is not more than the limit specified for the medium enterprise under a certain clause of trademark Rule 2017.
Start-up as per Trademark Rule, 2017
Start-up is recognized as a competitive entity or authority under Start-up India Initiative. In a case of a foreign entity which fulfils the criteria for turnover and period of incorporation/registration as per start-up India initiative and submitting the declaration to that effect.
Expedited process for Trademark Registration
There has been the introduction of an expedition under Rule 34 by the Government. In that case, only e-filing expedited trademark processing is allowed. The Government fee for trademark processing is Rs.20000 for individuals, start-ups and small enterprises. In the case of all other entities, the fee for expedited trademark processing is Rs.40000.
Trademark fee for Opposition and Rectification
Fee of notice of opposition under Section 21(1),64,66 or 73 or application for rectification of register under section 47 to 57, 68,77 or application under rule 99,103, 140 the fee is application is Rs. 2700 for e-filing and Rs 3000 that is also for physical filing.
Trademark fee for Renewal
Trademark fee for renewal of an existing trademark registration is Rs.9000 for e-filing and Rs. 10000 in a case of physical filing.
Trademark fee for Restoration and Renewal
The application for renewal and restoration must file under section 25(3),25(4) for each class. In case such of application trademark, renewal and restoration would be Rs.18000 for e-filing and Rs.20000 in case of physical filing.
Trademark fee for Search Certificate
Trademark fee for issue of Search Certificate is Rs.9000 for e-filing and Rs.10000 in case of physical filing. The expedited issue of search certificate would Rs.30000 for e-filing.
Madrid system is the international registration of marks in India. It was established under the Madrid agreement in 1891 and its protocol in 1989.This system offers the trademark owner protection of trademark in several countries. It can be done by simply filing an application with regional or national trademark office.
Madrid system enables the registration of trademarks in multiple jurisdictions worldwide. This system has not only eased the trademark application procedure but also simplified its subsequent management. Trademark can be protected and applicants can designate it in India.
Problems solved by Madrid System
Protection of trademark needs to be registered in the country where the protection it is required. By this trademark granted by a particular country served to protect the interest of the proprietor only in that country. Filing of for trademark registration was required to protect in an individual country where such protection was sought. Chaos like multiplicity of applications and inconvenience to the potential applicant and also increased the costs.
Requirement for an International trademark.
Benefits of the Protocol
Filing international trademark in Madrid Protocol
Step 1: Basic application by applicant
Registration with the Indian Trademark or a pending application is the prerequisite for filing an application in India for Madrid Protocol. Trademark Office in India will then certify that the information in the international application. These are as the same as that in the basic application the date on which the international application was filed and forward the application to WIPO.
Step 2: Formal Examination for International registry.
A formal examination is conducted by WIPO to check if the application complies with the requirements of the Protocol and the other regulations. The same are notified to the applicant in case of any irregularities .The irregularities need to be remedied within three months failing which the application will be treated as abandoned.
When everything will be in order the application is recorded in the International register and published in WIPO Gazette. Certificate of International Registration will be sent to WIPO which will send and this will be notified in other trademark offices in the countries that the applicant has chosen to extend the protection of the mark. Trademark is still not been registered. In the substantial examination, the respective trademark will be checked in each country.
Step 3: Substantial examination by Contract parties
Substantial is the examination through which application passes at the trademark office of the contracting party same as passed directly. WIPO get notification of acceptance or refusal within the applicable time. The decision of the trademark office of the contracting party will then record the same in their records will notify. After acceptance of the application, a statement of the grant will be issued through which registration will be valid for a period of 10 years.
Disadvantages of the Protocol
Trademark is a form of Intellectual property. It is a design, sign, word or a logo that depicts the brand name. Trademark is a unique mark which shows the unique identity of a brand. It is an asset which makes the first impression on your audience. This can be located on a package, a label, or a voucher. Trademark can also be displayed on the building for the corporate identity.
Trademark is a mark of an idea which differentiates your brand from others. Trademark Registration is mandatory in India. In this selection of trademark is not enough but also the selection should be right since it is the one of most important thing in the brand building. Decision making in the selection of brand has a crucial role to play. This is because once you have chosen a particular mark it becomes hectic to change it. So, you should think many times before making a right decision in the selection of the right trademark.
What is Good Trademark?
Coin Words should be chosen which is not having any relation to the associated goods and services. For eg. Google, Yahoo, etc.
Unrelated word is mainly chosen to avoid objection. For eg. Apple, Asian paints do not have any relation with services and the product. Broader words will be considered under the scope of protection.
Words easy to speak, spell and remember are the good signs of the trademark. A trademark should easily be understood by the layman in the market or anywhere else.
Market surveyed words are most considered words for any type of trademark which helps to rapidly expand the business. Trademark registered under this are less objectionable.
There are some others features as well as which should be there in the trademark for eg. description in shorter form, legible, appealing to the eye, short, precise, etc.
Steps to Register Trademark
For more information click Trademark Registration Process in India
What is a Bad trademark?
Full Name and Surname –Trademark which having a full name or surname is considered to be a bad idea. A brand using person’s surname may result in dilution of the brand name which can cause confusion about the source or quality associated with the brand.
Laudatory word- It is not considered good practice to have a laudatory word ie. having the direct reference to the character of product or service.
Descriptive words – Most probably people make the common mistake by choosing a name related to the business or must describe the product or business. Basically, it is not considered under trademark registration in India. People try to opt for a descriptive brand name. Such brands are expressly prohibited under trademark laws of India. It is a word that clearly designates the place of origin of the goods or services.
What cannot be trademarked?
Trademark protection is a legal function to assure the protection of company's trademarks. The department assures its role when it is integrated into the legal function of an organization. Trademark department is required to be created in large enterprises will look after Trademark Management. Trademark has the principal duty to protect and administer the trademark of the company. ie. by registration under a law of a particular country. The list and classes of goods are covered.
In trademark protection distinctive logos, name and other marketing devices are protected. These are known as the strong and also intrinsically distinctive which are from time to time. Trademark are known to the public to the user. Trademark are considered weak when they merely describe some feature goods. Some features are unpredictable under trademark law. Certain goods available in the market are not original in this case protection is needed. Colour wrapping, phrase, and other symbols are under trademark protection.
How can trademark be protected in India?
Civil action-Competent court can be moved for grant of relief of injunction against infringement.
Criminal proceeding-Complaints can be filed against the person for infringement of fact of civil action.
Administrative remedies-Notice of opposition can be filed against the trademark.
Border Measures-Power is conferred on the central government for certain goods.
International Protection for Trademark
The application has to be filed in the relevant class if the mark falls under more than one class. There are three points:
Functions of Trademark Department
International Intellectual property law is a combination of multilateral and bilateral agreements. These laws are important for the protection of trademark, copyright, and patent. Since, past few years there has been a revolutionary appeal towards technology, domain name, databases, software, and traditional knowledge. Protecting intellectual property is an important task which aims to provide legal security. International laws have been spread in all over the world for the promotion of assets and IP rights. All over the world, each country is having its own legislations according to which different countries have different IPR protection.
IP law basically deals with the rules for the security of legal rights, inventions, designs, and artistic works. Intangible assets are under full control. Purposely this law gives an incentive to people to develop creative works that benefit society. The Law has given many protection measures by ensuring that they can profit from their works without fear of misappropriation by others.
Protection against infringement
Unauthorized use of any intellectual property is known as infringement. Owners should take some steps to protect against infringement. These steps are taken to put the world on notice that their rights exist. Notice helps to determine infringement by making visible to those who might inadvertently violate. Legal benefits are triggered which puts the owner in a position.
Patent numbers are assigned by the owners to protect their invention. Patent pending is a status which also provides the copyright before the patent has been awarded. Addition in government database takes place by placing the appropriate symbol.
What is WIPO?
World Intellectual Property Organization (WIPO) is an organization to protect and promote intellectual property throughout the world. United Nations is the parent organization of WIPO. The main responsibility of WIPO is to promote Intellectual property law and facilitate the transfer of technology. This is related to industrial property to the developing countries in order to accelerate economic, social and cultural development, subject to the competence.
Trademark Licensing is a basic term of authorizing the use of the concerned trademark by another party. Licensing allows others to use the mark without assigning the ownership. This can be done for goods and services covered. It is a term not mentioned in the trademark act as ‘License’. In the act, it is mentioned as ‘Registered User’.
Trademark licensing is the feature of authorizing another person or company for making business use of any registered trademark for some specified period of time. It also refers to the transfer of rights were in the actual proprietary rights. In some conditions, only rights related with a registered trademark are given to the licensee. The exclusive ownership of the licensed trademark and many vital and critical rights associated with the trademark.
Types of Trademark licensing
Classical trademark licensing- Licensing under manufacturing products.
Merchandising-Promotion of the sale of goods, it is specially presented in retail outlets.
Franchising-Right is officially granted to offer specific products or services under explicit guidelines at the certain location at a certain period of time.
Why is it better to license?
Theory of trademark licensing
Quality Control is the most important part because you will lose rights over it if you don’t exercise control. Lack of quality control is, in fact, one of the reasons why you could lose. The consumer assumes that the product sold under the trademark will be equal quantity. This means an expectation of the potential consumers.
Key clauses in agreement of licensing
Difference between Licensing and Assignment of Trademarks
Both of them are means of exploiting the registered trademark commercially or financially. It is basically time-bound agreement which authorizes another person or company for usage of concerned.
It is mainly for the purpose of deriving regular royalties from the licensee or authorized user whereas the assignment of a trademark is selling permanently the exclusive ownership over the registered trademark together with all legal rights attached to it.
Licensing means granting permission to the owner agreed on mutual terms and conditions. Depending upon the principle company can have trademark license whether it is the quality control or Source indication.
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