Trademark Services by Ediplis
Thought of a new brand name. We help you ensure that it is unique and not infringing on someone else’s trademark.
Our experienced trademark professionals provide the right strategy and support needed for your trademark protection.
Responding to Examination Report
Received an objection from the trademark office? Our high success rate in getting objections cleared is a testament of our experience and expertise.
Our dedicated portfolio management team ensures you don’t miss a deadline on the way to registering your trademark.
We constantly look out for others trying to copy your mark and trying to register the same.
Want to stop someone who is infringing your brand name. We can help you by filing opposition against such usage.
Learn about Trademarks
You have thought of a brand name for your product or service. You have even gone to the next step of visualising / creating your logo so as to distinguish your product/service from the common pool. So the next step is to protect it.
What is a Trademark and what do I get by registering a Trademark?
A trademark is defined as a mark (word, logo, picture, signature etc.) that can be represented graphically and enables the holder of the trademark to distinguish his or her goods and services from that of others. This also includes shape of the goods, colour combinations and now even particular sounds. A trademark grants the holder protection for a period of 10 years from its registration and can be renewed as long as the brand continues. A service mark is similar to a trademark except it helps in distinguishing between the services offered by different individuals or entities.
What are the benefits of registering your trademark?
It is not mandatory to register your mark, however, it is highly advisable to do so. There are numerous benefits associated with registering a trademark starting from exclusivity of using a specific mark to receiving a registration certificate from the government recognizing ownership of the brand. A very appealing factor of registering a trademark is the protection provided to the goodwill associated with the registered mark. Registration also ensures that your mark is not copied or reproduced by anyone and even should your mark be used without your authorisation, the Indian Trademark Act provides ample recourse and remedies.
How to select a trademark?
Now the big question is, how do you go about deciding on a name that can be registered. While choosing a name it is important to choose something unique. This may seem difficult with all the names already taken, however the following name choosing strategies may help in selecting the right brand name-
- Invented Words- New words may be created by combining two or more words. These words generally do not have any dictionary meanings and are usually unique.
- Arbitrary adoption- A word that has a specific dictionary meaning but is used for an altogether different product or service. For example Apple for computers.
- Acronyms- Acronyms having unique full forms. For example EDIPLIS is an acronym for Excellence Driven Intellectual Property Legal and Integrated Services
Once you have thought of a suitable name, the next step is to check whether it is available or is already in use. The easiest way to check is to do a search on the Indian Trademark Registry database. This may be done by any Trademark Agent or Attorney. However, it is best if the search is not restricted only to the Indian Trademark Registry database, rather a comprehensive search should also be conducted on the MCA database as well as on common law databases. India has recently opened its doors to the Madrid Protocol that allows foreign nationals to apply for a trademark in India claiming priority from applications in their own countries hence, it is also important to check for any marks that may have been applied for via the international route.
When conducting a search it is always best to seek out the assistance of a licensed trademark Attorney or Agent who will be able to conduct the search for you and inform you on your chances of registration.
It is advisable to seek the assistance of a licensed trademark Attorney in filing for a trademark. The trademark search is a very important facet of the registration process. A trademark search is essential since it shows whether any identical or similar marks to your proposed mark are already in use or have been applied for. The search option acts as a safeguard so that you do not unwittingly infringe upon the trademark of any third party.
The trademark search can be carried out in two ways. It can either be done solely on the Indian trademark registry database, which we call a basic search, or it may be done on the Indian trademark registry database, the Ministry of Corporate Affairs database, the Madrid Protocol records and common law databases. If you are looking at doing your own due diligence, we recommend going through a wonderful guide on performing a detailed trademark search in India prepared by our friends at Zatalyst.
The search in the Indian trademark registry database is conducted class wise. Hence, the applicant’s goods and services have to be segregated as per their classes. There are 45 classes falling under trademarks of which classes 1 to 34 deal with goods and 35 to 45 deal in services. The details of each trademark class may be viewed here. A mark may either be filed in a single class or applicants may elect for multi class filing. The charges (both government and professional fee) are based on per class chosen for filing.
Once a search has been conducted and the way ahead is clear, the next step is to file the trademark application. A trademark can be applied for either physically at any of the Trademark Offices having appropriate jurisdiction. There are a total of five Trademark Offices in India located at New Delhi, Kolkata, Ahmedabad, Mumbai and Chennai. Each office shall have jurisdiction over the particular zone they are located in. For example the Chennai Trademark Office shall be the appropriate Trademark Office for filing all applications from Tamil Nadu, Andhra Pradesh, Karnataka and Kerala. A detailed list of the Trademark Offices and the states they cover can be viewed here.
A trademark may also be applied for online through the Indian Trademark Registry, however, a digital signature is required for filing an online application. It is always recommended that you seek appropriate legal assistance while filing a trademark application.
Once the trademark has been applied for it usually takes anywhere between 18 to 24 months (based on our experience in registering brands) for the Trademark Office to register the mark and issue the Registration Certificate, provided, no objections or opposition is received.
The various steps involved in filing a trademark are as follows:
- Trademark Application – Once the application has been filed online, an acknowledgement and receipt shall be issued within 2- 3 days.
- Examination Report – In the event of any discrepancies in the application or in the event of any similar or identical marks, the Trademark Office shall issue an Examination Report objecting to the present application. The Examination Report is usually issued between 6-8 months from the date of filing.
- Response to Examination Report – On receipt of the Examination Report, the Applicant shall be required to file a response to it within 30 days from receipt of the Examination Report.
- Advertisement – If the Trademark Office is satisfied with the response to the Examination Report, it shall advertise the mark in the Trademark Journal. The mark is advertised in the trademark Journal within 2-3 months from responding to the Examination Report.
- Opposition – The mark shall be advertised in the Trademark Journal for a period of 4 months. This period is provided so that any third party having an interest in the proposed trademark or any person whose rights may be infringed upon if the present mark is registered may oppose such registration.
- Registration – In the event there is no opposition or in the event that the applicant was able to overcome all of the objections and opposition, the mark shall be registered within 3-5 months after it has been advertised in the Trademark Journal.
Trademark protection with Ediplis Counsels
Our doors are always open and you may at any time either call us for an enquiry or drop by to our office to have a free 30 minute consultation session regarding the whole trademark filing procedure. We understand that all of this might be a little too much to digest and that’s why we take time off in ensuring that you have a very clear picture of the entire trademark procedure. Based on the consultation we will help you identify the appropriate classes in which you may file your trademark.
If you are satisfied with the consultation we could move onto the next step which is conducting the trademark search. As mentioned earlier, we here at Ediplis have built a unique search strategy to ensure that no stone is left unturned. We have split the trademark search into two, a Basic Search and a Comprehensive Search. You may choose which one you would like to go ahead with. The Basic Search is recommended only if the proposed mark has a high degree of uniqueness or in the event that you are sure no identical or similar mark exists out there. It is always recommended to do a Comprehensive Search. A Comprehensive Search includes a search in the Indian Trademark Registry database, in the Ministry of Corporate Affairs Database, in the Madrid Protocol database as well as on select common law databases whereas a Basic Search shall include only a search conducted in the Indian Trademark Registry Database. Based on the search you wish to be conducted, we will prepare a search report compiling all of the similar or identical marks found. The Basic Search report shall vary from the Comprehensive Search report. The Comprehensive Search report shall also include a Trademark Registrability RatingTM. This rating shows the chances of getting your marked registered. All search reports shall be prepared without any bias keeping in mind only you welfare.
Checklist and Power of Attorney
Based on the search report you can decide whether or not to move forward with the trademark filing. The search reports shall indicate the likelihood of registering your proposed trademark. Should you receive a positive search report you can proceed onto the next step. The next step shall consist of preparing a checklist. A Trademark Checklist shall consist of various fields that are essential in filing a trademark. You will be required to fill out the relevant fields with correct and accurate information and submit the same back to us. When filing the trademark application we shall be referring to the Trademark Checklist so as to complete the online registration. Hence, it is essential that you provide us correct, complete and up to date information..
Another important document required is the TM-48 (which is the Power of Attorney) authorising us, Ediplis Counsels, to act as your agent in all matters relating to the present trademark application. The Power of Attorney requires you to enter the proprietor name (who shall have the rights over the trademark) and shall be signed by the appropriate person having authority. In case of a Company or a Partnership Firm, any authorised Director or Partner may sign the Power of Attorney. On receiving the Power of Attorney we shall have to get the same duly stamped at the sub-registrar’s office before it may be uploaded.
Once we receive the completed Trademark Checklist and duly signed Power of Attorney, we shall proceed with the filing of the trademark. We file all of our trademarks online, unless there arise any special circumstances where we have to do the physical filing in the appropriate Trademark Office. It is very important that the application is filed in the correct office as it shall be refused if filed in any other office.
The trademark filing shall take approximately 1-2 days. However, the whole trademark procedure up till the issuance of the Trademark Registration Certificate shall take anywhere between 18 to 24 months, that too only if no objection or third party opposition is received.
Once the trademark application has been filed the steps involved up to the issuance of the Trademark Registration Certificate are as follows:
- New Application – This shall indicate that the application for filing has just been filed or received by the Trademark Registry.
- Send to Vienna Codification – This shall be applicable only for logos or other non-textual trademarks. Where the trademark is sent to be identified and coded as per the Vienna codification.
- Formalities Chk Pass – This shall mean that all of the procedural aspects involved in the filing of the application has been followed and that all necessary documentation has been supplied.
- Marked for Exam – This means that the mark has been sent to be examined by the examiners in the Trademark Office.
- Objected – This means that the trademark application has been objected to and that an unfavourable examination report has been issued.
- Exam Report Issued – The examination report may be issued if there are only minor changes required in the application or if the mark is going to be advertised in the Trademark Journal.
- Refused – This means that the trademark application has been refused after considering the response filed to the examination report or after hearing the applicant.
- Abandoned – This shall mean that the application will be considered to have been abandoned as the applicant has failed to respond in a timely manner to any office action.
- Withdrawn – This shall mean that the application has been withdrawn by the applicant itself.
- Removed – This means that the trademark has been removed from the Trademark Journal.
- Registered – This means that the trademark has been successfully registered.
Responding to Examination Report
Once the application has been filed, the Trademark Office shall examine the application to check whether (i) all relevant documents are submitted, (ii) all formalities in connection with the application have been completed, (iii) if there is any similar or identical mark already in existence, (iv) if all statutory requirements are complied with.
The Examination Report shall contain the reasons for which the present application has been objected to. In the event that the application was objected due to the presence of identical or similar marks then a list of all marks found to be identical or similar shall be attached along with the Examination Report.
The applicant shall be provided with a period of 30 days to reply to the Examination Report. Based on the Examination Report the Trademark Office shall consider whether the mark shall be advertised in the Trademark Journal or be refused. If the Trademark Office is satisfied with the Response to Examination Report it shall advertise the mark in the Trademark Journal. However, in the event that the mark is refused, the Applicant shall be provided with one more opportunity to present his contentions. This shall be by way of a hearing fixed by the appropriate Trademark Office. The mark may be accepted or refused after the hearing concludes. If it is refused the applicant shall be left only with the option of filing an appeal with the Intellectual Property Appellate Board.
Advertised in the Journal
If the Trademark Office is satisfied with the Response to the Examination Report it shall advertise the mark in the Trademark Journal. The mark is advertised in the Trademark Journal so that any third party having an interest in or who is of the opinion that the mark is infringing upon their trademark may oppose the present application. A period of 4 months is provided by the Trademark Office for any third party to oppose the mark. In the event of no opposition, the Trademark Office shall accept the trademark and proceed with its registration. However, in the event that third party opposition is received, the Trademark Office shall fix a date of hearing and hear both parties before it decides to refuse or grant the present trademark registration application.
Accepted and Registered
If the applicant is able to overcome all objection and third party opposition received to the satisfaction of the Trademark Office, the Trademark Office shall accept and register the trademark and a Trademark Registration Certificate shall be issued.
Once the trademark is granted it shall have to be renewed every 10 years. The proprietor shall be required to renew the trademark within 6 months from the date of expiry of the trademark. In the event that the proprietor fails to renew the trademark the Registrar of Trademarks shall remove the trademark from the Trademark Register. The proprietor’s only recourse shall be to file for the restoration of the trademark within 6 months to 1 year from the date of expiry of the trademark.
Why work with Ediplis Counsels
- Fixed Costs – The fee involved in filing the trademark application is nominal. Applicants will be required to pay a governmental fee that is mandatory. In addition to this, we also charge a very nominal professional fee for filing the trademark application. The professional fee charged by us will be a onetime fee and we shall inform you of the same upfront. We do not levy any extravagant charges, all our charges are fixed so as to ensure the highest degree of quality.
- Unbiased Opinion – All opinions and consultation provided by us shall be unbiased. Our search reports shall always be honest estimation of your chances of registering the proposed mark. Neither will we let your love for the proposed mark, be it a unique name or a logo, cloud your judgment.
- Wide Network of Associates
In our many years of practice we have developed strong relations with many other Trademark Agents and Attorneys all over India. This helps us to file for a trademark in any Trademark Office within India.