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Frequently Asked Questions About Trademarks

Do I need to register my trademark?

No. However, a trademark registration has several advantages including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.

What are the benefits of Indian trademark registration?

- Remedies under the Trademark Act,1999
- Constructive notice nationwide of the trademark owner's claim
- Evidence of ownership of the trademark
- Jurisdiction of Indian courts may be invoked
- Registration can be used as a basis for obtaining registration in foreign countries

Do I have to be a Indian to obtain a Indian registration?

No. However, an applicant's citizenship must be set forth in the record. If an applicant is not a citizen of any country, then a statement to that effect is sufficient. If an applicant has dual citizenship, then the applicant must choose which citizenship will be printed in the Trademark Journal and on the Certificate of Registration.

Is an Indian registration valid outside the India?

No. Certain countries, however, do recognize an Indian registration as a basis for registering the mark in those countries. Many countries maintain a register of trademarks. The laws of each country regarding registration must be consulted

What are common law trademark rights?

Indian registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Trademark registry has the ultimate right to use and to registration. However, there are many benefits of Indian trademark registration.

Who may file an application?

Only the owner of the trademark may file an application for its registration. An application filed by a person who is not the owner of the mark will be declared void. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark.

How long does it take for a mark to be registered?

It is difficult to predict how long it will take for an application to mature into a registration, because there are so many factors that can affect the process. Generally, an applicant will receive a filing receipt approximately 20 days after filing. You should receive a response from the Office within six to seven months from filing the application. However, the total time for an application to be processed may be anywhere from almost a 2 years to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application.

Current status information on trademark applications and registrations may be obtained by logging on to www.trademarks4india.com

How long does a trademark registration last?

For a trademark registration to remain valid, it has to renewed every 10 years for registration granted PRIOR to September 15,2003 have a 7-year term, and registrations granted on or after September 15,2003 have a 10-year term. Trademarks can be renewed for an additional 10-year term.

How do I contest someone else using a trademark similar to mine?

There are several ways to dispute use of your trademark by a third party. Depending on the factual situation, the Trademark Office may or may not be the proper forum. You should consider contacting an attorney, preferably one specializing in trademark law.

Can the ownership of a trademark be assigned or transferred from one person to another?

Yes. A registered mark, or a mark for which an application to register has been filed can be transferred or sold. Written assignments may be recorded in the Indian trademark registry for a fee.

Trademark Review

When filing a Trademark application, your mark will go through two main types of review. First, the TRADEMARK REGISTRY will review your application to determine whether or not you have met the minimum filing requirements. Next, the application is forwarded to a trademark examiner. The examiner will then review the application to determine whether it complies with all applicable rules and statutes and includes all required fees for filing a Trademark. A complete examination includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimen. If the examining attorney decides that your mark should not be registered, he or she will send out a report, called an examination report, explaining any substantive reasons for the refusal, as well as any technical or procedural problems with your application. . If the examiner sends an examination report with objections, your response to the objections must be received within a month of the mailing date of the report, or the application will be declared abandoned.

If your response does not overcome all of the examiner objections, the examining attorney will give you an opportunity for a personal appearance.

What is a Business Name Search?

You have always wanted to start your own business. You have infact zeroed down a name and can even visualize it on the letter heads and the name boards. You have discussed it with your family ,friends and any one else who has shown some interest Saying the name of your new company is like music to your ears. You could say it over and over again.

But, just as you are envisioning the pride of getting your first client, the bubble bursts. Have you taken all the necessary steps to get you business going? Can you legally use this new name that is rolling off your tongue? It is your first company after all. What do you need to start thinking and doing to get it off the ground?

There are a few things everyone can do to arm themselves for the task of starting a new business. The first is to pick a name. Well that's easy, you think to yourself: I've had a great name in mind since I started dreaming about this company. The question becomes: can you actually use the name you want. A business name search is critical to getting your concept off the ground. One of the first things any person starting a business will want to do is search both the state and Indian government websites for the corporate, LLC or partnership name or service or trademark that the person wants to use.

A business name search enables any budding entrepreneur to avoid any names that are already out in the market. A business name search can also help you steer clear of names that are deceptively similar to existing names.

Why is that important? Well, the government will not let you use a pre-existing name or a name that is strikingly similar to a name already out in the consumer market. This fact makes the business name search an essential component for getting your business started. TRADEMARKS4INDIA.COM has a variety of trademark search services the can make your business name search a quick and easy step in getting your business off the ground.

Will the examining attorney search for conflicting marks?

Yes. After filing a trademark application, the assigned examiner will search the TRADEMARK REGISTRY records to determine if a conflict exists between the mark in your application and another mark that is registered or pending in the TRADEMARK REGISTRY. The examiner will look for other marks with which your mark might create a likelihood of confusion among consumers.

The TRADEMARK REGISTRY will not, however, provide any preliminary search for conflicting marks before an applicant files an application. When filing a trademark using TRADEMARKS4INDIA.COM, we conduct a search for other marks that are in direct conflict with your mark.

TRADEMARKS4INDIA.COM also offers a variety of comprehensive trademark search services. The principal factors considered by the examiner in determining whether there would be a likelihood of confusion are:

- the similarity of the marks; and
- the commercial relationship between the goods and/or services listed in the application (what "class" the marks are in).

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related.

If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict. If the earlier-filed application registers, the Examiner will refuse registration of your mark on the ground of likelihood of confusion.

Are there other reasons the examiner might refuse my mark?

Yes. In addition to likelihood of confusion (discussed above), an examiner will refuse registration if the mark is:

- primarily merely descriptive or deceptively misdescriptive of the goods/services;
- primarily geographically descriptive or primarily geographically deceptively; misdescriptive of the goods/services;
- primarily merely a surname; or
- ornamental.

Once your trademark application passes the Examiner’s review, your mark will be published in the Trademark Journal for opposition. This gives the public an opportunity to object to registration of the mark if they believe they will be damaged by that registration. If there are no objections filed within 90 days of that publication the mark will typically be registered within 12 weeks-6 months time.

Why should I get a registered trademark?

Many people assume that they can protect their trademark by simply using the mark in commerce. One might ask, "Why should I go through the effort of applying for a registered trademark when I can establish rights through use alone?"

It is true that you are not required to get a registered trademark to achieve some level of protection for your trademark. There are common law rights that one can establish by simply using their mark in commerce. However, having an Indian registered trademark on the TRADEMARK REGISTRY's Principal Register provides several advantages.

An Indian registered trademark, for example, serves as constructive notice to the public of the registrant's claim of ownership of the mark. In addition, a registered trademark establishes a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration. Further, a Indian registered trademark gives the registrant the ability to bring an action concerning the mark in Indian court. In addition, the home country registration can be used as a basis to obtain registration in foreign countries.

When you get a registered trademark, you are also allowed to use the ® symbol. Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the TRADEMARK REGISTRY. However, you may use the Indian registration symbol "®" only after the TRADEMARK REGISTRY has actually registered the trademark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the Indian trademark registration

What is a Service Mark?

A service mark is simply a type of trademark. In fact, the words "trademark" and "mark" are often used to denote both trademarks and service marks. There is, however, a basic difference between trademarks and service marks. Unlike trademarks, which help the government and consumers to distinguish manufacturers of goods or products from one another, a service mark helps the consumer and the government understand the type of service that is provided as well as to understand and distinguish service providers from one another.

Trademark, Service Mark... Which Do I Need?

If you are looking for protection for a mark and cannot decide between a trademark and service mark, the difference is fairly simple. A trademark is a phrase, word, logo, symbol or other device that is used to identify the source of a product or service and to distinguish one company's products from the competition.

The trademark, service mark distinction is really quite small. Trademarks and service marks are essentially the same thing, except that a trademark promotes goods or products while a service mark promotes services. Some examples of services are foodservices, transportation services, and insurance services. For a helpful example, consider the following: The name of a restaurant, for example " TANDOOR MAHAL” fits nicely into the service mark category as it describes a provider of foodservices, while the name of a particular menu item, for example " TANDOOR TIKKA ROLL," fits into the trademark category as it describes a particular product.

Trademark Advantages

A trademark registration is an important consideration if you have an interest in protecting your business name, slogan or logo. Trademark law provides Indian protection of a word, phrase, symbol or design (or combination of the same) that identifies and distinguishes the source of the goods of the trademark owner over those of another. It can also provide comparable protection for a service mark which would identify and distinguish a service, rather than goods.

One common misconception is that registration of a trademark (or mark) is necessary in order for the owner/user to have any rights in his or her business name, slogan or logo. However, this is not the case. You can establish common law rights in a mark simply through legitimate use, which generally means using it in connection with your business or any other lawful ends. However, there are several advantages in Indian trademark registration:

- Provides constructive notice to the public of the registrant's claim of ownership of the mark;
- Gives the registrant a legal presumption of ownership of the mark and the exclusive right to use the mark nationwide on (or in connection with) the goods and/or services listed in the registration;
- Grants the registrant a right to sue in Indian court on matters involving the mark;
- Use the domestic registration as a basis on which the registrant may obtain registration in foreign countries

Choosing Between Trademark and Copyright Protection

The choice between Trademark and Copyright is not always a clear one. Trademark and Copyright registration are both means of protecting the intangible rights of intellectual property. There are, however, important differences between Trademark and Copyright protection.

Copyright is a form of protection provided by the lndian state to the authors of "original works of authorship," including literary, dramatic, musical, artistic, and certain other intellectual works.

Copyright does not cover intellectual property such as titles, names, short phrases, and slogans; familiar symbols or designs; or mere variations of typographic ornamentation, lettering, or coloring. This type of intangible property is often more appropriately protected by a Trademark. Think of some of the most memorable advertising slogans you have heard. Chances are these slogans are protected by a Trademark of some sort. They are, however, unlikely to qualify for Copyright protection.

Trademark protection, on the other hand, is designed to protect a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods or services of one person or company from those of others.

The distinction between Trademark and Copyright protection is not always clear. Think, for example, of a logo with which you are familiar. The amount of original authorship that goes into a logo can vary greatly. Most of the highly recognizable logos out there are extremely simple objects such as a "swoosh." However, one can imagine a much more ornate logo that includes a great deal of original authorship. Such a logo could possibly qualify for both Trademark and Copyright protection.

If you are looking to protect the name of your company, your newly designed logo or your best catchphrase yet, Trademark protection is likely the route for you. If you are looking to protect your latest gallery worthy painting, the next great American novel or even a brilliantly choreographed dance sequence, Copyright is probably the best route for you.

Can I Use My Trademark Name?

Appropriate use of a name that is trademarked is important in complying with Indian law It will also help preserve any business relationships you may have with the owner of the trademark name. Because trademarks are words, symbols or designs that specifically identify and distinguish the source of an owner's commercial goods, any way in which the name is used that is likely to cause confusion to the public as to whether the use is made by the owner or by another is generally prohibited.

Though some trademark owners assume that no one else has a right to independently use the mark in any capacity whatsoever, this is not exactly true. One can refer to a trademark name for a legitimate purpose, as long as no more of the mark is being used than is necessary for this purpose.

Generally, trademark laws merely control commercial use of the name. Also, under the fair use doctrine, the more common and generic the word(s) are or have become in the English language, the less the trademark owner may be able to regulate its use by others. The fair use doctrine also protects nominative use of the trademark name, as is often done by competing advertisers in its marketing materials.

Trademark owners often have their own policies as to how their mark may be used. Here are some typical ways in which a trademark name is authorized for use by a non-owner:

- With correct trademark and service mark symbols: The symbol "®" refers to a Indianly registered mark, and should be placed after the trademark (e.g. TRADEMARKS4INDIA.COM®). In contrast, names that have not been registered with the Registrar of trademarks or those that still have applications pending may not use the "®" symbol and should be denoted with either "TM" or "SM" for a trademark or service mark, respectively

- As the trademark name appears in the Indian trademark register: The mark should not be abbreviated, hyphenated, or altered in any other ways.

- Without misleading or confusing the customer: This is an especially important rule to a trademark owner, and lies at the core of trademark protection. A trademark must always be kept distinct from any other unaffiliated companies, brands or sources. If the non-owner user of the mark happens to have a branding agreement with the owner, further guidelines can often be found within it.

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