- First, getting credit isn’t compensation. We did, after all, create the work concerned, so credit is automatic. It is not something that we hope a third party will be kind enough to grant us.
- Second, credit doesn’t pay bills.
Trademark Registration Process in India
Letter, Number, Word, Phrase, Logo, Graphic, Smell, Sound Mark or a Combination of Colours
Before adopting a trademark, a trademark search is highly recommended, as this will give an indication of any existing trademarks which have been applied for/or registered in the Trademarks Registry.
Using the "" symbol with your trademark simply implies that you claim to be the proprietor of the trademark. There is no prohibition on the use of the symbol in India. Prior use of the trademark is not mandatory for filing. Therefore, applications can be filed on a 'proposed to be used' basis.
The whole process of registration of a brand name usually takes anything between 15-18-24 months. The trademark once accepted, is valid for a period of 10 years from the date of issuance of the Certificate of Registration. But a trademark may be subject to removal on the grounds of non-use, if it is not used for a continuous period of 5 years. After the end of 10 years, the trademark will need to be renewed indefinitely as long as the renewal fees are paid every 10 years.
So, what is the procedure of registering a trademark?
There are 2 ways to file the registration – manual filing or e-filling.
In case of manual filing, you will need to personally walk down and submit the registration application for a trademark on Form TM-1 (with the prescribed fee of Rs 2,500) in any one of the five offices of the Registrar of Trade Marks located in Mumbai, Delhi, Kolkata, Chennai and Ahmedabad.
In case of e-filing of a trademark application on trademark registry website, you can:
- Complete an electronic application form.
- Provide the associated attachments.
- Complete necessary payment details.
The benefit of e-Filing is that you will immediately receive a trade mark application number. The official website is: http://www.ipindia.nic.in/
Along with the application, you will need to submit a couple of supporting documents:
- The TM 48 registration form of authorization: Depending on what type of a registered business you have, say sole proprietorship, and class of goods/services (according to NICE classification) etc. you will need to submit an identity proof of the Name; the Directors of the company, particulars of the trade and an address proof of the proprietor of the mark.
- If the mark contains or consists of non-English words, a translation of those words into English is required.
- A soft copy of the image of your brand logo in a standard size of 9 x 5 cms in JPEG format
- Power of attorney is required if filed through an agent/attorney (no notarization is required). For Indian clients, power of attorney to be executed in 100 Rs. stamp paper and signed by the applicant. The power of attorney is not required at the time of lodging the application and can be submitted later with no additional cost.
- Since trademark registration is territorial in nature, if applicable, proof of claim of the proposed mark being used before in another country. Date of first use of the mark in India (if at all used).
- Required fee.
Once you register your trademark, you will be issued an official receipt with a TM number. After formal examination report by the Registrar is filed, if the trade mark application is considered allowable, a Letter of Acceptence (TLA order) is issued and after which the logo or brand name is published in the Indian Trade Mark Journal. You will get a response to your registration either by an affidavit, a hearing or by an interview. If no one raises an opposition within 3 months i.e. 90 days or in some cases 120 days, from the date of publication, the brand name proceeds to acceptance. You may now be allowed to use the registered trademark symbol (®) next to your brand name, once the Certificate of Registration (under the seal of Trademark Registry) has been issued.
Costs for trademark transactions
To file a new application there are set forms depending on the nature of your application. The forms are numbered as TM-1, TM-2, TM-3, TM-8, TM-51 etc: Rs 2,500
- To file a notice of opposition to oppose an application published in the Trade Marks Journal a (FormTM-5): Rs 2,500
- For Renewal of a registered trademark (Form TM-12): 5,000
- Surcharge for late renewal (Form -10): Rs 3,000
- Restoration of removed mark (Form TM-13): Rs 5,000
- Application for rectification of a registered trademark (Form TM-26): Rs 3,000
Law: Infringement & Passing-off
Infringement of trademark is violation of the exclusive rights granted to the registered proprietor of the trademark to use the same. A trademark is said to be infringed by a person, who, not being a permitted user, uses an identical/ similar/ deceptively similar mark to the registered trademark without the authorization of the registered proprietor of the trademark. However, it is pertinent to note that the Indian trademark law protects the vested rights of a prior user against a registered proprietor which is based on common law principles.
What are unregistered trademarks?
The basic difference between the protections available for registered trademarks and unregistered trademarks is that the former is a statutory remedy and the latter is a common law remedy. The owner of an unregistered trademark may be able to prevent use by another party of an infringing mark pursuant to the common law tort of passing off or under s. 27 which read as - no action for infringement of unregistered trademark. But it also recognises the common law right of the trademark owner to take action against any person for passing off goods as the goods of another person or as services provided by another person or the remedies thereof. An action of passing off is based on common law of tort and is founded on the principle that 'no man is permitted to use any mark, sign, symbol, device or means whereby without making a direct representation himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is ultimate purchaser'.
Passing off is a species of unfair trade competition by which one person seeks to profit from the reputation of another in a particular trade or business. Its is a common law tort used to enforce unregistered trademark rights. For an action of passing off, registration of a trademark is irrelevant.
Passing off essentially occurs where the reputation in the trademark of party A is misappropriated by party B, such that party B misrepresents as being the owner of the trademark or having some affiliation/nexus with party A, thereby damaging the goodwill of party A.
There are certain essential ingredients of a passing off action. The plaintiff has to prove that there is a similarity in the trade names; the defendant is deceptively passing off his goods as those of the plaintiff; or that there is bound to be confusion in the minds of the customers. The test to be applied in such matters is as to whether a man of average intelligence and of imperfect recollection would be confused.
Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action against violation of trademarks in India. In India, a combined civil action for infringement of trademark and passing off can be initiated.
Functional product features can only be protected through a limited-duration utility patent, and not through the potentially unlimited protection of a trademark registration (since trademarks can be renewed in perpetuity).
"At this point, major technology firms can steal from each other anyway, absorb the consequences, and keep going. At the same time, a twisted ecosystem of patent trolls has sprung up to exploit the current system’s weaknesses, burying legitimate claims by small inventors in a flood of frivolous lawsuits."
“visual images are part of speech and they’re also an expressive work of a photographer”
- You have the right to take photographs in a public place. When in public spaces where you are lawfully present you have the right to photograph anything that is in plain view. Exceptions may include military installations, which are banned to protect national security. In many areas, pictures of nuclear facilities are also prohibited. However, don't stalk people or sneak up on them and shove your camera in their face. If you insist on taking a photo of the clearly perturbed big man sporting scars and a scowl, just understand that he may very well insist on smashing your camera.
- When you are on private property, the property owner may set rules about the taking of photographs.
- Police officers may not confiscate or demand to view your digital photographs or video without a warrant. Police may not delete your photographs or videos under any circumstances.
- Police officers may legitimately order citizens to cease activities that are truly interfering with legitimate law enforcement operations.
Some photographs can be used and distributed without release forms, but they are limited in usage. Editorial images may not be used to sell anything – they are “non-commercial and non-promotional”. Certain photographs may also require a property release form. The following three questions will help you to determine if you need a property release:
- Could the owner of the property in the photograph be identified by anyone just by looking at the photograph of the property? If no, then you can stop here without needing a property release form.
- Permission is required if a person is photographed in a way that suggests they may be advocating or sponsoring a product or service. Is the photograph to be used for an advertisement? If so and the property is identifiable, a property release is required. Is the photograph going to be used for commercial purposes? If so and the property is identifiable.
- The person signing to be 18 years of age or older. If your subject is under 18 years old, you will need the signature of at least one parent or legal guardian.
Pricing & Fees
- It's no use pushing it around or feeling awkward. Don't undervalue and negotiate the price of your work like a professional with confidence. Don’t be afraid. The project will get frustrating, since freelancing is not a 9to5 job, so its better not to undercharge for your work.
- Firstly, find out what is the client's budget before anything.
- Find out what other competing freelancers are charging and what is the benchmark market rate in your place.
- Overheads charge is multiplied by 3 (in India) or roughly by 12 (which means you have included lights, internet, also insurance etc since freelancers are not expected to charge for their expenses). Purchases connected with the project, is charged separately.
- Project Fees with time-limit: (annual salary + annual expenses + annual profit which is around 10% of your salary) ÷ annual work hours = your basic hourly rate. Also, you should earn at least half of the minimum living expense for a married person by the time you are 30 years old.
The most irritating and troubling issues that will come up:
- What is the scope of the work you are doing for the client vs what the client expects as time passes
- Ownership of the Work
- The number of Revisions
- Deadlines for the project phases changes
- Renegotiations by the client on the Fee/Salary Amount
- Reimbursement of Expenses and Payment timings
- Early Termination without paying any Kill fee or worse a non-payer client runs away with ¾ of the project for free!