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MODULE 1

FILING OF DIFFERENT TYPES OF TRADEMARK APPLICATIONS- THE PRE-
FILING FORMALITIES

Trademark is a sub-set of Intellectual Property which consists of recognisable words, design or
any visual representation which legally identifies goods or services of a particular source. In the
modern age, trademarks have come to represent not only products/services from a particular
source, but also the reputation and goodwill of the business.

Trademark can be owned by any person recognised by law i.e. Individual, Company, non-
commercial organisations etc. The first official modern law for Trademark was passed in France
in 1857, however, registration of trademarks was first centralized in 1920 when the “Trademark
Special Register” (now called “National Trademark Register”) was created. Prior to the formation
of the National Trademark Register, the commercial courts of France were responsible for
providing trademark registration. Britain was the first country to have a modern Trademark
Registry and had issued its first Trademark Law in 1862 called the Merchandising Act, which
made it a criminal offence to copy another trader’s mark. In 1875, the Trade Marks Registration
Act was passed which allowed formal registration of trade marks at the U.K. Patent Office for the
first time. The First trademark to be registered in UK was the red triangle of the Bass Brewery i.e.

for “Beers”. The application number for the said mark with the UK Trademark
registration office was Trademark Application No. 1. The said mark is still registered and has been
renewed till 1st January, 2022. It was filed on 1st January, 1876.

In India, the first legislation for trademark registration was Trademarks Act, 1940 which was based
on the UK Trade Marks Act, 1938. The 1940 Act was eventually repealed and replaced by
Trademark and Merchandising Act, 1958 which consolidated the Trademark laws contained in
other acts like the Indian Penal Code, Sea Customs Act etc. The 1958 Act was eventually replaced
by the Trademarks Act, 1999 which was bought into force to comply with the TRIPS Agreement

of 1992. The oldest traceable registered trademark is under the 1940 Act under Trademark

Application No. 10. The mark is for “Whisky” in Class 33. It was filed

by a Scottish company by the name of James Buchanan and Company Limited. The said mark and

related documents can still be accessed on the online portal of the Trademark office.

In India, trademark registration is not mandatory. A trademark can also be protected by common
law right of ‘Passing-off’. However, the process of proving the goodwill and reputation of the
trademark is difficult solely based on common law rights. Therefore, a registered trademark is
helpful in initiating cases specially in the case of infringement of a registered trademark, wherein
injunctions can be granted easily.

The benefits of having a registered trademark in India are listed hereunder:

• Domain names: Under the National Internet Exchange of India (NIXI), the .IN Registry
functions as an autonomous body. Proceedings at the .INDRP can be initiated by any
person who considers the registered domain name to have conflicted with his legitimate
rights or interests. However, complaint can only be filed if you have valid trademark
registration. In the case of Starbucks corporation v. Mohanraj (Decided on 26th Nov, 2009)
the respondent's domain name www.starbucks.co.in was confusingly similar to the
complainant's domain name www.starbuscks.in., The order for the same can be accessed
at https://www.registry.in/show-doc?id=starbuckscoin_2.pdf

• Registrar of Companies: If someone tries to register a company name which is
deceptively similar to a registered trademark, a complaint can be filed with the ‘Registrar
of Companies’ under Section 16 of the Companies Act, 2013. However, Section 16(b) of
the Companies Act, 2013 states that the mark has to be registered.

• Procedure for recording of rights with the Customs: Getting a brand or trademark
registered with the custom authorities is advisable and trademark registration is necessary
for the same.

Trademark registration in India is a technical process with its own challenges. In order to get a
trademark registered, we need to be well-versed with the intricacies of the trademark opposition

and prosecution laws in detail to be able to effectively prosecute and defend a trademark
application. Hence, it is important to learn the basics and study each aspect of trademark
registration right from filing of an application, objections raised at various stages, registration of
the mark, opposition proceedings, rectification, process for review, IPAB hearings, post-
registration procedures, renewals, assignment and Madrid Protocol.

Let us begin with the first part i.e. how to file a trademark application?

1.1. FILING OF DIFFERENT TYPES OF TRADEMARK APPLICATIONS: DIFFERENT
TYPES OF APPLICATION AND PRE FILING FORMALITIES

Any legal entity can file a trademark application either physically, or electronically at the
appropriate office of the Trademark Registry. The appropriate trademark office will be based on
the address of the legal entity. If the legal entity does not have an address in India, then the address
of the attorney filing the said application will decide the jurisdiction.

Filing of trademark application physically requires a person (i.e. an individual, trademark agent or
a person on behalf of an individual) who has to reach physically to the appropriate office of the
Trademark Registry and file a requisite form against the application for registration.

Trademark application can also be filed electronically through the gateway provided in the official
website i.e. ipindia.nic.in. However, electronic filing requires an attorney code, agent code or
proprietor code and a digital signature. Please note if you do not have the attorney/agent/proprietor
code beforehand, you cannot make an account. Hence, for the first time, filing should be done
physically.

1.2. LAW GOVERNING TRADEMARKS IN INDIA

The primary domestic legislation currently governing trademarks in India is the Trademarks Act,
1999 and the Trademarks Rules, 2017.

Before the enactment of Trademarks Act, 1999, the Trade and Merchandise Marks Act, 1958 was
in force in India for the protection of marks used in due process of trade and marks related to
merchandise. This Act was amended several times to fit the ever-changing needs of trade and time,
but due to increasing globalization of trade and industry, and the advancement in technology, the
Act became redundant and there was a need for a new piece of legislation which addressed the
lacunas of the existing legislation. Hence, the Trademarks Act, 1999 came into existence.

The Trademark Rules, 2017 came into effect on 6th March, 2017, and have substantially changed
the landscape of trademark prosecution and opposition in India. The changes incorporated by the
said rules are as follows:

1.2.1. Salient Features

It is pertinent to note the following salient features of the Trade Mark Rules, 2017-

• Increase in Fees
• Lower trademark application fees for individuals, start-ups and small enterprise
• Affidavit of use required for filing trademark application with user claim
• Provision for expedited processing of the trademark application
• Procedure to apply for a sound mark
• Amendment to the procedure of opposition proceedings
• Application for a trademark to be determined as ‘Well-Known’ by the Registrar
• Change in Forms
• Association fees waived off
• Hearings may be held through video conferencing/audio-visual communication devices
• Service made by e-mail is valid service

1.2.1.1. Increase in Fees

The fees for all forms have been increased. There has been a significant increase in the fees
for trademark applications.

Earlier the fees for filing a trademark application for each trademark in each class was INR 4000/,
however, under the new Trademark Rules the fees has been increased to INR 9,000/- per mark per
class.

1.2.1.2. Lower trademark application fees for individuals, small enterprises and start-ups

The Trademark Rules, 2017 recognised “Small enterprise” and “Start-up”. If an entity qualifies as
a ‘small enterprise’ or a ‘start up’, it becomes eligible to pay a lower fee for an application to
register a trademark.

A small enterprise, in the case of an enterprise engaged in the manufacture or production of goods,
is an enterprise where the investment in plant and machinery does not exceed INR 10,00,00,000.
A small enterprise, in case of an enterprise engaged in providing or rendering of services, is an
enterprise where the investment in equipment does not exceed INR 5,00,00,000. Foreign
enterprises which fulfil these requirements can also avail a lower application fee.

Start-up has been defined in the Rules as an entity recognised in India as a start-up by the
competent authority under the Start-up India initiative. A start-up, as per the notification released
by the Department for Promotion of Industry and Internal Trade, is an entity which has been
incorporated or registered for less than five years, its turnover has not exceeded INR 25,00,00,000
in any financial year and is working towards innovation, development, deployment or
commercialisation of new products, processes or services driven by technology or intellectual
property. Foreign enterprises which fulfil these requirements can also avail a lower application
fee.

Therefore, a trademark application filed in the name of individuals, small enterprises or start-ups
is INR 4,500/- per mark per class.

1.2.1.3. New documents required at the time of filing a trademark application with a user
detail

If a trademark is filed on a “proposed to be used basis”, no extra documents will be required.
However, if a trademark application is filed with a user detail, then the following documents will
be required at the time of filing of the trademark application:

a) Affidavit of use and;

b) Supporting documents showing the user detail of use of the said trademark.

1.2.1.4. Provision for expedited processing of an application

The Trademark Rules, 2017, under Rule 34, has introduced the provision for expedited processing
of application. An applicant can request for expedited processing of its application upon paying a
higher fee of INR 20,000/- for individuals, small enterprises, and start-ups and for all other
Applicants, a fee of INR 40,000/-.1 The application filed for expedited processing will be examined
within three months from the date of filing.

Thereafter, the trademark prosecution proceedings i.e. the consideration of response to the
examination report, scheduling of show cause hearing, if required, the publication of the
application and the opposition thereto, if any, till final disposal of the application shall also be
dealt with expeditiously subject to such guidelines as may be published in this regard by the
Registrar in the Trade Marks Journal. The Registrar may, however, limit the number of expedited
applications.

1.2.1.5. Procedure to apply for a Sound mark2

The Trademark Rules, 2017 have provided for the procedure to apply for a sound mark. The
application for registration of a sound mark should consist of the reproduction of the sound and
shall be submitted in the MP3 format not exceeding thirty seconds’ length. It should be recorded
on a medium which allows for easy and clearly audible replaying accompanied with a graphical
representation of its notation.

1.2.1.6. Amendments in Opposition Proceedings

• Service of Notice of Opposition can be dispensed with: The New
Trademark Rules, 2017 state that the service of notice of opposition can be dispensed with,

1 Trademark Rules, 2017, First Schedule.
2 Trademark Rules, 2017, Rule 26.

where a counter statement to a notice of opposition has been filed on the basis of the notice
of opposition uploaded on the online records of the Trademark office website.

• No More extensions for filing evidence in support of opposition/application: The
extension of time period for filing evidence in support of application/evidence in support
of opposition have been dispensed with. Therefore, the evidence in support of opposition
will need to be filed within 2 months from the date of service of counter statement and the
evidence in support of application will need to be filed within 2 months from date of service
of evidence in support of opposition.

• Adjournments: Under Rule 50(2), the number of adjournments to be granted has also now
been reduced to only two adjournments per party and each adjournment will not be more
than 30 days. Furthermore, the request for an adjournment will need to be filed in FORM-
TM-M with the requisite fees to be paid three days in advance.

• Increased costs: In opposition proceedings, where reasonable notice has been given by the
opponent to the applicant prior to the filing of the notice of opposition and the applicant
fails to contest the opposition, the Registrar can impose costs of INR 10,000 on the
applicant. Where an opposition has been filed and the opponent fails to contest the
opposition proceedings after a counter statement has been filed by the applicant, the
Registrar can impose costs of INR 10,000 on the Opponent.

1.2.1.7.Procedure for a mark to be considered a Well-Known Mark by the Trademark Registry

Rule 124 for the first time lays down the procedure for a mark to be considered a Well-Known
mark by the Trademark Registry3. The procedure for recognising a trademark as well-known mark
is provided hereunder-

• An application under TM-M has to be made with the requisite fees of INR 1,00,000 (One
Lakh Rupees). The applicant can request the Registrar for the mark to be

3 Trademark Rules, 2017, Rule 124.

determined/considered as a “Well-Known mark”. Such request will be accompanied by a
statement of a case along with the required evidence and documents.

• Registrar will take into account Section 11 sub-section (6) to (9) of the Trademarks Act,
1999 for the determination of a mark as a Well- Known mark.

• The Registrar may call upon any document he thinks fit from the applicant

• The Registrar may also invite objections from the general public to be filed within 30 days
from the date of invitation of such objection

• In case the said mark is considered a well-known mark, the same will be published in
the Trademark Journal and included in the list of well-known trademarks maintained by
the Registrar

• However, if at any time it is found that the said trademark has been erroneously or
inadvertently included or is no longer justified to be in the list of Well-Known trademarks,
the Registrar has the power to remove the same from the list, after providing the due
opportunity of hearing to the concerned party.

1.2.1.8. Change in forms

The old forms were numeral based i.e. TM-1, TM-16, TM-50. By virtue of the 2017 Rules, new
forms have been introduced which led to the reduction of number of forms from 74 to 8. The new
forms are divided on the basis of alphabets. The alphabet indicates the function of the form i.e.
TM-A for filing of trademark applications; TM-P for any change to registered trademark; TM-R
for renewal and restoration of trademarks etc.

1.2.1.9. Association fees no longer required

Association fees of INR 500 was earlier paid to the Trademark Office in order to associate the
mark. However, post-2017, the same is no longer charged. However, dissolution of association
can still be charged on filing of TM-P form.

1.2.1.10. Hearings may be held through video conferencing/audio-visual communication

devices

Rule 115 for the first time provided that a hearing could also be held through video-conferencing
or through other audio-visual communication devices and in such a case hearing will be deemed
to have taken place the appropriate office4-

“Rule 115. Hearings.— (1) the hearing if any, in relation to any proceeding under the Act
and rules may be held at the notified date and time and at such place within the territorial
jurisdiction of the appropriate office as the Registrar may think fit: Provide that the hearing may
also be held through video- conferencing or through any other audio-visual communication
devices and in such cases the hearing shall be deemed to have taken place at the appropriate
office.

Explanation - (For the purposes of this rule the expression “Communication device” has the same
as assigned to it in Clause (ha) of sub-section(ii) of section 2 of the Information Technology Act,
2000 (21 of 2000))

Section 2(1)(ha) in The Information Technology Act, 2000

[(ha) "communication device" means cell phones, personal digital assistance or combination of
both or any other device used to communicate, send or transmit any text, video, audio or image;]

1.2.1.11. Service made by e-mail is a valid service

Under the New Trademark Rules, 2017, an e-mail sent from the Trademark office will be
considered a valid service. This was a major relief as earlier, all communication was through post
and could lead to immense delays.

1.3.INTERNATIONAL LAW

4 Trademark Rules, 2017, Rule 115.

India is a member of the following international treaties and agreements relating to trademarks-

• The Paris Convention for the Protection of Industrial Property- It is one of the primary
instruments of International Law with respect to protection of Industrial Property i.e.
patents, trademarks, service marks, industrial design, trade names, indication of source and
repression of unfair competition. The Paris Convention for the Protection of Industrial
Property was adopted in 1883 and the countries to which this Convention applies constitute
a Union for the protection of Industrial Property. It has been revised at Brussels in 1990, at
Washington in 1901, at Hague in 1925, at London in 1934, at Lisbon in 1958, and at
Stockholm in 1967.

• The Nairobi Treaty on the Protection of the Olympic Symbol- The Nairobi Treaty on
the Protection of the Olympic Symbol prohibits the state parties to adopt a mark containing
Olympic Symbol for the purpose of commercial use if it is not authorized by the
International Olympic Committee (IOC). It was adopted in 26th September, 1981. The
agreement is administered by the World Intellectual Property Organization (WIPO). In
1984 the following states had adopted the Nairobi Treaty- Congo, Egypt, Equatorial
Guinea, Ethiopia, Guatemala, and Kenya.

• The Protocol Relating to the Madrid Agreement Concerning the International
Registration of Marks- The system of the Madrid Agreement concerning the International
Registration of Marks dates from 1891 and revised at Brussels (1900), Washington (1911),
The Hague (1925), London (1934), Nice (1957) and Stockholm (1967), and amended in
1979. The system is administered by the International Bureau of WIPO, which maintains
the International Register and publishes the WIPO Gazette of International Marks. The
Protocol relating to the Madrid Agreement was adopted in 1989, entered into force on
December 1, 1995, and came into operation on April 1, 1996. The aim of the Protocol
Relating to the Madrid Agreement was to provide balance between the Madrid System and
the domestic legislation of certain countries, for example, Japan, the United Kingdom and
United States of America.

The World Intellectual Property Organization is one of the specialized agencies of the United
Nations (UN) system of organizations. It was signed at Stockholm in 1967 and entered into force

in 1970. The objective WIPO is to promote the protection of intellectual property throughout the
world through cooperation among states and in collaboration with any other international
organizations. WIPO provides trouble free filing of intellectual property in different countries in
by providing a system of single application to be filed in other countries for registration. India is
also a party to the following WIPO treaties-

• The Nice Agreement on the International Classification of Goods and Services, 1957-
It is also known as Nice Classification. It is an international classification of goods and
services. Nice classification streamlined the process of filing trademark internationally.
The classification system is specified by the World Intellectual Property Organization
(WIPO).

• The Vienna Classification, established by the Vienna Agreement- The Vienna
Classification (VCL) is an international classification system established in 1973 by the
Vienna Agreement Establishing an International Classification of the Figurative Elements
of Marks into categories, divisions and sections, on the basis of their shape. It is
administered by the World Intellectual Property Organization (WIPO). The European
Union Intellectual Property Office (EUIPO) uses a modified version of the Vienna
Classification.

1.4. TYPES OF TRADEMARK APPLICATIONS

There are various types of trademark application forms that one can file depending on the type of
trademark application you are filing, i.e. if one wants to file one mark in multiple classes, they will
file the same under a multi class application; if the applicant wants to apply for a certification mark
in India or a series mark, then they would have to file the same under different forms. After coming
in effect of the Trademark Rules, 2017, all trademark applications are now filed under Form TM-
A. However, it is important to note the different types of applications one can file as well as their
earlier “Form Numbers” as it will be beneficial in evaluating old cases. Various types of trademark
applications are as follows-

a. Trade Marks Application (Single class) (Earlier TM-1) – An application to register a
trademark included in any one class of goods or services.

b. Convention Application (Earlier TM-2)- Application for registration of trademark
included in any one class of goods or services and with priority claim under Section 154
of The Trade Marks Act, 1999. Under section 154(2) of the Trademarks Act, 1999, where
a person has made an application for the registration of a trademark in the convention
country and he makes an application for registration of the trademark in India within six
months after the date on which the application was made in the convention country, the
trademark shall, if registered, under the Trademarks Act, 1999 be registered as of the date
on which the application was made in the convention country. That date shall be deemed
to be the date of registration for the purpose of the Act. Under subsection (3), where
applications are made in two or more convention countries, the period of six months will
be reckoned from the date on which the earlier or earliest of those applications was made.
The said application is in connection with the Paris Convention, which was discussed
above.

c. Multiclass (Earlier TM-51)- A single application for registration of trademark included
in more than one class of goods and services.

d. Multiclass Convention Application (Earlier TM-52)- An application to register a mark
included in more than one class of goods and services with claiming of priority from
convention country (other than a certification or a collective trademark).

e. Series mark in a class or multiclass (Earlier TM-8)- An application to register a series
of trademarks included in more than one class of goods and services.

f. Series mark from Convention country in class or multiclass (Earlier TM-37)- An
application to register a series of trademarks included in more than one class of goods and
services with claiming of priority from convention country.

g. Collective Mark (Earlier TM-3)- Application for registration of collective mark included
in any one class of goods or services.

h. Certification Mark (Earlier TM-4)- Application for registration of certification mark
included in any one class of goods or services.

i. Collective Mark from Convention country (Earlier TM-64)- An application for
registration of collective mark included in any one class of goods or services with priority
claim under Section 154 of The Trademarks Act, 1999.

j. Certification Mark from Convention country (Earlier TM-65)- Application for
registration of certification mark included in any one class of goods or services with
priority claim under Section 154 of The Trademarks Act, 1999.

k. Collective Mark in multiclass (Earlier TM-66)- A single application for registration of
collective mark included in more than one class of goods or services.

l. Collective Mark in multiclass from Convention country (Earlier TM-67)- A single
application for registration of collective mark included in more than one class of goods or
services with priority claim under Section 154 of The Trademarks Act, 1999.

m. Certification Mark in multiclass (Earlier TM-68)- A single application for registration
of certification mark included in more than one class of goods or services.

n. Certification Mark in multiclass from Convention Country (Earlier TM-69)- A single
application for registration of certification mark included in more than one class of goods
or services and with priority claim under Section 154 of the Trademarks Act, 1999.

1.5. DIFFERENT TYPES OF TRADE MARKS THAT CAN BE FILED IN INDIA

There are a varied number of trademarks that exist today, for e.g. trade dress, sounds marks, motion
marks etc. are very interesting to read about. The following are the categories in which trademarks
generally fall into-

1.5.1. Word mark

It implies protection of the text of the trademark. If the name of the product or service is text-
based (contains text only), it will be registered under word mark. However, if you wish to register
a text in a specific font as trademark, the same cannot be filed under word mark. It has to be filed

as a label (for e.g. the trademark of Coca Cola- ). A word mark application must

be filed normally in TM-A depending on the number of classes you want to file in.

1.5.2. Service marks/Product marks

Service mark and product mark are sub-sets of trademarks. As the name suggests, product marks
are for physical goods and service marks are for services rendered under a trademark.

• Service marks- There are marks for services, and these are enshrined in classes 35 to 45.
For example, FedEx for courier services, Flipkart for e-commerce, Amazon for e-
commerce. DUNZO for food delivery, SWIGGY for food delivery.

• Product marks- These are marks for products and are covered under classes 1 to 34.
Common examples of product mark are OnePlus for mobiles, Mother dairy for ice cream,
Maggi for ready-made noodles.

1.5.3. Label Marks

These are marks that have no artistic representation but do have an artistic way of depicting the
word mark of the applicant in a special font or writing style. Furthermore, these marks containing
various features including words and descriptive expression are usually printed on paper which

can be pasted or attached to the goods/services i.e.

1.5.4. Device mark

There marks contain an artistic representation as well as the word mark of the applicant and does

not cover any other category. For example-
1.5.5. Sound mark

The distinctive sound associated with a product or a service can also a trademark as sound make.
A few famous examples of sound mark in India are the opening tune of the ‘Nokia’ mobile phone
and the Britannia jingle (Ting-ting-ta-ting).
Prior to 2017, there was no set format in which sound marks could be applied as trademarks,
however, with the coming into effect of Trademark Rules, 2017, a proper procedure was laid down
for the same.
Rule 26- “(5) Where an application for the registration of a trademark consists of a sound as a
trademark, the reproduction of the same shall be submitted in the MP3 format not exceeding thirty
seconds’ length recorded on a medium which allows for easy and clearly audible replaying
accompanied with a graphical representation of its notations.”
The sound mark can be graphically represented in musical notes, for example,

An interesting bit of trivia is that the first sound mark registered in India is Yahoo Yoodle i.e.
1270407. The trademark was applied in 2004 and granted in 2008. However, at that time there was
no established law for a sound mark to be registered in the Act or the Rules. So, how was the same
applied? Well the same was improvised by applying only in musical writing and the musical
instrument (Banjo) on a separate musical note and the vocals in a yodeling voice for the word
“YAHOO” on a separate musical note-

As you will see that they have tried to explain the words which co-relate with the musical notes as
they probably could not have submitted an audio version as at that time the Trademark Office did
not have the means to process such an audio file.

An interesting feature that the Trademark Office now provides is that you can listen to the sound
mark online on the online status of the said mark.

1.5.6. Collective mark

The collective mark belongs to an organisation or a group of people, or represents a group of
companies. Section 2(1)(g) of Indian Trademarks Act, 1999 defines a certification mark as
“collective mark means a trade mark distinguishing the goods or services of members of an
association of persons [not being a partnership within the meaning of the Indian Partnership Act,
1932 (9 of 1932)] which is the proprietor of the mark from those of others”.5

The main feature of a collective mark is that it belongs to a group rather than a single proprietor,
which is in contrast with the general rule of identifying trademark with a peculiar source. The
provisions for collective mark are enshrined under sections 61-68 of the Trademarks Act, 1999
and Rules 130-135 of the Trademark Rules, 2017.

The collective marks are used by associations to relate themselves with a level of quality or
competence. Associations/organizations have to ensure compliance of specific quality standards
for using the mark. The owner of the collective trademark can even be a public entity or a
cooperative. The organization should be capable of suing and being sued. The primary purpose of

5 Trademarks Act, 1999, s. 2(1)(g).

a collective mark is to protect the consumer against misleading practices. Any group of people
with a common goal may be considered a collective.

The mark can be used by the members of the organisation (not being a partnership firm) to indicate

being a part of it i.e. CA mark . The collective trademark is an ordinary trademark

indicating trade origin. Collective marks are often used to refer to group companies also i.e.

or .

Section 62 of Trademarks Act 1999 lays out two essential conditions for registering a collective
mark-

“1) A collective mark shall not be registered if it is likely to deceive or cause confusion on the part
of the public.

2) If it is likely to be taken to be something other than a collective mark, and in such condition, the
registrar may require that the mark in respect of which application is made for registration
comprise some indication that it is a collective mark”6

The application for the registration of a collective trademark for goods or services under sub-
section (1) of section 63 should be made to the Registrar in Form TM-A along with the draft
regulations. As per rule 131(4) of the Trademark Rules, 2017 the draft regulation will specify:

“(a) the name of the association of persons and their respective office addresses;

(b) the object of the association;

(c) the details of members;

(d) the conditions for membership and relation of each member with the group;

6 Trademarks Act, 1999, s. 62.

(e) the persons authorised to use the trademark and the nature of control the applicant exercise
over the use of the collective trademark;
(f) the conditions governing use of the collective trademark, including sanctions;
(g) the procedure for dealing with appeals against the use of the collective trademark;
(h) such other relevant particulars as may be called for by the Registrar”7
Under Rule 132, the said application will need to be accompanied with a statement of case setting
out the grounds for support of the application. The collective mark will be applied in TM-A under
the heading COLLECTIVE MARK [For reference, the earlier form for the same was TM-3,
Collective Mark From Convention Country (Earlier TM-64), Collective Mark In Multiclass
(Earlier TM-66), Collective Mark In Multiclass From Convention Country (Earlier TM-67)]
An interesting trademark application for collective marks is CMA (Certified Management
Accountant) in the name of INSTITUTE OF CERTIFIED MANAGEMENT ACCOUNTANTS
under Application no. 1273256.
1.5.7. Certification mark
The certification mark shows a specific quality standard that is met by the product. Section 2(1)(e)
of Indian Trademarks Act defines a certification mark as “a mark capable of distinguishing the
goods or services in connection with which it is used in the course of trade which are certified by
the proprietor of the mark in respect of origin, material, mode of manufacture of goods or
performance of services, quality, accuracy or other characteristics from goods or services not so
certified.” 8 The provisions for collective mark are enshrined under sections 61-68 of the
Trademarks Act, 1999 and rules 136-141 of the Trademark Rules, 2017.

7 Trademark Rules, 2017, Rule 131(4).
8 Trademarks Act, 1999, s. 2(1)(e)

The certification mark is meant to be a badge certifying that the said product is of a certain quality,
which is as defined by the certifying body that owns the certification mark. The common examples

of certification marks include FSSAI, and .

The certification mark is not meant to be an indicator of the goods or services to the consumer but
a badge of quality to the consumer i.e. the products and services have certain characteristics and
prescribe to a certain standard.

The said mark is applied under the ‘Certification Mark’ form under TM-A, under the heading
“Certification mark”. The certification mark application, however, has a few additional
requirements than a normal trademark application. A draft regulation under Section 74 of the
Trademarks Act, 1999 and Rule 137 of the Trademark Rules, 2017 also needs to be filed with the
application, which shall include-

a) a description of the applicant;

b) the nature of the applicant's business;

c) the particulars of infrastructure like R&D, technical manpower support;

d) the applicant’s competence to administer the certification scheme;

e) the applicant’s financial arrangement;

f) an undertaking from the applicant that there will be no discrimination of any party if they meet
the requirements set down in the regulations;

g) the characteristic the mark will indicate in the certified goods or in relation to the rendering
of certified services;

h) the manner of monitoring the use of the mark in India; and

i) such other relevant particulars as may be called for by the Registrar.

Under Rule 138 of the Trademark Rules, the trademark application for certification mark should
also be accompanied by a statement of case. Section 72 of the Trademarks Act, 1999 lays down
the consideration that Registrar needs to look into in order to allow a certification mark to be
registered.

Section 72: (1) The Registrar shall consider the application made under section 71 with regard to
the following matters, namely:—

(a) whether the applicant is competent to certify the goods in respect of which the mark is to be
registered;

(b) whether the draft of the regulations to be filed under section 74 is satisfactory;

(c) whether in all the circumstances the registration applied for would be to the public advantage,
and may either—

(i) refuse the application; or

(ii) accept the application and approve the said draft of the regulations either without modification
and unconditionally or subject to any conditions or limitations, or to any amendments or
modifications of the application or of the regulations, which he thinks requisite having regard to
any of the said matters.

However, the above guidelines are not absolute. For example, the Bureau of Energy Efficiency
under the Ministry of Power, Government of India, has the star rating symbol that it puts on

registered appliances i.e. . [Kindly refer to Application No. 1724864 for the mark].

The form for application of certification mark can be applied under different headings under TM-
A: Certification Mark (Earlier TM-4), Certification Mark From Convention Country (Earlier TM-
65), Certification Mark In Multiclass (Earlier TM-68), Certification Mark In Multiclass From
Convention Country (Earlier TM-69).

1.5.8. Series mark

Series marks/family of marks are trademarks which have a common distinctive element as a point
of identification in all the marks, with all marks in the series being differentiated very slightly. An
example of series mark would be McDonalds. They have a series of 'Mc' registered
as word mark which represents their different product range such as McChicken, McVeggie
McPuff, McFreeze, McPizza etc. In this manner, certain mark elements can be afforded protection
by registering them all within one application and using several marks containing a common
element, thus acquiring exclusive right over them with the distinctive element remaining intact in
each mark. The difference should be only as a matter of non-distinctive characters i.e. color. This
is the reason why a number of marks contained in a series application are essentially identical.
Trivial differences are insignificant like the above-mentioned example of the “Mc” family as any
consumer would recognize that any product with the pre-fix ‘Mc’ is automatically associated with
McDonalds.

Indian Trademark Registry allows registration of a number of trademarks as a series within one
application. This stands as an exception whereas the general rule is that separate applications
should be made for every trademark. Every trademark in the series must fall within the category
or description of the same goods or services; this is a fundamental requirement of a trademark
series application. Section 15 of the Trademarks Act, 1999 deals with Series Mark, which states:

Section 15: Registration of parts of trademarks and of trade marks as a series.—

(1) Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part
thereof separately, he may apply to register the whole and the part as separate trademarks.

(2) Each such separate trade mark shall satisfy all the conditions applying to and have all the
incidents of, an independent trade mark.

(3) Where a person claiming to be the proprietor of several trade marks in respect of the same or
similar goods or services or description of goods or description of services, which, while
resembling each other in the material particulars thereof, yet differ in respect of—

(a) statement of the goods or services in relation to which they are respectively used or proposed
to be used; or

(b) statement of number, price, quality or names of places; or

(c) other matter of a non-distinctive character which does not substantially affect the identity of
the trade mark; or

(d) colour, seeks to register those trademarks, they may be registered as a series in one registration

However, please note that the differences laid under Section 15(3)(d) are inclusive of each other
and factor independently, not as together. Hence, a number of trademarks can be filed in one
application which differ ever so slightly. The differences in the ‘series marks’ should be only in
respect of non-distinctive matters, such as size, description of the goods, price, quality etc. The
marks should be the same in material particulars but different in non-distinctive characters which
do not substantially affect or alter the identity of the mark. The difference between the marks must
not have a substantial effect on their identity. The differences in the non-distinctive features in the
marks must not affect the visual, phonetic and conceptual identity of each of the trademarks i.e.
Mc is the identifying feature and all the suffixes should not affect the identity of the mark, they
can be descriptive in nature Mc + “Pizza”= McPizza. The substantial effect is analyzed/ calculated
based on the likely reaction to the marks of an average consumer of the goods/services in
question. All trademarks registered as series in one registration are deemed to be registered as an
associated trademark, under Section 16(4) of the Act.

If you would like to peruse an application filed as a series mark you can peruse the following
trademark application number- 4362822, 4453541.

1.5.9. Shape of Goods

Shape of goods is also a type of trademarks, for example, and filed in India. These

types of trademarks stand in the field of trade dress which refers to visual features of the trademark

as shape, container, packaging style, combination of colors etc. Some examples of such trademark

that can be studied are:

a) Ambassador Car Shape – 2821821

b) Chivas Whisky Bottle - 2497331

c) Volkswagen Beetle Car Shape – 2293411

d) Screwdriver registration – 2584309

It is pertinent to note that if the shape of the mark is not distinctive and only functional, then it
cannot be registered. For example, if the shape of the product is just a plain bottle and has no
distinctive element to it, it cannot be registered and the registration is liable to be refused under
section 9(3) of the Trademarks Act 1999, as it consists exclusively of the shape of goods which
results from the nature of the goods themselves; or the shape of goods which is necessary to obtain
a technical result; or the shape which gives substantial value to the goods .

1.5.10. Motion marks

Motion mark is a unique type of trademark wherein mark is in motion. A good example to explain
it in layman terms would be a GIF, which is a moving image. Motion marks are in fact hardly used
by companies around the world. However, the first motion mark to be registered in India was the
Nokia hand symbol, that would be shown when you would switch on the Nokia phone. The said
marks are applied in a series of successive images which together form a mark in motion.
Trademark application No. 1246341 is a good example of how a motion mark is filed.

1.5.11. Numeral Trademark

Numeral Trademark are trademark on numbers that can be registered once shown that the
trademark is distinctive. One example of a registered numeral trademark is application no.
1319467 for the mark “10001”.

1.5.12. Combination of color

If the applicant wants to register a particular color combination as trademark, he can do so. He will
be required to provide a graphical representation of the trademark. The applicant must also provide
a concise and accurate description of the trademark on the application.

1.6. DIFFERENT TYPES OF TRADEMARKS ON THE BASIS OF DISTINCTIVENESS

While applying for Trademark Registration, it is important to understand which marks are
inherently distinctive and which marks are not inherently distinctive. The reason behind this is that
under the Trademark Law, traders or businesses are not allowed to register terms that are
descriptive of the products, name of the products or common to trade marks since there can be no
sole proprietor for a term that is meant to describe the products or the services. If the same is
allowed, it would lead to chaos as one proprietor will be able to monopolise a term and harass
other traders and businesses. Therefore, it is always advisable to use a mark that has nothing to do
with the products or services being dealt with, to reduce the chance of confusion and infringement
of their marks.

Trademarks are further classified on the basis of distinctiveness. The Lanham Act (Federal
Trademark Act of 1946, U.S.A) identifies four types of Trademarks- a) Generic, b) Descriptive, c)
Suggestive and d) Arbitrary or Fanciful marks.

• Generic Trademark- A generic word can be thought of as the common name of the
product or service in question. Such words can never be appropriated by a single party as
a trademark for the product or service. Generic words or phrases are not registrable in
relation to the product or service they signify, for example, Apple for apples. However, in
one rare instance, this has been allowed since the user base for the same was substantial
and unique (Please refer Heinz Italia & Anr. v. Dabur India Ltd9.)

• Descriptive Trademark-These are trademarks that in some way describe the kind, quality,
quantity or geographical origin of the products or services being sold. An example of a
merely descriptive mark would be COLD AND CREAMY for ice cream.

• Suggestive Trademark- A suggestive mark hints at or suggests the nature of a product or
service or one of its attributes without actually describing the product or service. i.e.

9 Heinz Italia & Anr. v. Dabur India Ltd. (2007) 6 SCC 1.

NETFLIX for streaming services, GREYHOUND for busline, QUICK STOP for
convenience store.

• Arbitrary Trademark- An arbitrary mark is a word or words that have a common
meaning in the language or dictionary meaning, however, the said meaning is unrelated to
the goods or services for which the mark is being used, for example, SUN for
pharmaceuticals, APPLE for computers, CAMEL for cigarettes.

• Fanciful Trademark- These are trademarks that have no dictionary meaning and are
essentially invented words, for example, Xerox or Nikon.

For further discussion on the same please see the American judgement of Two Pesos, Inc. v. Taco
Cabana, Inc.10

1.7. APPLICANT

1.7.1. Who can apply for a trademark application?

According to Section 18(1) & (2) of the Trademark Act, 1999,

1) Any person claiming to be the proprietor of a trademark used or proposed to be used by
him, who is desirous of registering it, shall apply in writing to the Registrar in the
prescribed manner for the registration of his trademark

2) A single application may be made for registration of a trademark for different classes of
goods and services and fee payable therefor shall be in respect of each such class of goods
and services.

1.7.2. Nature of Applicant

It is important to ascertain the nature of the Applicant i.e. Individual, Corporate entity, Partnership
firm for the following reasons-

10 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).

a. There is a 50% discount on application fee for three applicants a) Individual, b) Small
enterprises as defined in 2(1) (v), and c) A recognized “Start Up” by the Government of
India

b. When a Partnership firm applies all the signatures of the partners are necessary

c. In case of joint owners, full name of all the owners with their signatures are required

d. If the mark is sought to be registered in the name of a government organization, the form
should read-“the Government of India /State of ________ (followed by the name of the
department) represented by____________(name of the authorized person followed by the
name of department

e. In case of statutory organizations/public sector undertakings, reference should be made to
the statute under which such organization/undertaking is discharging its functions i.e. “Life
Insurance Corporation of India (established under the ……. Act) through its authorized
signatory and executed in the manner prescribed by the rules regulating it…

1.7.3. Types of Applicant

a. Firm: The application should include the name of the partners. The applicant will be named
as A, B, C, & D trading as M/s XYZ, an Indian Partnership Firm registered under Indian
Partnership Act, 1932.

b. Hindu Undivided Family: The application should include the name of the members of the
family.

c. Trust: If the applicant is a trust, application may be made on behalf of a trust. In such a
case, the name of its managing trustee/chairman representing the trust should also be
mentioned. The applicant’s name, in such case, should be M/s ABC, a trust registered in
India under Indian Trust Act, 1882, and represented by Mr. A, its Managing Trustee.

d. Society: Application may be made on behalf of a society. The applicant’s name, in such a
case, should be M/s XYZ, a society registered in India under Maharashtra Co-operative
Societies Act through its secretary Mr. A.

e. Government: The Central or State Government or any undertaking/company owned or
controlled by such Government may also make application for registration of trademark
like any other person. Where the applicant is a government department, the applicant’s
name, in such case, should be “The Government of India/ Government of
_(state)___Represented by_ (name of the Department) through its Secretary Mr. A”

f. Joint Applicants: Section 24 enables registration of two or more persons to be registered
as joint proprietors of the trademark, where the mark is used or proposed to be used in
relation to goods or services connected with the joint applicants. The applicants’ name, in
such case, should be M/s A, (a company registered in India under Indian Companies Act
1956) and M/s B a company registered in India under Indian Companies Act
1956........claiming to be joint proprietors of the trademark.

g. Minor: If a minor has applied for the registration of a mark, it will be written as “Mr X
(minor) represented by the Guardian Mr. Y” or “Mr. X being the represented by is guardian
Mr. Y trading as M&O co.”

1.7.4. Class of Trademarks

Under the Trademark law, there are two main groups that divide the trademark categories, firstly,
the Nice Classification based on types of goods and services and secondly, the Vienna Code on
the basis of the device mark elements (i.e. the type of picture used for the mark).

• Nice Classification

International Classification of Goods and Services, also known as the Nice Classification, was
established by the Nice Agreement (1957). It is a system of classifying goods and services for the
purpose of registering trademarks. A new edition is published every five years and, since 2013, a
new version of each edition is published annually.

As per the classification, the goods and services are grouped into different classes, Class 1-34 are
for goods, Class 35-45 are for services; Class 25: Clothing; Class 2: Paints; Class 43: Restaurants;
Class 36: Financial Services. Each class requires a different registration. This is a classification of
almost 100,000 products and services.

For an applicant to claim rights for a specific good, the applicant will have to file in the specific
class. For example, Apple has a Trademark Application No. 1090169 in Class 9 for “Computers
and Mobile phones”, however, since Apple also provides software services it was also registered
under Class 42 (Application No. 1236724).

• Vienna Code

The Vienna Classification (VCL), established by the Vienna Agreement (1973), is an international
classification of the figurative elements of marks. The Vienna Classification is regularly revised.
As a part of the trademark registration process, any trademark comprising figurative elements/logo
is assigned a Vienna Code by the Indian Trademark Registry. This is the first step taken by the
Registry where the trademark comprises a figurative element/logo. The Vienna Code is assigned
based on the nature of the figurative element/logo. Such figurative elements/logos are codified
according to the Vienna Agreement.

Section 7 of the Trademark Act, 1999 states that the Registrar will follow the international
classification of goods and services. However, one key aspect is that if the Registrar takes a
decision that a good falls in a particular class, the decision of the Registrar shall be final.

1.8. PRE-FILING FORMALITIES

Prior to filing a trademark application, the following information is required-

• Trademark- To know the exact mark to apply for i.e. label, word, device, sound mark etc.

• Description of goods/services the said mark is in use for- To ascertain the goods/services
the mark is in use for and to know the class of trademark i.e. 25, 9, 42.

• Date of first use- Mark can be filed on “Proposed to be used” basis or with a user. If the
mark is to be filed with a user, there is a need for evidence showing date of first use of the
mark i.e. advertisement, invoice, website registration date etc. Furthermore, if the applicant
is using the mark prior to filing it, the application should be accompanied with an Affidavit
of use.

1.8.1. Procedural requirements

The procedural requirements for applying for a trademark registration are enumerated under
section 18 of the Trademarks Act, 1999 and Rules 23 to 59 of the Trademark Rules, 2017 (25-62
in the Trademark Rules, 2002)

1.8.1.1. The necessary particulars

a. Name and address of the applicant and where applicable, the address of service in India. If
the applicant has more than one place of business, the primary place of business should be
stated. If the applicant has no place of business in India, an address of service should be
stated in India, which could be address of the Attorney/Agent. Even though the applicant
could have a principal place of business in India, the applicant is still at liberty to assign an
address of service i.e. attorneys address, where all the communication should be sent;

b. Goods and services, in respect of which registration is sought and classes in which they
fall;

c. Whether the mark is used or “Proposed to be used”; and if the mark is already in use, the
date since when and the person by whom the mark has been continuously used;

d. Trademark description if you are applying for a unique mark, sound mark, motion mark,
etc.

e. The name of the appropriate office of the Trademark Registry and;

f. Where the mark is certification mark, series mark or collective mark, their respective
formalities should be complied with

1.8.1.2. Power of attorney/agency

If an application is being filed through an attorney, a form under TM-M under Rule 19 of the
Trademark Rules, 2017 and section 145 of the Trademarks Act, 1999 is to be executed and
notarized. The same is required to be filed with the application or there would be an objection
raised in this regard.

1.8.1.3.Translation and transliteration
If the mark is in a language other than English or Hindi, the translation of the said word should be
provided with the Trademark application and it should specify the language the word is from.
1.8.1.4.Trademark search
Once the above-mentioned detailed are ready, it becomes easy to ascertain the class of the
goods/services the applicant wants to apply in. For example, the trademark of the client is FILLAW
and wants to manufacture mobile phones under the said mark. We will first ascertain that the class
“Mobile phone” falls in is Class 9. Then we will conduct a trademark search on the link accessible
here: https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx. We will fill in the mark in the
word mark column, the class of the goods and services and search. We will get a search result.

• If there are no marks on the register then we can file the mark.
• If there are similar marks in Class 9, then we will need to asses each mark separately and

give an opinion. (How to overcome objections will be in the following chapters)
• Once, the pre-filing formality is complete, we can proceed to file the trademark

application form.

A sample form is provided herein below to help you understand where to fill the columns

Once a Trademark application is filed, it is allotted a serial number, or as commonly called
Trademark Application No. The number remains the same even after the mark has been registered.
The same is enshrined under Rule 32 of the Trademark Rules, 2017.