A trademark represents a company’s business and the goodwill associated with it. If appropriately protected and strategized, a trademark can provide a tremendous business advantage to an organization. Effective trademark management, and efficient business value creation requires: an insight into trademark law, keen understanding of your business, ability to foresee possible opportunities, and capitalize on business developments.
 
Our team of highly experienced trademark attorneys at BananaIP Counsels provide value added trademark services to help clients maximize business value from their trademarks. From trademark clearance searching, to trademark protection, and brand management, our team offers a wide range of trademark services. Having helped clients acquire thousands of trademark registrations in the USA, India, Europe and across the globe, our attorneys are well versed in trademark processes. Our experience of handling trademark compliance audits, and licensing/franchising transactions enables us to offer unique, value added services to our clients.

1.WHAT IS A TRADEMARK?
Simply, a trademark can be a symbol, word or words legally registered or established by use as representing a company or product or any business. Examples of famous trademarks are McDonald’s, KFC and Revlon.

2.WHAT ITEMS CAN BE REGISTERED AS A TRADEMARK?
According to the trademark law we can register a logo, word, name, device, label, numerals and taglines if it is graphically plottable and definite.

3.WHAT ARE TRADEMARK CLASSES?
Indian Trademark Registry classifies trademarks in 45 classes (Please refer the next question for more details). These classes are defined based on the type of goods and services. Registering in the relevant class(es) will help the company safeguard its interests and not allow any other competitors to infringe on its Intellectual Property. Classes 1 to 34 define different goods, whereas, classes 35 to 45 define different services.

4.WHAT ARE THE VARIOUS CLASSES IN WHICH I CAN FILE A TRADEMARK IN INDIA?
The following are the classes of trademark in which you can file a trademark in India, depending upon the goods or services which you seek to provide.

Class 1 - Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
Class 2  - Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
Class 3  - Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 4  - Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminates; candles and wicks for lighting.
Class 5 - Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Class 6  - Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.
Class 7  - Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.
Class 8  - Hand tools and implements (hand-operated); cutlery; side arms; razors.
Class 9  - Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.
Class 10 - Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.
Class 11 - Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Class 12 - Vehicles; apparatus for locomotion by land, air or water.
Class 13 - Firearms; ammunition and projectiles; explosives; fireworks.
Class 14 - Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.
Class 15 - Musical instruments.
Class 16 - Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.
Class 17 - Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.
Class 18 - Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.
Class 19 - Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
Class 20 - Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
Class 21 - Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
Class 22 - Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.
Class 23 - Yarns and threads, for textile use.
Class 24 - Textiles and textile goods, not included in other classes; bed covers; table covers.
Class 25 - Clothing, footwear, headgear.
Class 26 - Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
Class 27 - Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).
Class 28 - Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
Class 29 - Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.
Class 30 - Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.
Class 31 - Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt.
Class 32 - Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.
Class 33 - Alcoholic beverages (except beers).
Class 34 - Tobacco; smokers’ articles; matches.

SERVICES

Class 35 - Advertising; business management; business administration; office functions.
Class 36 - Insurance; financial affairs; monetary affairs; real estate affairs.
Class 37 - Building construction; repair; installation services.
Class 38 - Telecommunications.
Class 39 - Transport; packaging and storage of goods; travel arrangement.
Class 40 - Treatment of materials.
Class 41 - Education; providing of training; entertainment; sporting and cultural activities.
Class 42 - Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
Class 43 - Services for providing food and drink; temporary accommodation.
Class 44 - Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
Class 45 - Legal services; security services for the pro.

5.WHY IS TRADEMARK IMPORTANT FOR A STARTUP COMPANY?
One of the most important concerns of a startup company is to establish its brand, its unique visibility in the existing market that differentiates itself from competitors. It becomes very important for companies to use a trademark, through which it can advertise and connect itself with its consumers. At BananaIP Counsels, we generally suggest a startup company run a trademark search before using ANY mark. This is to make sure that you are not violating anyone else’s intellectual property and saves incurring additional expenses at a later stage.

6.WHAT ARE THE VARIOUS REASONS BECAUSE OF WHICH A TRADEMARK MIGHT BE REJECTED BY THE TRADEMARK REGISTRY?
At BIP Counsels, we come across clients whose trademarks were rejected by the Trademark Registry because the agent to whom they entrusted the matter, did not register it in the appropriate class. On one analysis we found there were several reasons for rejecting the trademark. However, the most important were:

When the trademark consists of words or terms which are usually found in dictionaries, it cannot be trademarked. For example, the word “CHAIR” cannot be sought to be registered as a trademark by a company which sells chairs. These are known as generic terms and gets rejected.

Words that are commonly used to describe the ‘kind’ or ‘quality’ of products/services are also more likely to get rejected when sought to be registered as a trademark.

Any mark which could deceive or mislead consumers with regards to quality, geographical origin and nature is also likely to be rejected.
Marks which contain offensive terms or which are contrary to public morality are also rejected.

Trademarks that contain flags, emblems of state and international organizations are also rejected.

7.SHOULD I GET THE TRADEMARK REGISTERED IN MY NAME OR THE COMPANY’S NAME?
A main purpose of registering a trademark, beyond securing rights against third party use, is increasing the net value or worth of your business. We suggest you register the trademark in the name of the company, so consumers associate the registered trademark with the goods or services provided by your company. In cases where the trademark is registered in the name of a person, the terms of use of the trademark between them and the company must be regulated by a license.

8.CAN I SELL MY TRADEMARK?
A trademark helps you build your brand and your business. Once you create your brand, you can always assign or license your trademark for monetary benefit.

9.HOW DO I FILE AN INTERNATIONAL TRADEMARK USING MADRID PROTOCOL?
The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration in any of the countries in the Madrid Protocol, by filing a single application, called an “international application.” The International Bureau of the World Intellectual Property Organization, in Geneva, Switzerland administers the international registration system. BIP has the distinction of filing the highest number of international trademark applications.

To file an international application under the Madrid protocol, there should also be a corresponding trademark application filed in India. In a single international application under the Madrid protocol, several countries may be designated which are members of this system. The fees will depend on the number of classes and countries designated. Upon filing the application, the mark is examined by each designated member country where registration is sought and then proceeds to registration. To file an international trademark application, contact us today!

10.WHAT IS THE DIFFERENCE BETWEEN THE SYMBOLS ™ AND ®?
A ™ symbol is a reference to the fact that Trademark application has been filed for the brand whereas a ® symbol signifies that the trademark has been duly registered.

11.FOR HOW LONG IS A TRADEMARK VALID?
A trademark is valid for a period of ten years at a time. The trademark owner reserves the right to file for renewal prior to expiry of the trademark rights to keep the trademark registration intact. At BIP, in addition to registration of various trademarks, we also provide timely updates to our clients regarding renewal of their trademarks.