Every brand needs to protect its Brand Identity. The company's logo, mnemonics and the very name of the company can be registered in the respective country's official trademark registry. Trademark is anything that recognises a brand uniqueness and separates from its competitors. Trademark gives a brand an official authority to use the Wordmark/logo/symbol and prevents its unauthorised use. The process protects the unique identity of the brand and gives it an authority to be used legally at any brand touch-point. Once registered, no other brand can re-use the logo or Wordmark without obtaining the legal rights to do so.
Recently two of my logos were registered in the official trademark registry of India. I also registered my personal-brand name "Prashant Sani" as a Wordmark as well. All were registered in the Class 42* . The post documents the process and the legal approach to obtain the same.
(The Class 42 in above paragraph refers to the type of the business/category of the business the respective Wordmark and Logo was registered. Class 42 includes "Website design consultancy; Graphic design services; Designing, creating and maintaining websites for others; Design, development, installation and maintenance of computer software; Consulting in the field of information technology category")
Before getting into specifics of how I registered the logos, I will attach two of my logos that are officially a part of Indian Trademarks registry (Intellectual Property of India).
A few things to keep in mind before going through the application:-
- In terms of logos, it is best to copyright it in black and white. That ways, we can re-use them in any colour in future. The registry does allow a variation for the same. In such cases, its ideal to use a inverse version of the logo (See above images to get a clear idea)
- Tenure of each trademark is for 10 years. It starts from the day the brand files the application for the trademark.
- If the business/personal brand is more than a year old and has been doing business with Indian and International brands, the brand will look more credible in terms of being registered. A brand already in business has a better chance of getting a certificate (but this is very subjective)
- We will have to also attach some documents stating that the trademark (logo or the Wordmark) has been used to represent the brand. These documents could be bills and other payment related documents or marketing materials like Visiting Cards, Websites, etc. Usually blogposts are not considered a good source of the such proof (Again, this is a bit subjective).
- The trademark office usually publishes the Trademark Certificate online. (Soft-copy)
The process is usually as follows:-
- Trademark Search: This can be either done by the lawyer or we can do it ourselves. This is usually done before filing up the application to know the competition of similar Trademarks already registered or in the process of being registered.
- Confirm Lawyer Fees: Confirm the charges applicable with the lawyer. This includes Filing the application, the cost of Application (Usually it is 4500 that Government charges) and court-hearing fees.
- Power of Attorney: The POA in the favour of your lawyer gives authority to your lawyer to represent your brand at Trademark Office. You will have to sign this on a stamp-paper and let your lawyer take things forward.
- Filing Trademark: Your lawyer will file an application to register your brand's Trademark in the Trademark Office.
- Examination Report: The examiner appointed by government checks and addresses the concerns in terms of uniqueness, aesthetics and obscenity of the trademark.
- Reply to Examination Report:- Once the "Examination report" is ready, We would need to send a convincing reply that our Trademark is unique and does not conflict with the ones already registered or in process of being registered. We will also have to make a strong point that the design of the logo is unique and the same has been used to represent brand/personal brand. Further, there can be objections which can be removed by providing evidence that the registered trademark is unique and deserves a registration certificate.
- Court Hearings: If there are further objections by the examiner, there will be a maximum of 2 hearings in court (the charges for this has to be taken into consideration before making an offer to lawyer). During the court hearings, the lawyer has to personally once again convince the court that the trademark does meet the requirements of being registered.
- Application Rejection: At any point of time, if we fail to provide proper response to objections raised; the application may be rejected.
- Publication & Registration Certificate: Once all objections are removed by evidence, the Trademark is accepted and published in Journal. It is advertised for the next 3-4 months. If there are no further objections, it is granted a Trademark certificate.
- Renewal: After a period of 10 years, we will have to renew the certificate.
All this can take a minimum of 1-3 years depending upon each use case.
I worked with Pulastya legal for registering my Logos/Wordmark and I do recommend using their service.
(Disclaimer: The information mentioned is just for the sake of giving a brief idea about the process and legalities involved. This can change time-to-time and may change in certain situations. All views are my own and the views are not in anyway related to any of my current, past or future employer or client.)
With everything being said, I think we as developers and designers work so hard in developing designs and we should get our designs trademarked. The process requires a lot of patience as it may get months (or even years) to finally receive a Trademark certificate. But, in the end: the whole process is rewarding and fulfilling.