FAQs on Trademark Registration in India – Part III

This is the third post in a series of posts relating to frequently asked questions. The first and second posts are available here and here.

In what all classes can an Online Education Startup register its trademark? What is the procedure for the same?

A trademark may be filed in the following classes

  • Class 9 – Media content and Educational Softwares
  • Class 16 – Stationary and Educational supplies, Printed matter
  • Class 28 – Educational toys
  • Class 35 – Wholesale and retail services for educational supplies
  • Class 36 – Educational scholarships
  • Class 41 – Education
  • Class 42 – Hosting multimedia educational content

A person is not required to file different applications for registering a trademark in different classes. For this, a multi-class application may be filed in FORM TM A. The fees for a Startup for e-filing TM in multiple classes is Rs. 4500 for each class.

Registration procedure may be summed up as follows:

  1. Filing the trademark application in FORM TM A.
  2. After the application is filed, it goes to examination by Registrar.
  3. An examination report is furnished within 3 months to one year by the TM Registry.
    At this stage, the application may be refused by the Registrar on absolute or relative grounds.
    In case of such a refusal, the applicant is given an opportunity of being heard.
  4. An Examination Report is furnished, and the applicant has to comply with the examination report and furnish a suitable response to the Registrar.
  5. If there are no refusal and/or objections, or the objections in the Examination Report have been traversed, the application is advertised in the Trademark Journal inviting pre-grant oppositions.
  6. If no opposition is filed, the application goes for grant and a trademark is granted for a period of 10 years from the date of notification in the Trademark Journal.
  7. A trademark is generally granted within 18-36 months of the filing of the application.
  8. After the grant, the TM application is open for opposition for a period of 6 months.

Can a trademark be assigned without goodwill?

Section 42 of The Trademark Act, 1999 allows you to assign your trademark without goodwill. However, while doing so you must bear the following things in mind –

  • The first condition is that the assignee within 6 – 9 months of the agreement, must apply to the Registrar for directions with respect to the advertisement (publication) of such an assignment (FORM TM P), otherwise, the assignment would be treated as null. The assignee has to bear this in mind. On satisfaction of the Registrar, the assignment shall be advertised. After this, the assignee has to apply for registration of assignment.
  • An assignment contract, assigning a TM without goodwill must be drafted very diligently. One must specifically include the phrase, “the assignor has reserved his rights in respect of such trademark in ‘X, Y, Z…’ goods or services & has not absolutely transferred the trademark in all such goods or services”.
  • An affidavit is also required to be furnished stating that no legal proceedings are pending against the subject trademark.

Image from here.

Siddhant Sharma

Siddhant is currently enrolled in a six year law programme at one of India's premier private law schools, due to graduate in April, 2018. His journey as a techno-legal student started in year 2012 as a matter of fate than choice, but since then legal studies have embarked and impressed upon him the desire to pursue advocacy, in particular corporate and commercial litigation. Apart from academics, he has always been interested in, and still continue to be inclined towards, niche practice areas and entrepreneurial endeavours. He finds joy in writing about Patents.

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