How to Register a Service Mark in India

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What is a Service Mark?

A Service Mark is any sign, symbol, mark, wording, or specific indication, or a combination of any two or more of these, which makes the services of a company (engaged in any service field) uniquely distinct from the services of other service-proving companies or organizations, in the concerned jurisdictional marketplace. Again, a service mark not only distinguishes services of a service-proving company, but also implies (or should imply) some specific good qualities of the services, and generous vision and goodwill of the related company. Therefore, a service mark should be readily striking, highly impressive, and exotically imaginative, besides being entirely unique, in order to gather ample prominence, popularity, and maximal profitability of the concerned business. The Trademarks distinguish goods and products belonging to various fields, while the Service Marks make the services of the service-providing companies and organizations which are active in diverse fields of the service sector.

Some famous examples of the service mark are – "McDonald's" (restaurant services), "AT&T" (telecommunications services), "Hilltop" (for services of Hilltop restaurant), "Citibank" (service mark for Citibank), "Wal-Mart" (retail business services), etc.

Classes of Service Marks

To distinguish a service mark from another service mark belonging to different service-field, the criterion used is the classification of service marks. The service marks are classified based on the service fields these individually pertain to. In the Fourth Schedule to the Indian Trade Marks Rules of 2002, provided are eleven discrete Classes (ranging from Class-35 to Class-45) of service marks. This Indian classification of service marks is in complete accord with the International Classification of Services. For clarification, all service marks pertaining to the field of financial and insurance services, are put under the Class-36; whereas the service marks belonging to the telecommunications field are represented by the Class-38.

Any newly created service mark, for doing business in any field at regional or national level, must be indisputably unique and entirely different from the service marks of other companies within the jurisdiction concerned, especially in the same field of service, so that it could be readily accepted by the desired Trademark Office for proper registration. The originality and uniqueness of any new service mark is checked through conducting Trademark Search and Trademark Infringement Analysis.

Processes for Registration of a Service Mark

The essential and most significant tasks encompassed in the entire registration process of any service mark (falling under any specific class) with any zonal trademark office of India, are – Creation of the Service Mark; Searching and Analysis for Uniqueness within India; Preparing and Filing Application for Registration; Official Examination and Verification; Removing any Drawbacks and Rectifying the filed Service Mark; Solving any cases of Opposition; and making Prompt and Expert Prosecution regarding Registration. This description is the answer to the question what is service mark registration, procedure, etc. Information about how to file service mark in any part of India, is given separately in sections below.

The Trademark Search is the task or process of going through all the databases of the previously registered and filed trademarks and service marks in the entire country, in order to ensure that the newly invented service mark is unobjectionably different from those all. The prior trademark search and infringement analysis are recommended to ascertain acceptability of the filed service mark for proper registration. Other processes existing during the entire registration procedure, are also described in a separate section placed below.

Filing Application for Registration

Based on the very location of the applicant service-providing company, selection of the zonal trademark registry office for filing the application for registration is made, which could be any of the five regional trademark offices situated in Mumbai, Kolkata, New Delhi, Chennai, or Ahmedabad. Any of these provincial trademark registry offices of India performs and regulate registrations of trademarks and service marks strictly as per the provisions, rules, and regulations which are provided in the new Trade Marks Act of 1999 and the Trade Marks Rules of 2002, and all amendments made to these so far. Today, brisk and secure e-filing facilities are also available.

The application form for seeking registration of any newly devised service mark, is the Form TM-1. The vital and most significant documents and particulars to be submitted along with this application form, are the following:

• A Soft Copy of the newly invented service mark in JPEG format
• The prescribed Registration Fee
• Necessary details about the applicant Company and its Business
• Information about the Trademark Agent or Trademark Lawyer
• Power of Attorney (POA)
• Information about the Service Mark, along with its Class
• Class and Date of the very first use of the current service mark
• Priority Documents, if any
• And, other documents, if need be.

The Procedure for Registration

On receipt of a perfectly well-completed application regarding a service mark registration, the recipient regional office of trademark registry will examine the contents of the application and the filed service mark, and verify all documents given. If anything is found incorrect or faulty, then the office will promptly inform about this to the applicant for getting the drawbacks removed. After rectification in the application, if the office gets satisfied with the perfectness and uniqueness of the application, then the application is published in the Indian Trade Marks Journal for a period of three months, for the purpose of knowing the opinions of the owners of all previously registered and filed service marks in entire India. In case, there is found no objection to the published service mark during this period of three months, then the service mark is finally approved for proper registration. But, if there are objections moved up by some companies (through Form TM-5), then, sorting out of all tangles is completed first (through explanatory discussions in presence of the applicant, opponents, and the judicious members of the Opposition Board), before giving final permission for registration of the forwarded service mark.

Here it is noteworthy that only a duly registered service mark can be adorned with the symbol ® [an encircled capital R]. No company can lawfully use this symbol ® for distinguishing its services, when the registration of the service mark is not fully completed, though it has been filed for registration. During this period, a company can use the symbol SM for identifying its services in the markets concerned.

Time-span and Cost for Registration

After perfect procedural filing of the application for registering a service mark, any regional trademarks office of India, is expected to grant the certificate of registration within a year, in normal cases. But, if the forwarded service mark is defective or invading on other registered or filed service marks within India, then there is certain that some more months will be elapsed in resolving all conflicting affairs. As far as the cost of registration is concerned, it covers the prescribed governmental fee, consultation fee with lawyer, and charges for preparing, filing, prosecuting, and tackling opposition cases. At present, the prescribed fee for registration of a trademark or service mark is INR-3,500/- in any class. All other charges mentioned above, are taken quite reasonably by ours decent and generous lawyers of international repute.

Validity of a Service Mark and its Renewal

All zonal trademark office of India, and most of the international and national-level offices of the world, provide recognition and protection to the perfectly registered trademarks and service marks for a period of ten years, which is counted from the date of registration. Therefore, all concerned companies and firms essentially require to renew their registration of trademarks or service marks well within this tenure of ten years. Every such renewal extends the validity and recognition of the registered service mark (or trademark) for another ten-year period. Therefore, punctual service mark renewals are absolutely essential for availing all rights granted by the trademark authorities consistently in all future years, within entire India. A renewal of service mark is duly payable within ten years from the date of its registration, or from the date of previous renewal.

The application form for making (punctual) renewal is the Form TM-12, which is to be submitted along with a renewal fee amounting to INR-5,000/-. Some penalty fines are taken for belated renewal of trademarks and service marks. The surcharge for any belated renewal is at present, INR-3,000/-, which is to be remitted along with the Form-10.