Updated on: Nov 24th, 2021
8 min read
Trademark is a name, logo, symbol, or brand attached to a product or service. A trademark can include patterns, fonts, colour marks and acronyms. It signifies and differentiates a particular product or service from that of other products or services.
A mobile application (app) can also have a trademark. A unique name, logo or symbol may be attached to a mobile application by its developer. The unique logo or brand from which the mobile app is recognised is its trademark.
A mobile app is basically software designed to run on a mobile operating system on mobile devices such as tablets, smartphones and smartwatches. They are downloaded from specific app stores on different platforms. However, the manufacturers of smartphones may pre-install some mobile apps.
The developer/developing company of the mobile app will be its owner. The owner can apply for trademark registration of the name, brand or logo attached with the mobile app. The trademark registration for mobile apps can be obtained in India for the following:
In some cases, the developer can apply for trademark registration of both the name and logo/icon attached to the mobile app.
In the first instance, people recognise the mobile apps from their name or logo on the app stores. Thus, it is essential to protect the trademark of the mobile app from infringement by obtaining a trademark registration. Trademark registration of mobile apps also provides the following benefits:
It is essential to trademark mobile apps under the right trademark class to obtain complete protection against infringement. Thus, it is essential to apply for trademark registration of a mobile app under the correct trademark class. The mobile app owner has to mention the right trademark class for the mobile app while filing the trademark application in India.
Software and computer programs fall under class 9 of the trademark class. Thus, mobile apps are registered under class 9. However, registering under class 9 does not protect it completely from infringement. To get complete trademark protection, the owner needs to register it under trademark classes 42 and 9. Trademark Class 42 provides protection for software services.
Although trademark classes 9 and 42 have overlapping descriptions for software-related marks, if the mobile app trademark will be used for a downloadable mobile app, registering the mobile app trademark in both classes will provide the broadest protection.
The trademark owner also needs to mention the class in which the downloadable mobile app is providing service. For example, if it’s an educational app, the mobile app developer needs to additionally add class 41 along with class 9 and 42 as it covers educational services.
Further, registration of the Battlegrounds mobile app in class 9 is sufficient to provide trademark protection. However, registration in class 41 is also advisable, as the mobile games app connects to a server, and the user can play the game online.
Similarly, the registration of the YONO SBI banking app in Class 9 will not provide full protection. The YONO SBI app concerns banking transactions, and the services provided are classified as banking services under class 36 of the trademark class. As a result, to obtain proper trademark protection for the YONO trademark, it must be registered under classes 36 and 9.
When the user can use a mobile app to make calls or provide a messaging facility, it must be registered under trademark class 9 and 38 as class 38 protects telecommunications service. When the mobile app allows users to order food, it is better to register under classes 9 and 43 as class 43 covers restaurant-related services.
Therefore, registration of the trademark of the mobile app in the class of their related services will give them a wide range of protection compared to registering them only under class 9. The trademark registration grants better protection against infringement when the app is registered under all the applicable trademark classes.
The process of registering a mobile application trademark is as follows:
Selection of Unique App Name or Logo: The owner/applicant of the mobile app must select a unique app name or logo. A mobile app with a similar or identical name or logo of an already pre-existing popular mobile app or registered trademark will result in opposition to the trademark application. It may also result in the rejection of trademark registration.
Selection of Trademark Class: The applicant must select the right trademark class in the trademark application. The trademark can be protected only when it is registered under the right class.
Further, the Registrar of Trademarks may also raise an objection to the application if the wrong trademark class is mentioned. Thus, for registering the trademark of a mobile app, class 9 and class 42 must be mentioned along with the class in which it provides service.
Trademark Registration Application: The applicant must file Form TM-A for mobile app trademark registration. Multiple classes can be mentioned in the same application, and there is no need to apply separate applications for registering the mobile app under different classes. The applicant can file a trademark registration application either online or offline.
Publication of Mobile App Trademark: After filing the trademark registration application online, the Registrar of Trademarks will examine the application and publish the trademark of the mobile app in the trademarks journal. Any third party can oppose the trademark published in the journal. A third party can oppose the mobile app trademark in any one class or all classes.
Hearing on Opposition, if any: When there is opposition for the mobile app trademarks by a third party upon its publication in the trademarks journal, the Registrar of Trademarks will inform the same to the applicant.
The applicant must file the counter-statement for the opposition and submit evidence. The Registrar of Trademarks will hear both the applicant and the opposing party and decide on the opposition for the trademark registration.
Trademark Certificate Issuance: The Registrar of Trademarks will issue the trademark registration certificate upon passing an order of acceptance of the trademark on the opposition proceedings.
When there is no opposition for trademark registration within the specified period for making opposition, then the Registrar of Trademarks will issue the Trademark Registration Certificate for mobile app trademark under all the mentioned classes.
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