REGISTRATION OF TRADEMARK IN INDIA
Proper research is required for finding out a unique trademark for your business. We also need to identify the class of The trademark and whether such a Unique Identification mark is available or not. Many entrepreneurs do not comprehend the importance of a trademark search. One cannot avoid a trademark search just because they think that their design stands out. Therefore, a trademark search is paramount to check similar trademarks available. It gives a fair picture of whether your trademark stands a chance to be registered, sometimes a forewarning of the possibility of trademark litigation. Hence preliminary advice and search are important. Indian Trademark Office Search: The Indian Trademark Office provides a free online search of its database. You can also do generic research on google and yahoo. One cannot proceed in case if there is a similar mark in the same class or classes if it matches a well-known mark. Steps mentioned below:
Step 1: Filing of an application
The process of entering The trademark in the register is known as registration. The application can be made to the registrar having jurisdiction .once the application is filed successfully. A single TM can be used for one or multiple classes of goods and services. information and documents required for filing of an application are –
the applicant’s name, address, and nationality, the name of all partners if its a partnership firm.
the state or country of incorporation If it is a company.
a description of the trademark of the goods and services for which it is required. Along with the soft copy.
If the mark is not an English word then its translation in English will be required
the power of attorney Signed by the applicant. though it is not required at the time of filing of an application can be filed at a later stage also.
statement of the user about the dates of first use. If use is claimed, an affidavit of use and documentary evidence must be filed electronically;
a statement of intention to use;
the official filing fee;
if the application wants priority over earlier filed convention applications a copy of that document will also be required. A duly certified copy or a notarized copy can be submitted.
Filing of trademark application requires the following forms to be completed: a) TM1
b) TM48 (In case you are acting as an agent/ attorney of the applicant)
The application fee and charges are provided under the first schedule, trademark rules 2017. It provides separate charges for physical filing and e filing Of which the latter is cost effective. Online registration can be done at https://ipindiaonline.gov.in/trademarkefiling/user/frmLoginNew.aspx. The application is received At The trademark head office or the branch office having jurisdiction.
According to “The International Nice Classification” established under the Nice Agreement, World Intellectual Property Organization – WIPO in 1957 all the goods and services should fall into a total of 45 classes. Classes 1-34 include ‘goods’, and classes 35-45 include ‘services’ as per the latest update the applicant can choose from the 45 classes. More information can be gathered from https://www.wipo.int/classifications/nice/en/.
Step 2: granting of application allotment number
Application allotment number is provided To the owner after which we can affix the symbol ™ to the distinct identification mark. the whole application procedure can be tracked online.
Step 3: Vienna codification
once the allotment number is provided, the trademark Registrar will apply for Vienna codification. This type is applicable for the non-text trademark application that contains a logo or an artwork. Such figures and logos are codified in accordance with the Vienna agreement.
Step 4 Examination of The trademark
The application is allotted to the examination trademark officer to check the application. The trademark officer has a right to accept the application or raise an objection. A Preliminary Examination Report (“PER”) together with Formalities Check Report (“FCR”) to the applicant wherein the Registrar would call upon the applicant to remedy the deficiencies and departmental objections.
Case 1: When no objections are raised
The application goes directly to Publication in the journal.
case 2: When objections are raised
As soon as the Applicant receives the examination report a Reply is to be filed within 30 days of raising the objection. It can be a form of a simple reply or in the form of an affidavit. If the Examiner is not satisfied he can issue ‘hearing notice’. It is given in the form of an affidavit. The applicant has to justify that that the mark is original and there is no overlapping with any other Mark. The hearing is quasi-judicial in nature. The hearings can be attended by the applicant or by his attorney. If the application is rejected again the appellants have a right to appeal in the Intellectual Property Appellate Board. The new Act provides for the establishment of an Intellectual Property Appellate Board for speedy disposal of appeal from Registrar orders and decisions.
Step 5: advertisement Of Trademark journal
Once the application is accepted it is published in the trademark journal. The trademark journal is published weekly and contains all the trademarks that have been accepted by the Trademark Registrar.
Step 6: the issue of registration certificate
The registrar can put limitations and conditions for the filing of the trademark if accepted. the public has a right to raise an objection by payment of a fee. They need to show some material grounds for their Objection. the proceeding is Quasi-judicial in nature. If it is found satisfactory after 4 months time period is given public objection the application moves for Issuance of the registration certificate. For the registered trademark symbol, ‘R’ has to be used. The new app has transferred the final authority for registration of certification of trademarks to the Registrar.
Rights of an unregistered trademark –
An unregistered trademark is still protected and can take civil relief. However, an unregistered trademark does not enjoy the statutory right of the violation. Hence, it is prudent to get trademark registration owing to the incentives given.
The time period of trademark registration is for a period of 10 years. The renewal can be availed for a further period of 10 years each. Unlike patents, copyrights whose life is for 20 yrs and 70 years respectively, trademark rights can last indefinitely if the holder continues to employ the mark. The proprietor should use and renew the trademark regularly. If the trademark is misused by others, he should file a suit for the violation and passing off and also take criminal action.
“An efficient and equitable intellectual property system can help all countries to realize intellectual property’s potential as a catalyst for economic development and social and cultural well-being. The intellectual property system helps strike a balance between the interests of innovators and the public interest, providing an environment in which creativity and invention can flourish, for the benefit of all.”