Protecting your intellectual property has become more important than ever before as we move forward into an increasingly digital age. Properly registering your trademark puts the rest of the business world on notice that the design, word, name, or symbol you are using to identify your goods or services is your official and legal trademark, and it acts as evidence of your exclusive right to use your marks; potentially vital if another business later infringes on your rights.
The registration process in India is a ‘first to file’ basis. Therefore, it is important to apply for registration as soon as possible. The registration of a trademark confers upon the owner the exclusive right to the use of the trademark in relation to the goods or services in respect of which the mark is registered. It further helps to indicate the exclusive ownership by using the symbol (R) and seek the relief of infringement in appropriate courts in the country.
Before filing a trademark application, it is necessary to identify the classes in which you wish to seek protection for your trademark. The classes under the Nice International Classification system divides different types of goods and services into different classes. There are a total of 45 classes within which Classes 1-33 are reserved for goods and Classes 34-45 are reserved for services. A trademark usually takes 18-24 months before it gets registered.
Trademark applications are handled by the Office of the Controller General of Patents, Trade Marks, Industrial Designs and Geographical Indications, with the branches of these offices at Mumbai, Kolkata, Ahmedabad, Delhi, and Chennai. The application must be filled based on the territorial jurisdiction of the business of the Trade Marks owner.
The process of filing a Trademark application:
- Select a Trade Mark Attorney: Brand owners are only allowed to file a trademark application if their place of business is in India. If this is not the case, they must file a trademark application through an agent or attorney. The agent or attorney usually takes care of the initial steps such as searching, preparing, filing and prosecution of the trademark.
- Availability of the Trade Mark by conducting a TM search: The first step before the registration process is to determine whether the brand name is eligible for registration by way of conducting a clearance search. This is done to ensure that no similar trademark exists with the office of the Controller General.
- Filing the application form: If the trademark agent has the power of attorney from the right holder he can complete and file the application form. The form will require details such as name and address of the proprietor, a description of the goods and services associated with the mark, whether the mark is in use and a copy of the mark.
- Review of the application: The Trade Mark office reviews the application to see if it is complete and then allots the application a number.
- Preliminary approval and publication, show cause hearing or rejection of the application: The Trade Marks Office determines if the application is fit to proceed for registration or requires objection either on absolute or relative grounds for refusal as prescribed in the Trade Marks Act, 1999. If there is an objection found based on the preliminary checks, they issue an examination report. This report needs to be replied by the Trade Marks Agent within a period of one month. Depending on this reply to the examination report, the Registrar/Examiner determines whether the application must be accepted, rejected or put up for show cause hearing. During a ‘show cause hearing’ subject to the facts, an application might be rejected, accepted or accepted with certain limitations. If the application is rejected, the applicant can appeal to the Intellectual Property Appellate Board.
- Accepted & Advertised: If the application is accepted by the Examiner, then the application proceeds to be published in the Trade Marks Journal. The Journal is a public document which is open to the public for objection to ensure that no similar mark is granted protection. In case the public finds any similarity in the advertised marks with their prior registered trademarks, they can file an opposition against it. An opposition by a third party can be filed against the published Trade Mark within four months of the Journal’s publication date.
- Registration: If no opposition is filed against the mark, then it will proceed for registration and the Trade Marks Registry will proceed to give a registration certificate.
- Renewal: A Trade Mark can be renewed every 10 years. The date of renewal is calculated from the date of filing the Application with the Trade Marks Registry.
- Fee: The official fee for a new trademark application for specification of goods or services included in one class is INR 9000 for E-filing and INR.10000 for physical filing. A reduced fee of INR 4500 for E-filing and INR 5000 for physical filing has been prescribed for individuals, start-ups and small enterprises.
For more information on trademarks, please contact us at – [email protected]