With respect to trademarks, India follows a first to use system i.e., prior use is one of the superior claims to any trademark litigation. The applicants must try and be the first in line to file to avoid the potential burden to oppose any earlier filed applications as unregistered marks have no right to file for infringement. The trademark application is filed on basis of the territorial jurisdiction as per the principal place of business of the said proprietor. Section 18 (1) of the Trade Marks Act, 1999 provides that “Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark.”
As per the Trademark Rules 2017, the trademark applicants are mainly classified into two categories. First category comprises of any individual, start up or small enterprises and the rest of the ‘others’ in the second category.
The rights conferred by a trademark registration are:
- Protection and exclusive right to use the trademark;
- To restrain and forbid every other person to obtain registration or use the same trademark or any identical or confusingly similar one in relation to their goods and services;
- To obtain relief on occasions of infringement (Remedial Right); and
- Power to license and assign the said mark.
Steps for a successful trademark registration process are as follows:
Preliminary Trademark Search / Trademark clearance Search / Pre-filing Search
This is the first and the most vital step in ascertaining the uniqueness of any mark. It helps to determine validity of a mark and thereby saves out on the time, labour and money spent on trademark lawsuits. A proper trademark search enables one to analyse the strength of the said mark in the market by identifying the phonetically or confusingly similar marks in comparison to the applied mark. Trademark searches can be conducted across the databases like IP INDIA, USPTO, EUIPO etc. Apart from this a general search on Google (Common Law Search) and a domain name search on GoDaddy website can also be performed to verify and confirm whether the mark is used as a domain name or not. If no proper search is conducted, then there will be an impending risk of trademark infringement suits, or a third party challenging the application or the ultimate rejection of the trademark application itself.
Filing of trademark application
The trademark application can be filed by any person who claims to be the proprietor of the trademark. As per the Trademark Rules 2017, the trademark application is to be submitted in Form TM-A to the Registry. The said application can either be filed on a ‘proposed to be used’ basis or on the basis of ‘use’ of the mark. Once the application is filed, a trademark application number gets allotted/generated. And from this point onwards, the owner or proprietor of the trademark can affix the TM symbol next to the said mark.
The said trademark application is then processed or scanned under the Vienna Codification. This stage mainly happens when the mark contains any symbols/ logos/ figurative elements. The Registry then assigns a ‘Vienna code’ to the mark as per the Vienna Agreement. This is basically to enable easy or smooth trademark searches to be conducted for logos/artworks.
Formality Check Fail
This is an intermediate stage prior to the proper examination phase wherein which the registrar examines the application for any formality errors like incorrect class, incorrect category, improper documents, incorrect goods & service description or any kind of improper information. This has to be replied back within thirty days from the date of receipt or else the application will be ‘abandoned’. And when the cited deficiency gets rectified, then the status of the Application will be marked as a ‘Formality Check Pass’.
Examination of Trademark application
The examination of application is mainly conducted to check and ascertain whether the applicant’s mark is distinctive, or is it conflicting with any of the already existing registered trademarks or the pending ones or whether there exists any possibility of deceptiveness etc. The Registrar then issues an Examination Report citing the objections against the mark (if any) or else can straightaway accept the said trademark application if no objections are found during the examination process. The whole examination process usually takes around 2-4 months. The prosecution process of the trademark begins at the point where an objection under Section 9 (Absolute Grounds of Refusal)/ Section 11 (Relative Grounds of Refusal)/ both is raised by the Registry in the examination report issued by the Registrar against the mark so filed.
Then a written response or reply to the Examination Report is to be filed along with the requisite evidence of distinctiveness so as to overcome the objections cited in the report. This has to be done within 30 days from the date of receipt of the examination report. In case if no reply is filed to the said Examination Report, then the application shall be deemed to be abandoned on grounds of non-prosecution.
If the Registrar after scrutinizing the reply, finds it satisfactory and appropriate, then the said Trade mark will in turn be advertised/published in the Trade mark Journal. But in case if the Registrar is not satisfied with the reply or if the objections are not waived even after the response, then he may in turn list the application for a show cause hearing on a stipulated date and time. If the said show cause hearing too turns out to be unfruitful, then the applicant can go for an appeal before the Hon’ble High Court.
Meanwhile the Registrar can also withdraw the acceptance granted as provided under Section 19 of the Trade Marks Act, 1999 in case if the said application was accepted in error or owing to any situation that the trade mark ought not to be registered or if it should be registered subject to fulfillment of certain conditions or limitations.
Publication/Advertisement (Section 20)
If the trademark application after clearing the examination phase gets allowed/accepted, then the trademark is advertised/published in the Trademark Journal so as to invite the public for filing the opposition (if any) against the registration of the said mark. The Opposition has to be filed within 4 months from the date of Publication/Advertisement. In case if there is no opposition, then the application further proceeds for registration. And in case if an opposition is filed within 4 months from the date of Advertisement, then the Registrar will give a fair chance of hearing to both the parties involved.
Opposition (Section 21)
The Opposition can be filed by anyone who has an interest in the registration of the trademark. The notice of opposition has to be submitted in writing in Form TM-O within four months from date of advertisement. After reviewing this opposition for all the formality requirements, the Registrar will serve this notice of opposition to the trademark applicant. Following which the trademark applicant is supposed to file a Counter Statement within two months from the date of receipt of the Opposition Notice. Within 2 months of the date of receipt of counter statement, the opponent can file evidences in support of opposition. Then within 2 months of date of receipt of evidence from the opponent, the applicant can in turn file evidence in support of the Counter Statement. Further, within one month of receiving the evidence in support of the Counter Statement, the opponent can file additional evidence in support of his Opposition. This is mainly for giving a proper closure to the entire opposition proceedings and also for the opponent to rebut the evidence so filed by the trademark applicant.
After completion of the filing of the evidences, comes the hearing stage. Herein the Registrar gives the decision after considering the evidences and hearing both the parties. This decision of the Registrar is appealable before the appropriate High Court within the jurisdiction of the Registrar who passed the said order.
Meanwhile the applicant can also apply (via Form TM-M) for any correction of error/amendment related to the trademark application as under Section 22 of the Trade Marks Act, 1999. Provided it is to be noted that no alteration of the said ‘Trademark’ or substitution of a new specification of goods & services ought to be made than that was actually present in the initial trademark application submitted to the Registry.
Final Stage- Registration
So in case if no opposition is filed or if the opposition filed is decided in favour of the applicant, then the Registrar shall register the trademark.
Thereby a Certificate of Registration gets issued in favour of the trademark applicant and now the ® symbol can be affixed next to the logo or trademark of the applicant.
The Registration is perpetual in nature subject to a timely renewal after every 10 years. The registered mark will remain valid and subsisting till ten years indefinitely and continuously subject to a timely renewal every 10 years, which if renewed the mark will be removed from Register. The Registration can also be cancelled on grounds of being wrongly granted and/or if its presence on register is in turn contrary to law or on occasion of continuous non-usage for five years from date of registration.
These steps will ensure higher chances of successfully securing a trademark registration. The next obvious question will be, how can one expedite the whole process and get a quick registration.
To know more about how to maximize the chances of getting a quick trademark registration click here.
About the Author
Authored and compiled by Divya S. (Intern, BananaIP Counsels)
This post is brought to you by the Consulting/Strategy Divisions of BananaIP Counsels, a Top IP Firm in India. If you have any questions, or need any clarifications, please write to [email protected] with the subject: Trademark
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