Registration of a trademark is not compulsory. However, registered trademarks have additional benefits when compared to unregistered trademarks. Registration of trademarks allows the Owner of the trademarks to file infringement suits for violation of his rights whereas the unregistered user has to search remedies in common law.
What is the procedure for registration?
The procedure for registration of a trademark is contained in Sections 18-24 of Indian Trademarks Act 1999. Trademark registration includes the following steps:
- Trademark Search
- Preliminary Advice by the Registrar
- Application Show all
There are totally 45 classes listed in Fourth Schedule of the Trademarks Act. Each class provides a list of goods and services and a trademark that is intended to be used for any goods or services has to be registered under the class that lists such goods or services.
Registration of a trademark in one class gives rights to the owner to prevent others from using the same or similar trademark with any goods or services relating to entries under that class. Registration of trademark in one class does not prohibit others to use or register the mark for entries in other classes. If any goods or services are not specified in any of the classes, the Registrar will have to discretion to determine the class under which a trademark used for such goods or services can be registered.
Trademark registration procedure starts with a ‘trademark search’. A trademark search can be done on the database at the trademark office. A person can either perform a trademark search on his/her own by paying the prescribed fee of Rs.400 for Fifteen Minutes or request the trademark office for an official search by paying prescribed fee of Rs.500 per mark per class. The official trademark search report takes a minimum period of one month. The report identifies registered trademarks that are same or similar as the mark for which a search is requested and gives an opinion about possibility of getting the mark registered.
Preliminary Advice by the Registrar
If not satisfied by the Search Report an application for preliminary advice by the Registrar shall be made in respect of any goods comprised within any one class in the Fourth Schedule by paying prescribed fee of Rs.1000/-.
Any person claiming to be the proprietor of the trademark used or proposed to be used by him can apply. The application may be made in the name of an individual, partners of a firm, a Corporation, any Government Department, a Trust or joint applicants. The proposal to use the trademark may be by a Company to be formed or by an individual. An agent/ advocate can file application on behalf of his client who empowers him through a power of attorney (Form TM-48) on Rs.100 Stamp Paper.
A Trademark application has to be made on TM1 in triplicate along with five additional representations of the Trademark for registration of single mark in single class by paying prescribed fee. In order to apply for more than one class, a Single application can be made on TM51 in triplicate along with five additional representations by paying prescribed fee per class. To apply for more than one trademark (Series of Marks) for same class of goods, a single application can be made on TM8 in triplicate along with five additional representations by paying the prescribed fee per mark per class.
On filing a trademark application an application number will be allotted.
The application is examined within one month from the date of application to check if it meets the requirements of the Trademarks Act 1999.
Requirements provided under Section 9 & 11 are as follows:
- Should be distinctive;
- Should not be descriptive;
- Should not be generic;
- Should not be deceptive;
- Should not hurt the religious sentiments of any class or section of the citizens of India;
- Should not contain scandalous or obscene matter;
- Should not contain marks prohibited by Emblems and names (prevention of improper use) Act, 1950;
- Should not be the shape of goods which results from the nature of the goods;
- Should not be identical with an earlier trademark;
- Should not be prevented by virtue of any law and in particular the law of passing off; and
- Should not be a well known trademark.
If the trademark meets all requirements of the Act, the trademark will be accepted for registration. If there are any objections, the registry will send an examination report stating the reasons for objection. The response to the objections can be filed within one month from the date of receipt of the examination report. The response can be sent by way of an affidavit and a hearing can be requested if necessary.
If the trademark is accepted for registration, the details of the application will be advertised in the Official Journal of trademarks within six months from the date of acceptance of application.
On advertisement, any person who believes that a trademark should not be registered may oppose its registration within three months from the advertisement date stating the grounds of opposition. All the requirements of the Trademark Registration are valid grounds for opposition. If no opposition is filed against the application, or if opposition is unsuccessful, the trademark will be registered.
Trademarks Registry of India will then send a Certificate of Registration and record the details of the trademark in the Register of trademarks. The trademark will be registered from the date of filing of application, not from the date it was examined or accepted.
Is it necessary to renew a trademark?
The term of protection of a trademark is unlimited. However, it has to be renewed every ten years from the date of filing to keep it alive. Non-use of the trademark for a period of five years would result in loss of the trademark.
Click here to check the latest registration process.
About BananaIP Counsels Trademark Attorneys
This post is brought to you by the Trademark and IP Transactional Strategy Divisions of BananaIP Counsels, a Top IP Firm in India. Led by Sanjeeth Hegde, BananaIP Counsels’ trademark attorneys are among the leading experts in the field. If you have any questions, or need any clarifications, please write to [email protected].
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