What is a Trademark (TM)?
A trademark is a logo, name, word or words, symbol, numeral, shape of goods etc. used by an individual or businesses to represent their business.
A registered trademark confers upon its owner a number of rights and advantages, such as :
- It confers statutory and exclusive right upon the owner of a mark;
- It helps in preventing infringement of the mark and/or passing off of goods/services;
- It advertises the products or services and creates image/goodwill in the market;
- It gives a unique identity to the brand, product or business;
- It builds up trust amongst the customers/members of trade for the products/services provided under the mark.
A pre-filing trademark search is carried out in order to ascertain the availability of a mark. We conduct a comprehensive trademark search and provide opinion on the chances of registrability of a trademark.
A single application for a mark/logo may be filed to cover different goods and/or services along with applicable fees. A trademark application can be filed either claiming prior use of the mark or on a proposed to be used basis. In case the mark has been in use, the date of first use of the mark and an affidavit in support of use of the mark along with evidence such as invoices, purchase bills, promotional material, advertisement material, etc., needs to be submitted at the time of filing.
Convention Application: Where the priority is claimed from the convention country, a certified copy of priority document is submitted at the time of filing (along with English translation, if applicable) or within 2 months from the date of filing.
If the mark is in a language other than Hindi or English, a precise transliteration and translation of each such word and/or number in English or Hindi is submitted.
A copy of MSME certificate/Start-up certificate, wherever applicable, is also submitted at the time of filing.
After filing a trademark application, the Examiner examines the application as per the provisions of the Trade Marks Act, 1999. The Examiner conducts a search to ascertain whether there exists an identical or similar mark in respect of same/similar goods/services in the record of the Registry. The application is examined on other grounds as well. If the Registrar finds any objection, an examination report is issued and the same is notified to the Applicant or its Registered agent/attorney. A reply to the same has to be filed within one month from the date of receipt of the examination report. If the Applicant fails to submit a response within the statutory period, the Examiner has the discretionary powers to treat the application as abandoned due to non-filing of response.
If the Examiner is not convinced with the written reply, hearing is appointed to give the Applicant another chance to present their oral arguments in favour of registration of its mark. For hearings, there is no concrete timeline prescribed under the provisions of the Trademarks Act.
Expedited Process of Application:
As per Trademarks Rules, 2017, a request on prescribed form may be filed for an expedited process of registration of a mark. The official fee for filing such a request is quoted below:
|Where the applicant is an Individual / Start-up / Small Enterprise (fee per class)||INR 20,000|
|In all other cases (fee per class)||INR 40,000|
The said request to expedite the process can be filed after filing the trademark application. Such an application shall be examined expeditiously and ordinarily within three months from the date of submission of the application. Thereafter, the following proceedings viz. the consideration of response to the examination report; scheduling of hearing, if required; publication of application in the Trade Marks Journal etc., till disposal of the application shall also be dealt with expeditiously.
When an application for registration passes the examination stage, it shall be accepted and advertised, whether absolutely or subject to conditions or limitations in the official journal of trademarks. The said journal is published every week on the official website of the Indian Registry. It gives an opportunity to the public to oppose the registration of the mark within the statutory timeline.
Once the mark is published in the official journal of trademarks, any person within four months from the date of publication may oppose the application by filing a suitable request at the Registry. The Opposition request shall be filed in Form TM-O along with prescribed fees accompanied by the grounds of opposition.
The Applicant may file a reply to the opposition/counter-statement within 2 months from the receipt of notice of opposition from the Registry. The Opponent shall, within two months from the date of receipt of notice of counter-statement from the Registry, shall file evidence in support or intimate to the Registrar that he does not desire to put forward evidence in support of opposition but rely on the facts stated in the notice of opposition. The Applicant also gets a chance to file evidence in support of his application within two months from the date of receipt of evidence filed by the Opponent or intimation that he does not desire to adduce evidence from the Registry. Within one month from the receipt of the Applicant s evidence or intimation, the Opponent may file further evidence in support of the opposition.
Hearing and Decision:
After the filing of evidence by both the parties, the Registrar issues a hearing notice to the parties. Any party may request for adjournment of hearing with the reason on Form TM-M along with prescribed fees. The Registrar, if he thinks fit, and upon such terms, as he may direct, may adjourn the hearing and intimate parties accordingly. Parties are not allowed to take more than two adjournments. If a party is not present on the hearing date and time, the application/opposition may be treated as abandoned.
Registration of Mark:
If no opposition is filed against the application within the prescribed limit of 4 months from the date of advertisement or if the application is opposed and opposition has been decided in favour of Applicant, the Registrar registers the said mark and issue a registration certificate. The registration date of the application shall be the date on which the application was filed.
A registered trademark is valid for a period of 10 years from the date of filing of application and can be renewed after the expiry of every 10 years for another term of 10 years. The registered proprietor may file a request for renewal in a prescribed manner along with official fees to renew the mark for a further period of 10 years. The renewal request may be filed at any time but not more than one year before the expiration of the registration.
Amendment in Details of Application:
The Applicant can file a request for amendment in his application upon payment of prescribed official fees. However, no such amendment is allowed, which shall substantially alter the mark applied for or substitute a new specification of goods or services not included in the original application.
The owner of a trademark has the power to assign its trademark for any consideration. A request may be made in prescribed form to assign the trademark. Along with the request to assign the mark, a duly certified copy of instrument or deed, as the case may be, purporting to transfer the title in the trademark and an affidavit to the effect that no legal proceeding is pending before any Court of Tribunal is filed. The Registrar disposes such requests after verifying the documents produced by the Applicant.