PROCEDURE OF TRADEMARK REGISTRATION IN INDIA
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PROCEDURE OF TRADEMARK REGISTRATION IN INDIA
Companies invest their precious time and money to create a respectable brand for themselves in the market. A distinct trademark plays a key role in helping brands establish their value. Trademark has been defined in section 2(z)(b) of the Trade Marks Act 1999 (Hereinafter TM Act 1999) that a “trademark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours.[1]
Registering a trademark is an important step to obtain legal protection and prevent infringement.
Documents required for Registration of Trademark:
- A copy of the Trademark/Logo
- Applicant’s Details, in case of a company, the incorporation certificate
- Description of the goods/service the mark is being registered for
- Class of trademark
- Form-48 i.e. Signed Power of attorney document.
The main steps that a company seeking to register its trademark must follow are:
Trademark Search: The first step is that the applicant must conduct a thorough search to ensure that there is no similar mark registered. An important pre-requisite for trademarks is that they must be distinct/unique to prevent confusion among consumers. This has an additional advantage as it helps companies avoid any litigation in the future.
Additionally, the applicant may approach their trademark attorney and sign a Form-48(Power of attorney) for further assistance in the matter.
Trademark Application: After creating a unique logo is that when an applicant decides on a unique symbol, they need to apply under S.18 of the TM Act 1999, to the Trademarks Registry within whose territorial limits, the head office of the company is situated.
Owing to digitisation, applications are now filled and submitted online. Once the application is filed, a receipt is sent to the applier immediately for future reference.
The government fee for registering a trademark in case of an individual or a start-up is 4500/- only. In case of any other applicant, the fee is 9000/- only.
Examination: In the third step, once an application is filed , the trademark registry meticulously examines the application to ensure complete compliance with the governing law.
Trademarks are accepted by the registry either unconditionally, conditionally or wholly rejected. When a factually distinctive trademark is unconditionally accepted, then it is officially published in the Trademark Journal. In case of conditional acceptance according to S.18(5) of the TM Act 1999, the registrar shall record the grounds/conditions and a time limit of 1 month is given to the company to fulfil the given conditions.
In case of refusal, similar to conditional acceptance the grounds for refusal and the materials used to arrive at the decision to refuse are recorded by the registrar.
Withdrawal of Acceptance: According to S. 19 of the TM Act 1999, The registrar may in certain scenarios choose to withdraw the acceptance of a trademark. Like if the application was accepted by mistake or in case of limitations/conditions which may negatively impact the acceptance,
Publication: The next step in the process according to S.21 of the act is that the trademark must be advertised. Advertising the trademark opens the application up to opposition. Any person, may within a period of 1 month from the release of the advertisement choose to submit a detailed application with grounds for his opposition. In case of an opposition application, the original applicant will be directed to submit their response statement within a period of two months. The registrar shall conduct a fair hearing and pronounce judgement on the same.
If there is no opposition, however, then the trademark proceeds for formal registration. According to S.23(1), the submission date of the application to register shall be deemed by as the date of registration.
Renewal: S.25(1) of the Act states that registration of the trademark is valid for a period of ten years but provides for renewal.
At the end of 10 years in accordance with S.25(3) of the act, the registrar shall send a notice and conditions. If the company fails to renew the trademark then the registrar shall remove the registration from the register.
CONCLUSION:
Registering trademarks is a simple process as explained above, however, is pivotal in establishing a brand. Especially in modern times, a registered and legally protected trademark ensures that a brand’s name registers with consumers across the globe, which then results in them choosing that particular brand over the others.
