What are the various stages involved in the registration of an Indian Trademark?
The Trademarks Law in India is governed by the Trade Marks Act, 1999. The Act provides for registration of any mark which is capable of being represented graphically as a word, device, label, numerals or combination of colors and capable of distinguishing the goods or services of one person from another. In other words, a trademark is a source identifier.An Indian trademark application goes through the following stages, till registration:
- Search (optional) : A trademark search for identical or similar marks may be conducted online and on the official website of the Trademarks Registry to determine if the mark is available.
- Filing : If it is determined that no similar Trademark has been identified, a trademark application is filed for the specification of goods/services for which it is being used or is proposed to be used.
- Examination Report: The trademark application is examined by the Trade Marks Office in about two to four (2-4) months” time from the filing date and objections, if any, are raised. These objections can either be raised on:
Absolute Grounds (distinctiveness, devoid of distinctive character, not capable of distinguishing goods or services etc.) and/or
Relative Grounds (similarity with earlier trademark already existing on the Trade Marks Register).
If no objections are raised, the mark shall directly be allowed to be advertised. (Stage 5)
- Response to Examination Report : If an examination report is issued, a response must be filed within one (1) month from the receipt of the examination report failing which the application is “deemed to have been abandoned” by the Applicant. If the Trade Marks Office is convinced with the response filed, the application is advertised in the Trademarks Journal. Alternatively, in case the Examiner has further objections, a show cause hearing would be offered to the Applicant.
- Advertisement : After examination, if the Examiner is satisfied with the response filed to the objection/s, the trade mark application is advertised in the Trademarks Journal. The Trade Marks Journal is hosted weekly on the official website.
- Opposition : Once advertised, the trademark is open for opposition purposes for a period of four (4) months. Incase no opposition is filed within this stipulated time period, the mark proceeds to registration.
- Registration & Renewal : The application shall proceed to registration if the trademark application is not opposed within 4 months from the date of advertisement in the Trade Marks Journal. The Trade Mark Registry will then issue a soft copy of the Registration certificate. The mark is registered for a period of 10 years from the date of filing of the application and can be renewed from time to time on payment of renewal fees. Each renewal term is for a period of 10 years.
Why is it important to identify the relevant classes?
Before filing a trademark application, it is necessary to identify the classes in which one wishes to seek protection for their trademark.An application should be made in the relevant classes of current goods/services as well as in classes where there is intent to use.The specifications are covered under the NICE International Classification of Goods and Services which are divided into 45 classes. It ranges from Class 01 to Class 45 (wherein Class 01 to Class 34 deals with specification of goods and Class 35 to Class 45 deals with specification of services.
Can an application be filed in more than one class for the same trademark?
The trademark application can be filed as a multiclass application or as separate single class
Is prior search before filing a trademark application advisable?
Before adopting a trademark, a trademark search is highly recommended, as this will give an indication of any existing trademarks which have been applied for/or registered in the Trademarks Registry. Accordingly, it is advisable to conduct a search on the official website of the Trademarks Registry as well as an online search to determine registrability of the proposed trademark
What can be registered?
Typically, the Trade Marks Office allows trademark registrations for a word, device, brand, numeral, single color, sound, 3D mark, shape of goods, label, packaging or combination of colors or any combination thereof.
What is a Well-Known Trademark?
The term “well-known trademark” refers to a mark which has become so well-known to the substantial segment of the public through its extensive and continuous use. Use of the mark in relation to any other goods or services by another party may be taken as indicating a connection between the two parties.Individuals/ Companies that have acquired immense brand value, reputation and goodwill in India through their trademarks should get the trademarks included in the list of well-known trademarks to safeguard themselves from future infringements and dilutions.
What is the criteria for determining a Well-Known Trademark?
The Registrar shall, while determining whether a trademark is a well-known trade mark, takes into account all the facts which he considers relevant for determining a trade mark as a well-known trade mark including the following factors:
- That the trade mark is well known to the public at large in India;
- The number of persons involved in the channels of distribution of the goods or services;
- The number of actual or potential consumers of the goods or services;
- The duration, extent and geographical area of any use of such trade mark;
- The business circle dealing with those goods or services.
- The record of successful enforcement of the rights in that trademark in particular, the extent to which the trademark has been recognized as a well-known mark by any court or Registrar under that record.