COMPLETE PROCESS OF REGISTRATION OF A TRADEMARK
|DOCUMENTS| PROCESS| REQUIREMENTS
WHAT IS A TRADEMARK?
A trademark is a one-of-a-kind symbol or word(s) that is used to identify a company or its products. Once licensed, the symbol or sequence of terms cannot be used by any other entity indefinitely, as long as it is in use and the necessary paperwork and fees have been charged. Unlike patents, which are issued for a 20-year term, trademarks are perpetual.
In today’s global economy, where products flow from competing businesses, a trademark informs a potential buyer about the trade source from which the goods come. It provides the buyer with a satisfactory guarantee of the make and quality of the item he is purchasing, even though the specific quality is not visible to the naked eye.[i]
REGISTRATION OF A TRADEMARK
Trademarks secure source identifications that manufacturers and merchants use to identify and differentiate their products from those of rivals.[ii]
When a trademark is exclusive to the products and services being offered, it may be licensed. Tendered trademarks that are substantially similar to or identical to a registered trademark cannot be registered. Furthermore, trademarks that are misleading, generic, insulting, identical, or contain exclusively protected emblems, among other things, are not allowed to be licensed.
The Controller General of Patents Designs and Trademarks, Ministry of Commerce and Industry, Government of India, registers trademarks in India. Trademarks in India are registered under the Trademark Act of 2016, which gives trademark owners the right to sue for damages if their trademarks are violated.
For more information, please contact us on info@trijuris.com or call us Mb. No. 85100 58386 or 9310 717274.
PERIOD FOR REGISTRATION OF A TRADEMARK
In 2010, Section 23[iii], which governs trademark registration, as amended. The amendment added a clause to the provision that states that if an application is approved and not objected to, or if opposed and determined in favour of the applicant, the Registrar must register the Trademark within eighteen months from the date of filing the application unless the Central Government directs otherwise.
Trademark registration is a lengthy process that takes between 18 – 24 months to complete if no third-party opposition is lodged.
CORRECTION OF CLERICAL ERROR IN THE CERTIFICATE OF REGISTRATION
The Act also allows for the modification or correction of any clerical error in the certificate of registration, stating that the Registrar has the authority to amend the register or certificate of registration to correct a clerical error or an apparent mistake.[iv]
RENEWAL OF A TRADEMARK IN INDIA
In India, a trademark may be extended for an indefinite period of time by paying the renewal fees, failing which the mark will be withdrawn from the Register of Trademarks. Each renewal cycle lasts for ten years.[v]
In India, the process for filing a trademark renewal application is as follows:
• If followed by the necessary renewal fees on the prescribed form, a request to renew a trademark in India may be filed within six months BEFORE THE EXPIRY OF THE REGISTRATION/RENEWAL TERM.
• If followed by the necessary late renewal fees on the prescribed form, a request to renew a trademark in India may also be filed within six months AFTER THE EXPIRY of the registration/renewal term.
RESTORING A TRADEMARK IN INDIA
If a trademark has been deleted from the Register of Trademarks due to non-renewal, it may be reinstated by filing an application for restoration of the mark in the specified form within six months and within one year of the mark’s last registration expiration date.[vi]
BENEFITS OF TRADEMARK REGISTRATION
The most significant advantage of possessing a registered trademark is the ability to protect one’s name and company by instrumenting to the compassion of one’s business. Furthermore, a good brand will serve as a direct connection between the consumer and the product by ensuring that they are trustworthy and associated with the company for a long time.
There are several advantages of registering a trademark, such as:
- Exclusive Right: The owner of a Registered Trademark has sole ownership of the mark. The owner will use the same for all goods that come under the applied class(es). Furthermore, the owner has exclusive possession of the Trademark and can prevent anyone from using it without permission in the same class in which it is licensed. It grants the right to sue someone who uses the Trademark without permission.
- Builds confidence and goodwill: The Trademark makes the proven standard of your goods and services known to all, establishing trust and goodwill among consumers in the market. It aids in the development of long-term customers who are loyal and still choose the same brand.
- Differentiates Product: It distinguishes the product by making it simple for consumers to identify it. It distinguishes your product and its brand from that of current and anticipated rivals and serves as an effective commercial tool. Your company’s or any organization’s logo may convey your vision, efficiency, or unique characteristic.
- Usage of the ® symbol on your logo: Once your Trademark is registered, you can use the ® symbol on your logo to indicate that it is a registered trademark and that no one else can use it. It is devoid of any and all kinds of uses and privileges. If the Trademark is licensed and anyone else uses it, you will have the option to sue the other party.
- Establishing an Asset: Registration of a trademark establishes an intangible asset for an organization, namely Intellectual Property. A trademark registration creates a legal right that can be sold, assigned, franchised, or commercially contracted. Furthermore, the Trademark is an intangible asset that benefits the business.
- Infringement protection: No rival or third party is allowed to use the trademarked wordmark or logo that you have licensed. However, if anyone uses it without the owner’s permission or in a dishonest manner, the owner may seek legal protection under the Act to prevent the individual from doing so.
For more information, please contact us on info@trijuris.com or call us Mb. No. 85100 58386 or 9310 717274.
PROCESS OF REGISTRATION OF A TRADEMARK IN INDIA
STEP 1: TRADEMARK SEARCH
The entrepreneur or trademark specialist must perform a trademark search of the trademark database before starting the trademark registration process. A trademark check will reveal whether or not a trademark is identical or similar to one that has already been registered with the trademark registry. It is best to seek the advice of an experienced lawyer who is well-versed in their field and capable of conducting a thorough search. If you believe you have a legal claim to a trademark, but it has already been licensed, you can consult an attorney.
STEP 2: CREATE A TRADEMARK APPLICATION
A. The trademark registration application should provide the following information:
- The “mark” to be licensed,
- The details about the trademark holders,
- And a list of products or services for which the Trademark will be used.
B. A trademark application may be submitted both online and offline. A Class III Digital Signature Certificate is required for the online application. In case of an offline application, a trademark application must be submitted to the Trademark Registry’s offices.
C. After filing an application for trademark registration, the Registrar will look for uniqueness in the name and review existing marks and pending applications to see whether any similar marks exist and to determine if the proposed mark is registerable under the law.
D. If the Registrar objects to the application being accepted, or if the Registrar proposes to approve the application with certain terms and conditions, additions, limitations, or other conditions, the applicant is notified in writing, and the applicant has three months to respond with their corrections.
STEP 3: ALLOTMENT OF TRADEMARK APPLICATION
Based on the results of the search conducted, a trademark application will be drafted by the trademark attorney, provided that your business name/logo is found to be unique. Within one or two working days of filing a trademark registration application with the Trademark Registrar, a trademark application allotment number is issued. The application for a trademark can then be tracked online using the Online Trademark Search Facility.[vii]
Typically, on obtaining a trademark application allotment number, the owner of the Trademark can affix the TM symbol next to the logo.
STEP 4: VIENNA CODIFICATION
When a trademark contains figurative elements/logo and is assigned a Vienna Code by the Indian Trade Mark Registry, the trademark status on the Indian Trade Mark Registry website is “Send to Vienna Codification.” If the Trademark includes figurative elements/logo, a Vienna Code is allocated as soon as the application is submitted. The Vienna code is allocated based on the figurative element’s nature. According to the Vienna Agreement, such figurative elements/logos are codified.[viii]
STEP 5: EXAMINATION
The trademark registration application will be assigned to a Trademark Officer in the Trademark Registrar Office until Vienna Codification is completed.
The examiner examines a trademark application after it is filed for any inconsistencies. The examination could take anywhere from 12 to 18 months. The Trademark can be accepted unconditionally, conditionally, or as an object by the examiner.
The Trademark is released in the Trademark Journal if it is unconditionally approved. If the application is not unconditionally approved, the conditions to be met or the objections raised will be noted in the review report, and a month will be granted to meet the criteria or respond to the objections.
STEP 6: PUBLICATION
The procedure of publication is included in the trademark registration process so that someone who objects to the Trademark being registered may raise an objection. If no opposition is filed within 3-4 months following publication, the Trademark may be registered. If there is conflict, the Registrar holds a reasonable hearing and makes a decision.
STEP 7: REGISTRATION CERTIFICATE
Following publication in the Trademark Journal, the application for trademark registration is processed, and a registration certificate bearing the Trademark Office’s seal is issued.
STEP 8: TRADEMARK RENEWAL
After every ten years, the Trademark may be renewed indefinitely. As a result, your logo or brand name registration will be perpetually secured.
FALSE REPRESENTATION OF TRADEMARK AS REGISTERED
According to Section 107, an individual who falsely portrays a trademark as registered is subject to imprisonment for a period of up to three years, a fine, or both.[ix]
POINTS TO BE KEPT IN MIND
- A trademark may be extended for an indefinite period of time by paying the renewal fees.
- The trademark registration process takes between 18 – 24 months to complete if no third-party opposition is lodged.
- Trademark Registration comes with several benefits like exclusive rights, goodwill, infringement protection, use of ® symbol, etc.
- A trademark may be reinstated by filing an application in the specified form within six months and within one year of the mark’s last registration expiration date.
- A false representation of a Trademark can land you in jail.
CONCLUSION
If you’re starting a new company or trade, the first thing you’ll do to set yourself apart is creating a logo, name, or signature. It is advisable to perform searches before filing an application for registration of a mark in India to ensure that the mark has not been used and registered by anyone else in India. As can be seen from the above, trademark registration in India is a simple procedure. It’s a basic procedure, but it’s crucial for brand name registration. Although the process of registering a trademark is time-consuming and costly, it is well worth the investment in legally defending your name.
[i]See P. Narayan, Law of Trade Marks and Passing Off, 5th Edn., [Calcutta: Eastern Law House, 2000] at 13.
[ii] Anna Wong, Big Business in Their Belfry: Congress to Dumb Down Dilution, 6 Loy. L. & Tech. Ann. 43, 45 (2006).
[iii] Section 23 of the Trade Marks Act of 1999.
[iv] Section 23 (4) of the Trade Marks Act of 1999.
[v] Section 25(1) of the Trade Marks Act of 1999.
[vi] Section 25(4) of the Trade Marks Act of 1999.
[vii] https://ipindia.gov.in/
[viii]http://www.wipo.int/classifications/nivilo/vienna/index.htm#
[ix] Section 107 of the Trade Marks Act of 1999.
For more information, please contact us on info@trijuris.com or call us Mb. No. 85100 58386 or 9310 717274.