All you need to know about trademark registration
By Shruti Agrawal October 10, 2017
- Hire a Trademark Attorney
In India, the proprietor or his agent i.e. an attorney or a trademark agent can file a trademark registration application. Though, it is compulsory for those concerns to hire an agent that do not have business in India. It is strongly advised for other concerns as well to hire a trademark attorney. They are trained and highly skilled in conducting trademark search, drafting the application and identify the appropriate class of goods/services. He will also provide assistance in answering various queries put up by the Trademark Registry during the registration process.
A list of registered trademark agents can be accessed here:
- Trademark Search
To begin with, a trademark search must be conducted, though it is not compulsory. This is done to ensure that the mark the applicant intends to register as a trademark is not identical to any existing trademark. This can be done through the Trademark Registry, World Intellectual Property Organization’s database by using the following links. Although other private sources are also available, both free and paid.
Moreover, common law searches can also be done i.e. looking up on internet, yellow pages and directories, market surveys etc.
It is advisable to hire an experienced Trademark attorney for conducting trademark search as a trademark can be revoked even after it is granted on the grounds of being confusingly similar to an existing registered trademark.
- File the application
- For Indian Applicants
Identification of the class of goods/services
The registration process requires the applicant to identify the class of goods or services in which the goods/services, he is seeking trademark for would fall. The list of such classes of goods and services has been given in Schedule IV. There are total 45 classes. Class 1-34 deals with various kinds of goods while class 35-45 is concerned with services.
It is important to recognize broadly the possible classes of goods for which the trademark would be used as the trademark shall be protected only for those classes of goods and services (well known trademarks are an exception). However, as the fees for trademark registration depends upon the number of classes, choosing more than one class becomes expensive.Hence, one must choose very carefully the classes under which one requires the protection of trademark.
Who can file the application?
The application can be filed by the applicant (who is the proprietor of the business or the Company) or his agent who must either be a legal practitioner or a registered trademark agent.
Format of Application
The application for registration of trademark must be in prescribed format. The Act in the First Schedule provides for a list of different forms that are to be filed for application of registration depending upon the number of classes of goods/services, type of trademark etc. along with their respective fees. The same can be accessed here: http://ipindia.nic.in/tmr_new/first_schedule_forms/the_first_schedule.htm
Form TM-1, TM-2, TM-3, TM-4, TM-8, TM-22, TM-37, TM-51, TM-52 etc. are used for filing a new application for registration of different type of trademarks or trademarks for different number of classes.
Other Documents required for application
A certified copy of the Priority Application if priority is being claimed from an application filed in any of the country that is a member of the Paris Convention.
An affidavit along with evidences of usage of the trademark in India, where application is filed claiming usage of the trademark in India.
The Power of Attorney/Authorization if the application has been filed through your counsel.
Label of proposed trademark must be provided in standard label size i.e. 9cm x 5 cm.
Depending upon the nature of the business entity or concern, following details must be provided:
- Proprietorship Business: Full name, address of the proprietor and true copy of identity and address proof.
- Partnership Business: Full name, address of all the partners and true copy of identity and address proof.
- Company Business: Full name, address of all the directors and true copy of identity and address proof.
Where the documents should be filed?
Two options are available for filing the trademark registration application:
Option 1: The application can be filed in hard copy at the office of the Trademark Registry within whose jurisdiction, lies the principal place of business of the applicant.
Trademarks Registry, Mumbai
Intellectual Property Office, Post Office, S.M. Road, Antop Hill, Mumbai- 400037
Maharashtra, Madhya Pradesh and Goa
Trademarks Registry, Delhi
Intellectual Property Office, Plot No. 32, Sector 14, Dwarka, New Delhi- 110075
Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Delhi
Trademarks Registry, Kolkata
Kolkata Intellectual Property Office, CP-2,
Sector V, Salt Lake City, Kolkata-700091
Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim, Tripura, Nagaland, Andaman & Nicobar Islands
Trademarks Registry, Chennai
Intellectual Property Office
Andhra Pradesh, Kerala, Tamil Nadu, Karnataka, Pondicherry, Lakshadweep
Trademarks Registry, Ahmedabad
Ahmedabad National Chambers, 15/27 1st floor, Ashram road, Ahmedabad-380 009
Gujarat, Rajasthan,Damman, Diu, Dadra and Nagar Haveli
After the trademark Registry receives the application and other documents, a receipt is issued by them. Receipt/acknowledgement of postal application can now be obtained online as well at URL: http://22.214.171.124/eregister/eregister.aspx
Option 2: E-Filing
The applicants can also file the application for registration of trademark online by accessing the following URL: http://ipindiaonline.gov.in/trademarkefiling/user/frmlogin.aspx.
The User must first register at the E-Filing portal as a proprietor, agent or attorney by filling up the required information in a form and adding a class III Digital Signature Certificate (DSC) that can be obtained from the Certifying Authorities: (n) Code Solutions, TCS, Safe Script and E Mudhra. The user must then set a username and a strong password. After the completion of the registration process, the user would receive a confirmation mail stating the User Id and password that can be used to log in the account.
Once logged in, the user must follow these steps to file an online application:-
- Fill in all the details for MM2(E) application that includes:
a. Applicant's Detail
b. Appointment of a Representative
c. Basic Application or Basic Registration
d. Goods and Services
e. Priority Claimed
f. The Mark
g. Color(s) Claimed
h. Miscellaneous Indications
i. Designated Contracting Parties
2. Preview the drafted application
3. Add Digital Signatures
4. Make payment by clicking on the “Payment” link on homepage and choose the payment gateway e.g. NEFT, Credit Card etc. An acknowledgement will be automatically generated after successful payment.
5. The Receipt for payment can be obtained from Payment History by clicking on “Generate Receipt” option after two working days when the funds reach the government.
6. Similarly all other forms can be filled using DSC, attaching the necessary documents and making payments for the same.
Note: Detailed E-Filing user manual of Trademark Registry is available at: http://ipindiaonline.gov.in/trademarkefiling/UsefullDownloads/User_Manual_etrademarkfiling.pdf
- For foreign Nationals
- India has declared certain countries as convention countries that grant the citizens of India, same privileges as granted to its citizens. Only the foreign nationals of these countries can apply for trademark registration in India.
- According to section 154 of the Trademark Act, 1999, a person or company from a convention country may, within six months of filing an application in his home country, apply for registration of the trademark in India. If such a trademark is accepted for registration, the trademark shall also be deemed to be registered in India from the date of filing the application in home country.
- If the application of registration have been filed in two or more convention countries, the period of six months would be reckoned from the date on which the earliest of those applications was made.
- Although the recovery of damages for infringement of a trademark is possible only if the infringement takes place after the date of filing application for registration with the concerned trademark office in India, yet the deemed seniority in making application in home country may entitle the applicant to initiate an action in India for injunction, delivery of impugned labels and so on.
- Examination of Application
The Trademark Registry examines the trademark to ensure that it meets the criteria for registration. Examination takes place around 8-10 months after filing of the application. However, an applicant may apply for an expedited examination procedure for the scrutiny of his trademark application, stating reasons as to why such procedure is necessary. The registrar as per his satisfaction may allow or reject such a scrutiny. Also, the fees to be paid for expedited scrutiny is very high i.e. five times the normal application fees. If the registrar refuses the application, the fee is refunded to the Applicant.
The Trademark Registry in this step checks:
- Whether any mark, that is identical or deceptively similar to the mark applied for, already exists, in respect of the same goods and services or similar goods and services;
- Whether the legal formalities have been met in the application or not;
- Whether there is enough evidence of the “use” of trademark;
- Whether such a mark falls under any of the category mentioned in section 9 of the Act.
- Response to Objections and Publication
If after the examination of the application, the Registrar raises certain objections or points out non-compliance of certain conditions, a response is sought from the applicant. Usually, the objections can be replied to by giving a legal argument as to why should the trademark be registered, furnishing the necessary documents e.g. proof of first “use” of trademark, altering the class of goods/services for which the trademark is sought etc.
If the response filed by the applicant or his agent is accepted by the Registrar, the trademark shall be published in the Trademark Journal. If the response filed is rejected by the Registrar, he must give reasons for the same in writing and a hearing can also be requested. At the hearing, the Registrar may allow for the registration or reject it absolutely. If the Registrar allows, the Trademark proceeds for publication in the Trademark Journal. The trademark application shall be published in the Trade Marks Journal within six months of its acceptance by the Registrar.
- Opposition by Third Party
After the publication of a trademark in the Trademark Journal, an opposition proceeding can be initiated within 3 months of the date of publication. Opposition proceeding is used by third party to prevent the applicant from acquiring trademark of their already existing brand and avoid the risk of brand dilution.
It is a lengthy process that involves multiple exchanges between the applicant and the opponent. Following are the various steps of an opposition proceeding:
- The Opponent files an Opposition Notice by filling up Form TM- 5 within 3 months from the date of publication, extendable upto 4 months in case of re-publication of the trademark along with a fee of Rs. 2500/- at the Trademark Registry.
- The Trademark Registry office forwards a copy of the same to the Applicants or his agent/attorney.
- The Applicant of the Trademark application replies to this notice by filing a Counter-Statement on Form TM-6 to the Trademark Registry along with a fee of Rs. 1000/- within a period of two months, further extendable for another month from the date of receipt of Notice of Opposition.
- A copy of the Counter Statements is also sent to the Opponent by the Registry.
- If the Counter Statement is not filed within the prescribed time period, the application shall be deemed to have been abandoned.
- After a counter claim has been filed by the applicant, the opponent must within a period of two months (further extendable to three months) file the evidence of use and advertisement of mark to the Registry by the use of an affidavit supported by documentary evidence.
- The Opponent may also be required to send a copy of such evidence to the applicant in support of Opposition. The Evidence can be copy of bill books, advertisement, renewal application, account of profits etc.
- Further, the opponents are given another month’s time to file their evidence of the mark to the Trademark Registry and one complete set to the opponents.
- The applicants must file their rebuttal evidence within one month of receipt of evidence and documents from the opponent.
- Hearing before the Registrar
After completion of the above explained negotiations and formalities, a date for final hearing is fixed by the Trademark Tribunal wherein arguments by both the parties are addressed through their attorneys.
A fee of rupees 1000 must also be paid at this step.
The decision of the Trademark Registry is appealable to the Intellectual Property Appellate Board
- Registration of the Trademark
As per section 23, if no opposition is filed in the given time period or the opposition filed has been dismissed, the Registrar shall enter the trademark in the register and issue a Registration Certificate.
The trademark is valid for a period of ten years and can be renewed thereafter by filing Form-12 and on payment of renewal fees ranging between Rs 2500 to Rs 10000.
TIME TAKEN: The registration of a trademark in India typically takes about 2 to 3 years, subject to the trademark not being opposed by a third party. In that case, it may take another 8-10 months.
Cost involved: Trademark application fees are Rs 3,500 per mark per class. These are to be paid to the Trademark Registry.
Lawyers usually charge anywhere between Rs 1,000 to Rs 3,000 per mark per class in addition to that.
Trademark searches usually cost Rs 500- Rs 1000.
Government fees for other steps and forms in the registration process can be accessed here: http://ipindia.nic.in/tmr_new/first_schedule_forms/the_first_schedule.htm
Image Credits: https://www.rocketlawyer.co.uk/blog/protect-your-brand/
Image Credits: https://www.zepo.in/blog/2013/08/31/guide-how-to-register-trademark-for-your-brand-in/
Author: Garima Nagpal
where to register , Trademark , indian law , Trademark Registry , E-Filing , For foreign Nationals , Examination of Application , Response to Objections and Publication , Registration of the Trademark
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