What is Trademark
Trademark includes any brand, logo, symbol, word or words, capable of distinguishing goods and services of one person from those of another. According to Section 2 (m) of the Trade Marks Act, 1999, “the “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof”. Trademarks are granted protection in India under Section 18 of the Trade Marks Act, 1999, which states that “any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark”. Also, one person can file a single trademark application with multiple classes of Goods and Services.
Registration of Trademark shall give the monopoly right to the proprietor to use and exploit the brand/trademark, and protect the trademark from any kind of illegal usage by any third party user, by initiating an Infringement suit against such use.
Requirements Of Trademark Registration In India
Requirements Of Trademark Registration In India
Any Individual/Company/Small Entity/Joint Applicant/Partnership Firm can file a trademark application in India by submitting proper documents; A duly filed Application form (TM-A) needs to be submitted; Jurisdiction to file the trademark application has to be accurate; Goods and services description along with the specific class has to be mentioned;
The description of the Trademark in case it is a stylized/logo mark; In case the Applicant is claiming prior use, then notarize user affidavit along with the proof of such use; Stamped Power of Attorney, in case there is an agent involved.
At Effectual Services, we provide trademark filing services and we monitor the filing without missing any update or deadline.Our team has highly skilled attorneys who are well qualified and experienced in trademark filing and prosecution.
Before filing the trademark application, we always prefer to search the availability of the mark by conducting a thorough search of the mark, and advise our clients regarding any modification or change, saving substantial costs and hassles at a later point.We always recommend our clients to conduct a search, before filing a trademark application for a better chance of registration.
Issuance Of Examination Report/ Provional Refusal
After filing the Trademark application, the same is listed for examination as per the provisions of the Trademarks Act, 1999. At the time of Examination,
If there is any objection raised by the examiner, then an Examination Report with details of such objection will be issued by the Examiner. Typically, the objection is raised as per the Absolute Ground of Refusal under Section 9 of the Trade Marks Act, 1999 or as per Relative grounds of Refusal under Section 11 of the Trade Marks Act, 1999. The Applicant has to file a reply to the issued Examination Report within one month from the date of notification. Also, a one-month extension to file the reply is allowed. After filing the reply, if the Examiner believes that the reply is accurate, then he/she accepts the application and if the reply is not satisfactory for the Examiner, then he/she will have the matter listed for hearing.
Trademark Opposition – Opposition Proceeding
The publication or advertisement of the trademark application for four months gives, a third party or any aggrieved person, a chance to oppose the registration of the trademark. The Opposition proceeding includes:
Filing of Notice of Opposition by any aggrieved party within the prescribed period of four months from the date of publication of the trademark in the trademark Journal. The Applicant has to submit a Counter-statement/Reply to the Notice of Opposition within two months from the date of notification of the Notice of Opposition.
The Opponent has to submit an Evidence Affidavit under Rule 45 along with the evidence to the Trademark Registry, as well as one copy of the same to the Applicant, within two months from the date of notification of the Counter-Statement. The Applicant has to submit Evidence Affidavit under Rule 46 in support of its application along with the evidence to the Trademark Registry, as well as one copy of the same to the Opponent, within two months from the date of notification of Opponent’s Evidence Affidavit. The Opponent has to submit a reply under Rule 47. An Opposition Hearing in front of the Opposition hearing board.
Comprehensive E-Filing Of Trademark
The Indian Trademark Registry introduced an e-filing option for the trademark application on its portal by uploading relevant documents online and payment of requisite fees. The portal of comprehensive e-filing of the trademark can be accessed at:
E-filing of Trademark makes it more convenient for both – the user and the IP department. Also, it is a nice kick start for a Digital Media campaign.
If the trademark application successfully crosses the Examination stage and gets accepted, then the next stage would be the publication or advertisement stage. In this stage, the trademark application is advertised in the Trademark journals for four months before registration.
The purpose of such publication is to invite any third party to file an opposition.
Trademark prosecution In India
Trademark prosecution includes stages of Examination, Publication or Advertisement, Opposition, Registration and Renewal.
Registration And Renewal
In India, the term of registration is ten (10) years. After ten years, the registrant can file a renewal application to extend the registration for another ten years. Non-filing of a renewal application will lead to the removal of the mark from the Register of Trademarks.