Trademark Registration Process
The act or process of filing for trademark registration with the designated trademark office, both at national and international level is known as trademark application. In India, the trademark application process is governed by The Trademark Act, 1999 and Trademark Rules, 2002. As per section 18 (1) of The Trade Marks Act, 1999, any person claiming to be the proprietor of a trade mark in respect of the specified class of goods or services, can apply for trademark registration.
The trademark registration process in India being on ‘first to file’ basis, it is only prudent to apply for registration at the earliest.
The registration process is broken down into six stages and is overseen by the Office of the Controller General of Patents, Trade Marks, Industrial Designs and Geographical Indications.
Before a proprietor can proceed with the application process, it is necessary to ascertain if they have a place of business in India.
Foreign proprietors need to be duly represented through their chosen agent or trademark attorney in India; and while Indian proprietors can navigate through the process themselves, it is advisable they are guided by experienced trademark attorneys who can help get the work done more smoothly, and contest trademark prosecution, if it so arises in future.
The first step in the registration process is to conduct a trademark search, to draw up possible similar or conflicting marks as showing up in trademark databases, IP India, WIPO, etc.
This is done by selecting the class of goods or services represented by the trademark in question, and entering the said class number in the prescribed ‘public search’ field along with the word mark for which the application is to be made.
Additional internet searches, surveys, extended research, etc. also go a long mile in clearing the possible hurdles.
This is an extremely important process since it saves a lot of time and money of the proprietor, by protecting him from possible future lawsuits for trademark infringement, and also by smoothening the process for the proprietor for obtaining trademark registration.
This is the stage where the actual act of trademark filing takes place. The application is filed with the Trademark Registrar as per section 18 of The Trade Marks Act, 1999 and particulars such as full name and address of the applicant, a valid email id, statement of use (if applicable), a description of the goods and services represented by the mark, the relevant class or classes the proposed trademark belongs to, principle place of business, address for service in India (in case of foreign proprietors), type of mark, priority date claimed (if applicable), specification as to whether proprietor seeks registration of the trademark or statutory protection for it, a copy of the mark and signature, filled in prescribed forms (TM -1 and TM – 48).
If opting for e-filing, the applicant can register on http://www.indiaonline.gov.in and file a trademark application using either the new applications link for domestic applications or the IAOI (International Applications Originating from India) for Madrid Trademark.
The applicant can login using either the User ID or the digital signature (for this, a valid class 3 digital signature certificate would be required).
Once the requisite fee is paid, a payment acknowledgment is generated immediately and an application number, a day after payment is made.
For physical filing as well, the registration number is generated within two working days and the same can be used to track the trademark application status.
This is the most crucial stage of the registration process where the concerned officer examines the trademark application to determine if it is registrable or barred under absolute or relative grounds of refusal (as per sections 9 and 11 of the Trade Marks Act, 1999).
The examination process takes around 8-10 months after filing the application, and upon request made by the applicant, the same can be expedited by filing the prescribed form TM -63 and paying the requisite fee.
Trademark Journal Publication
Post-examination, the application may be accepted, rejected, or accepted with certain conditions as detailed in the examination report. In this case, the applicant needs to file a response to the objections raised (if any) within a month to avoid facing abandonment of the trademark application.
If the response filed by the applicant is accepted, the Trademark Registry proceeds with publication in the Trademark Journal.
Where the response is not accepted, a hearing can be requested, wherein the Registrar may accept or reject the application absolutely. If the application is rejected, the applicant can prefer an appeal at the IPAB.
If the response is allowed and accepted, the Registrar proceeds to publish the trademark application in the Trademark Journal.
Usually, after publication in the Trademark Journal, a time period of 4 months from the date of advertisement in the Trademark Journal is accorded to third parties to oppose the trademark application. The applicant needs to file his counter-statement to the notice of opposition in form TM-6 along with the requisite fee.
If no such opposition is filed in the said duration, the trademark registration certificate is issued, from which point it remains valid for 10 years after which, it needs to be renewed for another 10 years.
Though seemingly complicated and an admittedly lengthy process, trademark registration is an unavoidable yet necessary process intended to strengthen a mark’s brand value and market reach.
Particular/documents needed while filing a trademark application
- Name, address and nationality of the applicant/proprietor – in case of individuals, joint proprietors and partnership firms, the full name of the applicant (s) in question is required. For partnership firms, the full names of all the partners need to be mentioned as well as the mention of a minor partner, if any. The rules for registered companies, applicants of government departments and statutory organizations/public sector undertakings are mentioned here.
- Party type – Whether the applicant is a proprietorship, partnership, individual, HUF, body incorporated.
- The trademark to be applied for – Word mark, device mark, logo/label mark, composite mark, etc.
- Name/Image of the mark sought to be registered
- The exact date of use of the mark – In case of the same having being used by the applicant’s predecessor in title, the same has to be mentioned in the application. In case the trademark is proposed to be used, that also has to be mentioned clearly.
- Language of the mark – in case of the mark containing words in a language other than English/Hindi and/or characters other than Roman/Devanagari; translation and transliteration of the applied mark would be required.
- Class of goods or services in respect of which trademark is to be filed
- Two additional representations of the trade mark as well as description of the trademark (whether shape or colour trade mark)
- State of Jurisdiction pertaining to the trademark as well as details of address for service (in case of applicants not having a place of business in India)
- Single priority dates to be mentioned in case of Convention Applications, and separate applications to be filed wherever different priority dates are claimed
- Associated trademark (if any)
- Power of attorney under Form TM-48 of the Trademark Rules, 2002 to be executed in a stamp paper of Rs.100/- in case another person makes the application. While it is not mandatory to submit the same at the time of filing the application, it is to be duly notarized and filed within two months from the date of filing the application.
- If application is made for a collective mark on Form TM-3, TM-64, TM-66 or TM-67, then information pertaining to association of persons authorized to use the mark must be furnished along with the application using Form TM-49.
Moreover, with the recent introduction of the e-filing service of trademarks by the Indian Trademark Registry, now filing of trademarks along with uploading of particulars and relevant documents has become easier than before.