Trademark Registration Process in India

by Compliance Calendar LLP compliance calendar

In India, there are cut-throat competition in almost all the fields of business. Every business is trying to leave behind its competitor by hook or crook. Just give it a thought, if you have built a particular brand by investing your time and money and later you find that some other businesses (potential competitor) have started using your brand or reputation in the market.

What will you do if you do not have Registered TM?

You can’t do much if you have not registered a Trademark of your brand name. In this case, someone is robbing your hard-earned brand reputation and Alas! you are unable to do anything. To avoid this terrified situation, it is recommended to register a trademark (TM) on IP Portal www.ipindia.gov.in If not, it has been observed in various cases that the business owners end up in protracted litigation/ TM Infringement cases.

Why to file TM Application to secure your brand name/ logo?

It is said that “the prevention is better than cure”. It is not that complex to register a Trademark. You just have to follow a few simple steps, as explained in this write-up, and you will have the much-needed legal protection of your brand name registration in India under the IPR Law.

LET US UNDERSTAND MEANING OF TRADEMARK AND HOW TO REGISTER IT?

What is Trade Mark (TM)?

The clause (m) of Section 2 of Trade Marks Act, 1999 provide an inclusive definition of “Mark” as - “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.

 

In this context we can say that:

 

A Trademark is a unique mark which is used to identify a specific Brand/ Company/ Business. It also distinguishes the goods or services of one’s business from others.

 

The Trade Mark Act, 1999 does not specifically defines the word Trade mark. However, the word “Registered Trademark” is defined under clause (w) Section 2 of Trade Mark Act, 1999 as - “Registered Trade Mark” means a trade mark which is actually on the register and remaining in force. That means a Trade Mark is not act as a protection for any brand until it is not Registered on www.ipindia.gov.in

How to register the Trademark (TM)?

1.      Choose a Trademark: The applicant who wants to register its Trademark has to select a Trademark to differentiate products and services in the market. It may be a Word, Device, Monogram, or combinations of them in all ideal cases. The trademark should be unique, non-descriptive, and different.

 

2.  Trademark Search Report: Irrespective the uniqueness of your mark, where the Trademark Department finds the mark as deceptively similar to already registered Trade Mark, he may refuse to register the same. Therefore, an in-depth Trademark Search is important prior to the submission of TM-A for TM registration. You may do Trademark search through the online portal of Government of India using this link https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx

3.   Sent for Vienna Classification: The Registrar of Trademark applies the Vienna classification to the trademarks having logos or Device marks (as the case may be).

 

4.     Application for TM Registration: Once the proprietor is satisfied with the TM search report, he can apply for TM Registration in Form TM-A. A Proprietor in TM application can be an Individual, a startup, a SME, or others.

 

The application shall be signed either by:

 

·         A Proprietor (in case proprietor is other than Individual – By its Authorized Representative);

·         A Legal Practitioner; or

·         A Registered Trademark Agent

Documents to be submitted along with Form TM-A (erstwhile TM-1):

·         KYC of the Proprietor/Partner/Director- PAN/Aadhar/Passport

·         Certificate of Incorporation (in case of a Company or LLP)

·         Udyog Aadhar/Udyam Registration Certificate (IN case of MSMEs)

·         Logo of the Brand (if any)

·         Power of Attorney – In case TM is applied by Trademark Agent or Attorney

 

5.      Examination of Trademark Application:

·         After submitting the application to TM Department, the Registrar of Trade Marks examine the application and make an Examination Report.

·         It is on the discretion of TM Department that it may accept the application absolutely, conditionally, or mark objection as per the merit of the each case.

 

·         Where the application is accepted by the TM department, it is sent for Publication in TM Journal and status changes from Accepted to Accepted & Advertised.

 

·         If the Examination Report contains objections under Section 9 or/and 11, a Reply to Examination Report is to be submitted within 30 days’ time period to satisfy the Registrar as to why the Applications should be marked as Accepted. The applicant instead of filing the Reply to Examination Report may also request directly Hearing skipping the Reply route.

 

·         If the Examiner is not satisfied with the reply filed by the applicant, a show cause hearing can be requested. On the other hand, if the Examiner is satisfied and believes that the trademark should be registered, he will publish it in Trademark Journal.

Note: There are generally three type of objections which may be raised by the TM officer in its Examination report, as follows:         i.            To rectify the clerical error in TM application: Where the TM Department finds any information is incorrect, incomplete or for any reason the application is required to be modified, he may object in Examination Report. The reply for this objection is filed in Form TM-M within 30 days from the date of receipt of Examination Report.         ii.            Objection under Section 9: Where the Examiner finds that the TM application is violating any clause of Section 9, the Examination Report is marked as objected under Section 9. The reply to this objection shall be filed in Form MIS-R within 30 days from the date of receipt of Examination Report.       iii.            Objection under Section 11: Where the Examiner finds that the TM application is violating any clause of Section 11, the Examination Report is marked as objected under Section 11. The reply to this objection shall be filed in Form MIS-R within 30 days from the date of receipt of Examination Report.

 

6.  Show Cause Hearing: As discussed, if the Reply to the Examination Report is not satisfactory, the Trademark Department will mark the application as ‘Ready for Show Cause Hearing’. The applicant has the right to attend the Hearing. Further, the applicant may also authorize his Trademark Agent/ Attorney to attend the Show Cause Hearing. The date of hearing will be intimated by the TM Department to the applicant’s registered E-mail. The hearing can be attended either physically or through video conferencing and may vary as per time as the situation has turned quite dynamic post-covid era.

7.    Publication on Trademark Journal: If the application is Accepted either directly or after filing a satisfactory reply to the examination report/ hearing, the proposed mark is published in the trademark journal. The public have an opportunity to Oppose the published Trademark within four months if they find that such Trademark, once registered, will affect their brand and its reputation. The opposition is filed in Form TM-O. The Applicant must file a Counter Statement with reply to the Opposition.

 

8.  Trademark Registered: If there are no objections or oppositions to the application (or set aside-if any), the Trademark Registration Certificate is issued. The applicant can use the symbol ® next to the logo/brand name.

We have tried to cover all the aspects of TM Registration Process. If you still have questions pertaining to trademark registration process which is not covered in this article as you find it too technical with lengthy procedure, we will make it easier for you.

Compliance Calendar LLP have a dedicated team of Professionals who are experts in the field of IPR Laws. Contact us on info@ccoffice.in or ping us at 9988424211 and we will be happy to assist you in all aspect from Preparation of TM Search Report till the Registration of your Trade mark at IP India Portal www.ipindia.gov.in

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Created on Jul 23rd 2022 11:24. Viewed 205 times.

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