TRADEMARK
We provide trademark search and analysis services for clients seeking to protect their trademarks in India, Bangladesh and Myanmar. All our trademark search reports are accompanied by a trademark opinion that analyzes the possibility of registering the client’s trademark. Our systematic trademark search methodology and expertise in trademark law enable us to provide value-added Trademark search and Trademark analysis reports.
To meet our client’s global requirements, we provide specialized advisory services on trademark registration, searches, cancellations, oppositions, revocations and trademark prosecution, draft trademark-licensing agreements, and assignments, organize training programs for custom officers under the IPR (Imported Goods) Enforcement Rules, 2007, conduct anti-counterfeiting activities and market raids and other trademark litigation and enforcement.
TRADE MARK REGISTRATION
Prior search for a mark, is the most fundamental part of filing an application for a trade mark. Though not a procedural pre-requisite for application, it finds utmost importance in the fact that the acceptance of a mark for registration as a trade mark, depends on the distinctiveness of the mark. It is crucial to carry an exhaustive search in the Trade Marks Registry, to ascertain the uniqueness of the mark and eliminate all possibilities of duplication. It needs to be ensured that the proposed mark is not identical or even similar to any pre-existing mark which is either registered or pending registration.
Detailed prior search is also proof of honesty and good faith in adoption of the mark, during opposition and infringement proceedings.
Search
Prior search for a mark, is the most fundamental part of filing an application for a trade mark. Though not a procedural pre-requisite for application, it finds utmost importance in the fact that the acceptance of a mark for registration as a trade mark, depends on the distinctiveness of the mark. It is crucial to carry an exhaustive search in the Trade Marks Registry, to ascertain the uniqueness of the mark and eliminate all possibilities of duplication. It needs to be ensured that the proposed mark is not identical or even similar to any pre-existing mark which is either registered or pending registration.
Detailed prior search is also proof of honesty and good faith in adoption of the mark, during opposition and infringement proceedings.
Classification
The application for trademark needs to specify the appropriate class or classes of the goods or services, in relation to which the application is filed. The applicant needs to be careful in ascertaining the class of goods or services in his application as the Examiner needs to be convinced about the applicability of goods and services from a particular class or across classes to the application, and a broad or vague declaration can prolong the process of examination.
Selection
Selection of a mark is the fundamental part of the application. The mark needs to meet the qualifications enlisted in the Trade Mark Act and has to fall within the parameters of being a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or, combination of colours, or any combination of these elements, capable of being ‘graphically represented’ and indicative of a trade connection with the proprietor. It essentially needs to have a distinctive character capable of constructively distinguishing the goods and services of the applicant from others. The absence of uniqueness of the mark results in the refusal of the application.
Filing of Application
Application can be filed by a person or his IP Lawyer or any other person authorized in this respect at the Head office (at Mumbai) or branch offices (at Ahmedabad, Chennai, Delhi, Kolkata) of the Registry by delivery at the front office personally or by post, or submitting electronically through the gateway provided at ipindia.nic.in. The application has to be normally filed at the office within the territorial jurisdiction of which the principal place of business of the applicant in India is situated. There are certain applications which need to be filed directly at the Head Office.
Special care has to be taken of the fees, as non-payment results in treatment of the application as not-filed.
Numbering and Examination of Application
On receipt of the application, it is dated and numbered, and a copy is returned to the applicant/ attorney. The number assigned to the mark is the registration number post-registration. The proprietor is allowed to use the TM symbol after their application has been numbered.
The application is henceforth examined for the accuracy of the class in which it has been filed, the necessary documents that need to be attached depending on the type of application- registration of trademark for goods or services included in one class/different classes/with priority claim etc, details of the applicant and the proprietor.
Hearing
After the completion of the examination, the Trade Marks Registry sends the “Official Examination Report” to the applicant. The applicant may be required to reply to objections raised by the Examiner under Section 9 and Section 11 of the Trade Marks Act, in addition to clarifications regarding content of the application. Should the reply be insufficient to satisfy the Examiner, the applicant is granted a hearing to overcome the objections.
Publication in the Trade Mark Journal
The application is published in the “Trade Marks Journal,” after the post-examination hearing with the applicant. The journal is published by the Trade Marks Registry and is a Government of India publication. The application is granted registration if it stands unopposed after the publication in the journal for a period of four months.
In case, the publication is challenged, opposition proceedings commence, and the registration is granted only if the proceedings conclude in favour of the applicant.
Opposition Proceedings
Any person can file a notice of opposition against an application published in the journal, within a period of four months from the date of publication in the journal. The notice of opposition can be accompanied with supportive evidence.
An application can be opposed on the grounds provided in the Trade Mark Act. The Registrar is required to serve a copy of the opposition to the applicant, within two months of receipt of the opposition. The applicant is mandatorily required to reply within two months, failure of which will result in his application being treated as abandoned. The counter-statement is served to the opponent and usually the parties are heard along with consideration of the evidence provided by both parties.
The Registrar has the authority to decide the acceptance of the application for trade mark based on the hearing. The aggrieved party has the right to challenge the decision by filing an appeal before the Intellectual Property Appellate Board.
Registration
The application is registered, if it has been accepted and not opposed, or if opposed, has been decided in favour of the applicant. The applicant is issued a Certificate of Registration, and is henceforth allowed to use R along with the registered trade mark. The registered trade mark is valid for the next ten years from the date of the application for the mark.
Renewal
A registered trade mark can be renewed every ten years for an unlimited period on payment of renewal fees. The renewal request should ideally be filed with the Trade Marks Registry within six months before the expiry of the trade mark. It can also be filed up to six months after the expiry of the trade mark, along with the payment of the prescribed late renewal fees.