Trademark Registration in Indiaadmin
WHO CAN FILE A TRADEMARK
Any natural person or a Legal entity can file a trademark application in selected specification of goods or services.
The Applicant for trademark under Indian Trademark law can also foreign national and/or Legal entity as well. India is compliant to the Agreement on Trade-Related Aspects of Intellectual Property Rights and provides for protection of well-known trademarks and recognizes trans-border reputation. In order to file an application in India in the name of a foreign entity who does not have a principal place of business in India, an application can be filed through an Indian attorney. The jurisdiction and address of service under such a scenario is automatically fixed from the address of the attorney.
SELECTING A TRADEMARK
While selecting a trademark, the two factors to be kept in mind are the mark itself and the specification of goods and services the marks intends to cover.
An ideal mark should be distinctive and unique in nature, and should be not similar to an already registered mark. For selecting goods and services, it is important to understand the class under which the trademark would fall; At the moment, under NICE classification goods and services can be classified as 45 different types of goods and services. Classifications 1–34 are for products, and 35–45 are for services. It is to be noted that in India, Multiclass Applications are allowed.
Once you have successfully chosen a suitable mark for your company, a trademark search should be conducted to assess the feasibility of the selected mark being registered. A Trademark search is not mandatory, but is highly advised.
FILING OF TRADEMARK
Once a trademark has been finally selected, an application for trademark can be filed online. Following are the particulars to be kept in mind:
- Name of Applicant, Applicant type, Address, and nationality
- Type of Trademark i.e., Wordmark, Device mark, Label, composite mark, etc.
- Language of the trademark; the mark should be in English. If there are foreign words in the mark, translation and transliteration of the mark is to be provided.
- Class and specification of goods and services to be provided.
- User detail i.e. whether trademark has been in use prior to registration or is proposed to be used
- Address of Service
- Condition or Disclaimer with the mark (if any)
- Associated trademark (if any)
- In case of a Priority/conventional application, then priority details of the trademark.
- A Power of Attorney, required to be submitted at the time of filing of the application.
EXAMINATION OF TRADERMARK
Once the Application has been filed, it will be examined at the Trademark office, to see if it complies with all rules and regulations. The examination is conducted within 1 – 2 months to ensure the distinctiveness with prior and similar marks.
- Publication of Trademark: In case the trademark is in compliance, it shall be accepted and within 1-2 weeks be Published for Opposition in the Trademark journal. From the date of publication, the Trademark is open to third-party Opposition for a period of 4 months.
- Objection of Trademark: In case of any inconsistency, the application will be rejected and/or refused. An examination report is issued detailing the objection. These objections can either be raised on:
- Absolute Grounds: Devoid of distinctive character, Distinctiveness, not capable of distinguishing goods or services, etc.
- Relative Grounds: Similarity with any earlier trademark already existing on the trademark registration in india
Since the date of issuance of examination report, a response has to be filed within 1 month from a receipt of an examination report failing which an application shall be abandoned. If Trade Marks Office is not convinced with the response filed, the application is further listed for a one-on-one Show cause Hearing with the Examiner. Alternatively, in case the Examiner is convinced, the mark is advertised in the Trademarks Journal.
REGISTRATION OF TRADEMARK
The applicant will be issued a trademark certificate if the following conditions are met:
- If no Opposition is filed within four months of the trademark being published in the journal.
- In the event of an Opposition, an officer will issue an order of hearing in the applicant’s favour.
The Trade Mark Registry will then issue a soft copy of the Registration certificate. The mark is registered for a period of 10 years from the date of filing of the application and can be renewed from time to time on payment of renewal fees. Each renewal term is for a period of 10 years.