Trademark registration is extremely beneficial in protecting an entity’s brand identity and upon implementation of the Trade Marks Rules 2017, the filing and registration of trademarks in India is now fairly straightforward and time effective. The basic procedure involved is elucidated below.
The first step is to identify the trademark and conduct a prefiling search of the same on the database of the Indian Trademarks Office. This is done to assess if the proposed trademark is distinctive enough to be registered or if a similar and/or an identical trademark is already present on the Register of Trademarks, which could be a cause of concern while obtaining registration. Once it is certain that there is no conflicting mark on the database of the trademark office or that the conflicting mark can be overcome, one can proceed to file an application to register the trademark by filling the appropriate form.
The application can be filed as a single class application or a multiclass application. A single class trademark application is an application for registering a single trademark by an applicant in one class. Whereas a multiclass application allows an applicant to file a trademark application for a trademark across multiple classes in the same form. Trademark applications can be filed physically at the Trademarks office or through the comprehensive e-filing portal of the trademarks office.
Once the application has been filed, it is examined by the Ld. Trademarks Examiner to verify if the application has been filled in the proper manner and is in compliance of the provisions under section 09 and 11 of the Trademarks Act, 1999 and Trade Marks Rules. If an objection is raised by the Trademarks Examiner after the examination of the trademark application, then the applicant has to within one month of being served with the examination report, file its reply to the examination report to defend its application. Thereafter the application either gets accepted and advertised in the trademarks journal for a period of four months or a show cause hearing is scheduled for arguments to defend the application. If the Ld. Hearing Officer is convinced then the application is accepted and advertised and if not, then the application gets refused. However, if the application is in accordance to the statutory requirements then the application is directly accepted and advertised in the trademark journal for a period of 4 months.
The advertisement allows for any third party to oppose the trademark application if it observes that the applied trademark is similar/identical to its trademark. In case of an opposition proceedings, once the pleadings and evidence are completed, a hearing is scheduled and the application is either refused or proceeds towards registration. However, if there is no opposition then the application after the four months of being advertised, directly proceeds towards registration and a registration certificate is issued.
To continue to assert statutory rights in a registered trademark, a registered trademark can be renewed every ten years. There is no limit on the number of times a trademark can be renewed and can become everlasting if renewed timely.
Trademark protection is crucial for any brand that is providing its goods and/or services to the members of the public and ensuring that its unique trademarks for its products or services stand out in the market.
* For ease of reference, the forms and fees applicable at each step can be accessed here.