Things to Consider While Registering Trademark in India

Having an innovative approach and giving it a shape to withdraw certain benefits out of it be it in the form of Royalty, or financial benefit by setting up a business model based on such innovation, is a long process. However, the world is dynamic wherein with changing the pace of time, we need to protect our rights since the start of indulgence in the process of Innovation.

Working on a business model, building up a reputation in the market, that reputation therein brings you some benefit in monetary terms which is expected to increase with the growing time.

However, if that business model is used by another person also and he/she is also taking the benefit out of it, it impacts the original business developer in a very devastating manner. It leads to loss of originality, monetary loss and hurts the sentiments of the original business owner. Also if the Product is sold in the market with lower quality, it affects the brand value drastically.

This situation can be avoided by protecting the business name, identity, brand, logo, image, etc through registration under trademark registration as per the IPR Laws.

To start with firstly we need to understand what is a trademark?

Trademark as per IPR Act definition is Trademark defined under Section 2 (ZB) of the Trade Marks Act, 1999 as, “trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging, and combination of colors.” A mark can include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any such combinations.

Certain classes have been defined under the trademark act, which can be referred to exactly locate the type of trademark the concerned innovation fall in.

What is the Procedure for Trademark Registration?

Here the procedure of trademark registration

Step 1: Search for Trademark

In order to make sure that there is no identical or similar trademark already registered or for which an application for registration has been submitted, before filing the application to register a trademark it is required to be pre-checked by taking a per-search of the prior existence of similar work.

Step 2: Application for Trademark

The trademark application is to be filled by the proprietor /owner of the trademark in the trademark registry located in the territory of the POB (Place of business).

Step 3: Application Examination

The registrar will examine the trademark and check its innovativeness, and also check whether a prior trademark is pending or already registered thereafter issue the examination report.

Step 4: Publication

After examination, the registrar will publish the trademark and call for objection if any on it in Trade journal. Publication in a trade journal is done before and after acceptance of the application.

Step 5: Objections by the third party

The registrar shall receive the objection/ opposition notices from the third party within 3 months. (Note- it can be extended for another 1 month)

Step 6: Hearing of Objections received

Upon receiving the objection, the registrar shall scrutinize the application as per the objection raised and if found in favor of the applicant shall issue the Trademark Registration Certificate otherwise reject the application.

Is trademark registration is mandatory??

No. However if your trademark is not registered, you are protected against the infringement of your right. i.e. You cannot go to the court avail remedy available in law against such infringements.

The period for which trademark is issued:

Initially, it is issued for 10 years and thereafter it is required to be renewed within 6 months of expiry of such registration.

How to transfer or license the trademark?

A trademark can be transferred and licensed through execution of assignment agreement between the parties, getting it notarized and thereafter registering it with the Trademark registry.

In case the trademark is registered in other countries:

You are required to mention the date of use of such a trademark in the other countries while applying for the application of the Trademark.

What are the general documents required for Trademark Registration?

1. Form TM-48 (Power of Attorney)

2. Certified Copy of the application which is the basis of the convention priority (if applicable) may be filed within three (3) months from the Indian filing date.

3. A clear print of the mark or 10 prints of color mark

4. List of all Items/ Goods to which the Trade Mark/ Service Mark is applied or proposed to be applied for.

5. List of countries with data, where the Trade Mark/ Service Mark has already been applied for.

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