Trademark Registration Process in India

Introduction

A trademark could be in a form of a word, logo, device, brand, heading, label, ticket, name, or signature which is capable of distinguishing the goods or services of one entity from those of another. It can include the shape of the goods, their packaging, and the combination of colors, and it needs to be able to be visually represented. The Trade Marks Act of 1999 and the Trademark Rules of 2017 provide the legal basis for the registration, protection, enforcement, and upholding of trademark holders' rights, whether or not they are registered. These laws control the registration process.

Public Search for a Trademark

• Before filing an application for the registration of a trademark, the applicant must conduct a public search to ensure that no similar or identical trademark has already been taken by other owners. As there are hundreds of different types of trademarks available, it is important to make sure that no identical or similar trademark is available in the trademark registry.

Process of Trademark Registration

• A trademark registration application must be submitted to Trademark Registry. Applications can be submitted electronically or in person at the registrar's office. Trademark Registry's main office is located in Mumbai, with additional regional offices located in Delhi, Ahmedabad, Chennai, and Kolkata.

• Filing TM-A Form

• The first step in filing of an application is by submitting TM-A form for registration of trademark. One can file a single application for multiple classes or series trademark.

• Link for TM-A Form: https://ipindia.gov.in/writereaddata/Portal/Images/pdf/FORM-TM-A.pdf

Fees

1. For a / Startup/Small Enterprise/Individual; ₹5000 for physical filing and ₹4500 for online filing.

2. In all other case; ₹10,000 for physical filing and ₹9500 for online filing

Examination of application by Registrar

• After receiving the trademark application, the registrar will check to see if the mark contravenes any of the provisions outlined in Sections 9 or 11 of the Trade Marks Act, 1999. This includes checking to see if the mark is generic or descriptive in character, or if it is identical to or similar to another trademark.

• If registrar finds that the application violates any provision, the application will be objected and one may file a reply within 30 days to examination report against any objections to waive them off.

• If the Registrar is not satisfied with the reply of examination report, a hearing may be scheduled. Following the hearing, if the problems are still unresolved, the Registrar may reject the application or accept the mark and forward it for publishing in the journal.

Publication of Trademark in Trademark Journal

• If the registrar accepts the application either absolutely or subject to conditions, the application will be advertised in the trademark journal.

• Under Section 21 of the Trade Marks Act, 1999 read with Rule 42 of the Trademark Rules, 2017, a Notice of Opposition may be filed within 4 months of the date of publication by submitting a TM-O form and the required government fees, which are ₹3000 for physical filing or ₹2700 for online filing.

• These stages will not apply to you if no opposition is received within 4 months. Your trademark will be accepted and you will receive a certification of registration.

• If any notice of opposition is raised, a copy of said notice shall be served by the Registrar to the Applicant within three months of the receipt of same.

• The applicant is required to submit a counter statement as per Rule 44 of Trademarks Rules, 2017, by filing form TM-O within two months from the receipt of the copy of notice of opposition.

• The opponent, shall within two months from the service of a copy of counterstatement, either submit evidence by way of affidavit as per Rule 45 of Trademark Rules, 2017 or rely on the facts stated in the notice of opposition. If the opponent takes no action within two months, he shall be deemed to have abandoned his opposition.

• The applicant may rely on the facts in the counterstatement or provide proof in the form of an affidavit in accordance with Rule 46 of the Trademark Rules, 2017 within two months of the application receiving a copy of the affidavit in support of opposition. The applicant will be considered to have abandoned his application if he does nothing within the next two months.

Hearing on Trademark Opposition

• After the closer of the evidence, the Registrar shall give notice to the parties of the first date of hearing as per Rule 50 of Trademark Rules, 2017. After hearing from both parties, the Registrar will review the evidence and all supporting documentation before issuing an order either accepting or rejecting the trademark application. The hearing date must be at least thirty days following the first notice.

Certificate of Registration

• • The Registrar after acceptance of trademark application shall issue the Certificate of Registration and it shall include the Trademark and bear the seal of the Trade Marks Registry along with ®

  • The certificate of registration shall be valid for 10 years from the date of the filing of the application and it may be renewed by submitting an application, which must be done in Form TM-R and include the ₹10,000 government charge for physical filing and ₹9000 price for online filing.

Documents required for Trademark Registration

1. In case of Individual & Sole proprietorship

   • Duly Signed Form- 48

   • Copy of logo optional (In case of word mark).

   • Copy of Identity proof of the individual applicant like Passport, Aadhar card, PAN card etc.

   • Copy of Address proof of the individual applicant

1. In case of LLP/ Company/ Small companies or Start-ups

• Duly signed Form- 48

• Udyam Registration Certificate

• Partnership Deed or the Incorporation Certificate

• Copy of Identity Proof of the applicant

• Copy of address proof of the applicant

Author:  Rishabh Audichya, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

REFERENCES

1. Trade Marks Act, 1999

2. Trade Marks Rules, 2017

3. Official website of Intellectual Property Rights