Trademark Registration Process in India
In India, there are cut-throat competition in
almost all the fields of business. Every business is trying to leave behind its
competitor by hook or crook. Just give it a thought, if you have built a
particular brand by investing your time and money and later you find that some
other businesses (potential competitor) have started using your brand or
reputation in the market.
What will you do if you do not have Registered
TM?
You can’t do much if you have not registered a
Trademark of your brand name. In this case, someone is robbing your hard-earned
brand reputation and Alas! you are unable to do anything. To avoid this
terrified situation, it is recommended to register a trademark (TM) on IP
Portal www.ipindia.gov.in If not, it has been
observed in various cases that the business owners end up in protracted
litigation/ TM Infringement cases.
Why to file TM Application to secure your
brand name/ logo?
It is said that “the prevention is better
than cure”. It is not that complex to register a Trademark. You just have
to follow a few simple steps, as explained in this write-up, and you will have
the much-needed legal protection of your brand name registration in India under
the IPR Law.
LET US UNDERSTAND MEANING OF TRADEMARK AND HOW
TO REGISTER IT?
What is Trade Mark (TM)?
The clause (m) of Section 2 of Trade Marks Act, 1999 provide an
inclusive definition of “Mark” as - “Mark” includes a device, brand,
heading, label, ticket, name, signature, word, letter, numeral, shape of goods,
packaging or combination of colours or any combination thereof.
In this context we can say that:
A Trademark is a unique mark which is used to identify a specific
Brand/ Company/ Business. It also distinguishes the goods or services of one’s
business from others.
The Trade Mark Act,
1999 does not specifically defines the word Trade mark. However, the word “Registered
Trademark” is defined under clause (w) Section 2 of Trade Mark Act, 1999 as -
“Registered Trade Mark” means a trade mark which is actually on the register
and remaining in force. That means a Trade Mark is not act as a protection
for any brand until it is not Registered on www.ipindia.gov.in
How to register the Trademark
(TM)?
1.
Choose a Trademark: The applicant who
wants to register its Trademark has to select a Trademark to differentiate
products and services in the market. It may be a Word, Device, Monogram, or
combinations of them in all ideal cases. The trademark should be unique,
non-descriptive, and different.
2. Trademark Search Report: Irrespective the
uniqueness of your mark, where the Trademark Department finds the mark as
deceptively similar to already registered Trade Mark, he may refuse to register
the same. Therefore, an in-depth Trademark Search is important prior to the
submission of TM-A for TM registration. You may do Trademark search through the
online portal of Government of India using this link https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx
3. Sent for Vienna Classification: The Registrar of
Trademark applies the Vienna classification to the trademarks having logos or
Device marks (as the case may be).
4. Application for TM Registration: Once the proprietor
is satisfied with the TM search report, he can apply for TM Registration in Form
TM-A. A Proprietor in TM application can be an Individual, a startup, a
SME, or others.
The application shall be signed either by:
·
A Proprietor (in case proprietor is other than
Individual – By its Authorized Representative);
·
A Legal Practitioner; or
·
A Registered Trademark Agent
Documents to be
submitted along with Form TM-A (erstwhile TM-1):
·
KYC of the Proprietor/Partner/Director-
PAN/Aadhar/Passport
·
Certificate of Incorporation (in case of a
Company or LLP)
·
Udyog Aadhar/Udyam Registration Certificate
(IN case of MSMEs)
·
Logo of the Brand (if any)
·
Power of Attorney – In case TM is applied by Trademark
Agent or Attorney
5. Examination of Trademark Application:
· After submitting the application to TM Department, the Registrar of Trade Marks examine the application and make an Examination Report.
·
It is on the discretion of TM Department that
it may accept the application absolutely, conditionally, or mark objection as
per the merit of the each case.
·
Where the application is accepted by the TM
department, it is sent for Publication in TM Journal and status changes from
Accepted to Accepted & Advertised.
·
If the Examination Report contains objections
under Section 9 or/and 11, a Reply to Examination Report is to be submitted
within 30 days’ time period to satisfy the Registrar as to why the Applications
should be marked as Accepted. The applicant instead of filing the Reply to
Examination Report may also request directly Hearing skipping the Reply route.
·
If the Examiner is not satisfied with the
reply filed by the applicant, a show cause hearing can be requested. On the
other hand, if the Examiner is satisfied and believes that the trademark should
be registered, he will publish it in Trademark Journal.
|
Note: There are
generally three type of objections which may be raised by the TM officer in
its Examination report, as follows:
i.
To rectify the clerical error in TM
application: Where the TM Department finds any
information is incorrect, incomplete or for any reason the application is
required to be modified, he may object in Examination Report. The reply for
this objection is filed in Form TM-M within 30 days from the date of
receipt of Examination Report.
ii.
Objection under Section 9: Where the Examiner finds
that the TM application is violating any clause of Section 9, the Examination
Report is marked as objected under Section 9. The reply to this objection
shall be filed in Form MIS-R within 30 days from the date of receipt
of Examination Report.
iii.
Objection under Section 11: Where the Examiner finds
that the TM application is violating any clause of Section 11, the
Examination Report is marked as objected under Section 11. The reply to this
objection shall be filed in Form MIS-R within 30 days from the date of
receipt of Examination Report. |
6. Show Cause Hearing: As discussed, if the
Reply to the Examination Report is not satisfactory, the Trademark
Department will mark the application as ‘Ready for Show Cause Hearing’.
The applicant has the right to attend the Hearing. Further, the applicant may
also authorize his Trademark Agent/ Attorney to attend the Show Cause Hearing. The
date of hearing will be intimated by the TM Department to the applicant’s
registered E-mail. The hearing can be attended either physically or through
video conferencing and may vary as per time as the situation has turned quite
dynamic post-covid era.
7. Publication on Trademark Journal: If the application is
Accepted either directly or after filing a satisfactory reply to the examination
report/ hearing, the proposed mark is published in the trademark journal. The
public have an opportunity to Oppose the published Trademark within four months
if they find that such Trademark, once registered, will affect their brand and
its reputation. The opposition is filed in Form TM-O. The Applicant
must file a Counter Statement with reply to the Opposition.
8. Trademark Registered: If there are no
objections or oppositions to the application (or set aside-if any), the Trademark
Registration Certificate is issued. The applicant can use the symbol ® next
to the logo/brand name.
We have tried to cover all the aspects of TM Registration Process. If you still have questions pertaining to trademark registration process which is not covered in this article as you find it too technical with lengthy procedure, we will make it easier for you.
Compliance Calendar LLP have a dedicated team of Professionals who are experts in the field of IPR Laws. Contact us on info@ccoffice.in or ping us at 9988424211 and we will be happy to assist you in all aspect from Preparation of TM Search Report till the Registration of your Trade mark at IP India Portal www.ipindia.gov.in
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