Steps For Trademark Registration

STEPS FOR TRADEMARK REGISTRATION

STEPS FOR TRADEMARK REGISTRATION

A trademark is a word, unique symbol, combination of characters etc. that a company uses to distinguish its goods or services from those of others in the market. Registering a trademark helps prevent competitors or others from duplicating or imitating your goods or services, ensuring the uniqueness of your brand.

We provide trademark search services in India and offer guidance on whether a specific mark can be adopted and registered. This service is valuable if you haven’t started using your mark yet, as a clearance search will help you determine if your proposed trademark can be used without infringing on existing trademarks. It is crucial to avoid spending time and resources building a brand only to realize it must be changed, which could lead to significant complications.

As an initial step, you can conduct your own preliminary search by checking the trademark database for the exact mark you intend to use.

 

TRADEMARK REGISTRATION PROCESS

1. Initial Trademark Search

At Mahtta & Co., we aim to simplify the trademark registration process. We offer a free trademark search for your proposed mark to help you assess its potential for registration in India.

2. Preparing Your Application

If the results of the search are favorable and your mark appears registrable, we will proceed with preparing your trademark application.

To assist in the preparation, we will require the following details:

Name or visual representation of the mark/logo/device

  • Applicant’s name
  • Applicant’s address and nationality
  • Type of business entity (Proprietorship, Partnership, Corporation, LLP, etc.)
  • A description of goods and services (we will determine the relevant class for your products)
  • Usage details (whether the mark is currently in use or intended to be used in India)
  • Power of Attorney (General or Specific)
3. Filing Your Application

Once everything is ready, we will file your application with the Trademark Registry Office in India and send you an email confirmation.

You will receive a trademark application number, which you can use to track the status of your application on the official website.

Please note, once the application is filed, changes to the mark or the goods listed are not allowed. Therefore, it’s important to ensure the goods listed accurately represent your products at the time of filing.

4. Examination Process

After a trademark application is submitted, the examiner reviews it for any discrepancies. The examiner can either accept the trademark outright, accept it with conditions, or raise objections if any issues are found. Objections may arise under Section 9, Section 11, or both, depending on concerns related to distinctiveness, potential for confusion, and conflicting trademarks. Additionally, formal objections may be raised if the application has incomplete or incorrect documentation, which can delay the registration process. As per trademark rules, the applicant is given one month to address any discrepancies or objections.

If the trademark is accepted without conditions, it will be published in the Trademark Journal. However, if the trademark is not accepted unconditionally, the applicant must respond to the examiner's provisional refusal or objections by filing a reply. The applicant is given one month to resolve these issues. Once the response is accepted, the trademark is published in the Trademark Journal. If the response is not accepted, the examiner may schedule a show cause hearing. The applicant can request a maximum of two adjournments by filing a TM-M form. If the examiner determines the trademark should be registered during the hearing, the process continues with publication in the Trademark Journal.

Section 9: Grounds for Refusal of Trademark Registration

A trademark may not be registered if:

  1. It includes geographical locations, monuments, or other similar elements.
  2. It describes the kind, quality, or nature of the product.
  3. It contains scandalous or offensive content.
  4. It may offend the religious sentiments of any group in India.
  5. It is identical to or imitates an armorial bearing, flag, emblem, name, initials, or official sign of a state or international organization, unless authorized by the relevant authority.

Section 11: Grounds for Refusal or Objection by the Registrar

The Registrar may refuse or object to a trademark application on the following grounds:

  1. The trademark is identical or similar to an existing trademark for similar goods or services.
  2. Its use is likely to deceive or cause confusion.
  3. The application is made in bad faith or with malicious intent.
5. Trademark Publication

The trademark publication step is a crucial part of the registration process, allowing others to challenge the registration. This publication gives third parties the opportunity to oppose the registration. If no opposition is filed within four months of publication, the trademark proceeds to registration.

5.1 Opposition Period

Once a trademark is published in the Trademarks Journal, any individual has the right to file a notice of opposition against the registration within four months.

5.2 Written Submission

If the applicant receives an opposition within the four-month window, they must submit a counterstatement within two months of receiving the opposition notice. Failure to do so will result in the trademark application being marked as "Abandoned." If a counterstatement is filed, the opponent must submit their evidence within two months of receiving counter statement notice. If they fail to do so, the opposition will be considered abandoned. After the evidence is submitted, a copy must be provided to the applicant, who will then have two months to file their own evidence from date of receiving of opponent evidence after that, The opponent will have one month to submit a rebuttal upon receiving the applicant's evidence.

5.3 Opposition Hearing

The opposition hearing is one of the final stages in the trademark opposition process. Both parties are given the chance to present their arguments. After reviewing both sides, the hearing officer will issue a decision. If the decision favors the applicant, the trademark will be registered. If the decision is against the applicant, the trademark will be denied.

In the event of an unfavorable opposition order, a review petition may be filed before the tribunal within one month. Furthermore, an appeal against the order can be submitted to the High Court within a period of three months.

6. Trademark Registration

If no opposition is filed, or if the opposition is resolved in favor of the applicant, the trademark will proceed to registration. The trademark will be registered for a period of 10 years from the filing date, and a registration certificate will be issued. Once registered, the applicant can use the ® symbol to indicate the trademark's registered status.

7. Term and Renewal

A trademark can be renewed every 10 years by paying the appropriate renewal fees. Failure to renew the trademark will result in its removal from the register. Each renewal term lasts for 10 years.

Conclusion:

Trademark registration is essential for businesses to protect their brand identity and maintain a competitive edge in the market. The process involves several steps, including conducting a trademark search, filing an application, addressing objections, and navigating potential oppositions. Successfully registered trademarks ensure exclusive rights to the owner for 10 years, with the option for renewal, providing long-term benefits. By securing a trademark, businesses can establish brand recognition, prevent misuse, and foster trust with their audience.