Trademark Registration Process ~ Unique Legal Solution

Registration of Trade Marks in India

Registering a trademark an application need be made in the prescribed format for different classes of goods in services and fee payable therefore shall be in respect of each such class of goods or services.
Trademark registration in India used to take approximately about 18 months.
It is important to search at the trade marks registry whether any other similar mark is registered or is pending registration.
It is always recommended to take legal advises from Registered Trademark Attorney.

Application for the registration for other than a textile mark or for certification of Defensive mark must be made in triplicate in from TM 1.
Application must be confined to goods comprised in one class only of the fourth schedule to the rule.
A representation/ copy of the trade mark should be affixed to the application.
5 additional representations/ copies corresponding with the representation of the mark on the application must also accompany the application.
The additional representation must contain the class and the specification of the goods.
Name of the applicant, the period of the use, if any of the marks and such other particulars as may from time, be required by the registrar of Trade marks.
Signed by the applicant or Attorney/Agent of the applicant.
Where the applicant made for the registration of a series of Trade mark copies of representation to each Trade Mark of the series must accompany the application.
Always take legal advice from Registered Trademark Attorney for appropriate registration and documentations.

Applicant or his Attorney shall present his application to the Regional office for
Obtaining a Numbered Copy from Trademark Registry.
Examination procedure and communication are communicated after submitting application in order for registration.
Trade Mark Journal will carry the advertisement.
After three months from the date of advertisement in the journal, if no opposition is filed the application proceeds for registration after paying the prescribed fees and the registration is entered in the Register of Trade Marks.
Within a period of three months from the date of advertisement in the Trade Mark journal any person can give notice to the Registrar in form TM 5.
Period of three month can be extended by 1 month by filing request in TM 44 for extension. The copy of the notice is communicated to the applicant and he is required to file a counter statement in form TM 6.
Applicant had to file counter TM 6 within the stipulated time or the application is deemed to have been abandoned/ rejected.
Counter should be filed with evidence.
On completion of evidence, the registrar sends notice for hearing of arguments.
After completion of arguments the registrar pronounces the order.
The party aggrieved by the decision of the registrar may prefer an appeal to the High Court.
If no appeal is filed, the application proceeds for registration of the mark.

Descriptive words, surnames and geographical name are not considered.
Registration of a TM should not interfere with the bona fide use by any person of his own name business etc.
Prior user enjoys similar rights that are acquired by a person who has registered a mark under the Act.
Trade mark should not mislead the public as to the origin of the goods.
Trade mark to be registered shall not cause hardship to any one.
The life of a trade mark depends on its continuous use; non usage may lead to its eventual death.
Trade mark, whether registered or unregistered being a property is assignable and transmissible.
Opposition for granting registration of trade mark may be done even by members of the public.
The onus of proving a case for registration of trade mark is on the applicant of the trade mark.

An application for registration should contain:

The name and address of the applicant
His place of business
The goods or services in respect of which registration is sought and the classes in which they fall
Whether the mark is used or proposed to be used and any additional matter is required
Appropriate office of the Trade Mark Registry.

On receipt a serial number is allotted which is used as a reference number for the application and subsequently for the Trade Mark when registered.

The following are some of the objections to the application, which may be raised:

The application does not comply with any of the formal requirements and procedure under the rules.
The mark applied for is not a trade mark within the meaning of the statutory definition.
The mark is devoid of distinctive character or not capable of distinguishing or otherwise prohibited.
The mark offends Section 11 etc.

If the applicant or his Attorney satisfactorily meets all the objections raised by the office his application will be advertised in the Trade Mark Journal either as accepted or before acceptance.
As a condition for acceptance of the applicant, the Registrar may require any amendment for modification of the application to impose any condition or limitation as he may think fit.
In such an event the grounds for refusal or conditional acceptance has to be recorded.
The registrar however has powers to withdraw his acceptance subject to certain conditions.

Section 22 of the Act empowers Registrar to permit the correction of any error in the application or an amendment of the application.

Trademark has to be renewed for further 10 years after 10 years of registration, each time till the owner wish to continue it proprietary.
Renewals has to be before validity expires or within one year of expiry with penalties.
Any defaults in renewals beyond one year shall render ‘Lapse of Trademark’.

Trademark Registration Process