What is the process for registering a trademark?


Question by Prachi Kapte Dhillon, Amaya Arts Pvt. Ltd.

Jurisdiction – India

The previous post on the requirements of a valid trademark can be read here.

Step 1: Decide the mark

Deciding a mark that is unique and easily recognizable for customers is the first and the most important step. A ‘mark’ is broadly defined and includes a word, letter, image, shape, colour or phrase. Refer to this post for a detailed explanation on how to choose a mark.

Step 2: Trademark search

After a mark has been decided upon, the proprietor will have to ensure that it has not already been registered as a trademark by someone else in the desired class of goods or services. This can be done by using the public search tool on the website of the Controller General of Patents, Designs and Trademarks. Applicants need to enter the desired mark in the “value” tab and the class of goods or services. The class of goods is relevant because trademarks can only be registered for specific classes of goods or services. The different classes are available here.

For instance, if one wants to search if the trademark Nike already exists for class 25 (clothing, footwear and headgear), then the word “Nike” will have to be entered into the value tab and “25” will have to be entered in the class tab.

Nike Class 25

On clicking the search option, the pre-existing trademarks for “Nike” will be shown.

Nike Existing

Hence the mark “Nike” cannot be registered for class 25 because such a trademark has already been registered.

If, however, registration is sought for the mark “Nike” for class 13 (firearms; ammunition and projectiles; explosives; fireworks), then the search shows that no prior registered “Nike” trademarks exist for this class.

Nike Class 13
“Nike” search for class 13, i.e. firearms, ammunition, etc.
Nike Empty
No existing trademark.

Now the subsequent steps can be taken to proceed with the registration of the mark.

Step 3: Application

The application must be filled in Form TM-1 under the Trade Marks Act, 1999. A graphical representation (covered in detail here) of the mark must be submitted along with the application. The class of the goods or services must also be mentioned. The application fees is Rs. 2,500/-.

The application can be filed directly or through an agent; Form TM-48 must be submitted in case of the latter. It can either be filed in person at one of the five Trade Mark Registry offices (Mumbai, Delhi, Kolkata, Chennai and Ahmedabad) or online. E-filings can be made by proprietors, attorneys and agents. The step-by-step procedure for the same is available here.

After the application has been filed, the Registrar issues an application allotment number. Though registration is not yet complete, the symbol ‘TM’ can now be used with the trademark (registered trademarks are represented with an ‘R’).

Step 4: Examination

The Trademark Officer will examine the trademark and see whether it falls within any of the absolute or relative grounds for refusal of registration given under section 9 and 11, respectively.

An examination report is issued within 3-4 months. If any objections to registration are raised, the applicant will be given the opportunity to justify the same. If the applicant is unable to successfully defeat the objections, registration of the mark will be refused.

Step 5: Publication

If there are no objections or if the objections raised are successfully defeated, the trademark will be published in the Trade Marks Journal. This publication serves as a notice to all third parties about imminent registration of the mark. It allows interested parties[1] to file an opposition for a period of ninety days from the date of publication.

If an interested party files an opposition, the Trademark Office will call for a hearing. The decision of the Hearing Officer can be challenged before the Intellectual Property Appellate Board (IPAB) by either party.

If no oppositions are filed or if the oppositions are successfully defeated, the trademark will be registered and a registration certificate will be issued to the applicant after 2 years. The trademark can now be used with  RegisteredTM.svg.

Duration

A registered trademark is valid for a period of 10 years from the date of filing the application. It may be renewed for another period of 10 years.

Additional Sources

This article on Times of India also briefly explains the process.

Featured image from here.



[1] Commonly understood, interested parties are those that will be directly affected by the registration of the mark by the virtue of them having a similar pre-registered mark or by any other such relation.

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