Registration of trademarks is beneficial for business owners as it helps them to protect their goodwill and prevents unwarranted copying and infringement of goods. The Trademark Registration process is laid down under the Trademark Act, 1999 and the Trademark Rules Act, 2017.
The stages of the trademark registration process can broadly be characterized into the following stages:
1. Trademark search:
The first step in the trademark registration process is “Trademark Search”. Trademark Search is a preliminary search conducted to ensure that the proposed trademark does not violate any existing registered trademark and abides by the laws related to the trademark. Thus, before an individual makes an application to register a trademark it is advisable to conduct a trademark search for use of the proposed trademark in connection with certain goods or services.
Advantages of conducting a trademark search are
A trademark search report is generated after a trademark search highlighting relevant details and matches for proposed trademark.
2. Filing of Trademark Application
After reviewing the trademark search report, an application for the registration of the trademark is filed with the Trademark Registry. The application has relevant details like Logo or the Trademark Name and address of the trademark owner Classification or Trademark Class Trademark used since date Description of the goods or services.
The trademark application is generally filed in the Trademark Office within the jurisdiction of the place of business of the applicant. An application can be filed either manual application in the Trademark Office or file an online application through the Online Trademark Search facility.
After acknowledgement of the trademark, a trademark application allotment number and the Trademark applicant can start using the trademark symbol (TM) next to the brand name.
3. Examination of Trademark
After filing of the trademark application, the trademark application enters the stage of examination where the designated Trademark Registrar ensures that the application abides by the substantive and procedural laws governing Trademarks. The duration of the examination process ranges from six to eight months from the application date.
The Trademark Registrar issues an Examination Report highlighting the distinctiveness and similarity of the proposed trademark with existing trademarks. In particular, the examination report outlines the objections against the trademark under Section 9 and Section 11 of the Trademarks Act, 1999.
Objections under Section 9 which relates to marks that are descriptive of the goods or its generic nature or quality, can be defeated by showing that the trademark has acquired a distinctive character as a result of being used extensively.
Objections under Section 11 is made when there are identical or similar trademarks in existence in that particular field to which the product relates.
The applicant has to respond to the raised objections within one month from the date of receipt of Examination Report. If not, the trademark application will be abandoned by the Trademark Registry due to the lack of prosecution.
When a response to the Trademark Examination is accepted, then the trademark is published in the Trademark Journal. And, if the response has not accepted the applicant can request a hearing. If in the hearing, the examiner feels that the trademark should be allowed registration then the trademark is published in the Trademark Journal.
4. Publication in Trademark Journal
After dealing with the objections, the trademark application is published in a Trademark Journal giving the opportunity for the general public to raise any objections related to the Trademark application.
If any concerned third party can file the trademark opposition within three months (with a one-month extension) from trademark publication date. In case objections are raised against the application, a hearing, if needed is held where both parties are given a fair chance to present their cases. Based on the hearing and the evidence put forward by both parties, the hearing officer will give his judgement.
Any decision pronounced can be appealed before the Intellectual Property Appellate Board.
5.Certificate of Trademark Registration
If there are no objections brought forward within the four months since the publication of the application in the Trademark Journal, the Certificate for the Trademark registration is awarded.
6. Trademark Renewal
The registered trademark is valid for ten years and can be renewed on payment of the renewal fees.
Trademark Registration Flowchart
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Note: Under Madrid Protocol protection can only be obtained in member countries and these member countries listed below:
We at IPR Studio are well equipped to assist all aspect of design application for filing in India.
|Classification||Description||Established By||Revised By|
|International Patent Classification (IPC)||It is used to classify patents and utility models according to the different areas of technology pertaining.||Strasbourg Agreement in 1971||IPC Committee of Experts.|
|Locarno Classification (LOC)||It classifies goods for registration of industrial designs.||Locarno Agreement in 1968||Committee of Experts of the Locarno Union|
|Nice Classification (NCL)||It is international system for classifying goods and services for registering of marks.||Nice Agreement in 1957||Committee of Experts|
|Vienna Classification (VCL)||It classifies the figurative elements of marks into categories, divisions and sections according to their shape.||Vienna Agreement in 1973||Committee of Experts of the Vienna Union.|
|Trademark Class 1||Chemical used in industry, science, photography, agriculture, horticulture and forestry; unprocessed plastics; chemical substances for preserving foodstuffs;|
|Trademark Class 2||Paints; varnishes; preservatives against rust and against deterioration of wood; colorants; metals in foil and powder form for painters; decorators; printers and artists;|
|Trademark Class 3||Bleaching preparations and substances for laundry use; cleaning; polishing; abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions;|
|Trademark Class 4||Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks;|
|Trademark Class 5||Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; disinfectants; fungicides, herbicides;|
|Trademark Class 6||Common metals and their alloys; metal building materials; small items of metal hardware; pipes and tubes of metal; goods of metal not included in other classes|
|Trademark Class 7||Machines and machine tools; machine coupling and transmission components; agricultural implements other than hand-operated; incubators for eggs|
|Trademark Class 8||Hand tools and implements (hand-operated); cutlery; side arms; razors|
|Trademark Class 9||Scientific, electric, photographicl, measuring, apparatus for recording, transmission or reproduction of sound or images; data processing equipment and computers;|
|Trademark Class 10||Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials;|
|Trademark Class 11||Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying ventilating, water supply and sanitary purposes|
|Trademark Class 12||Vehicles; apparatus for locomotion by land, air or water|
|Trademark Class 13||Firearms; ammunition and projectiles; explosives; fire works|
|Trademark Class 14||Precious metals and their alloys and goods in precious metals; jewellery, precious stones; horological and other chronometric instruments|
|Trademark Class 15||Musical instruments|
|Trademark Class 16||Paper, cardboard and goods made from these materials; printed matter; stationery; brushes; typewriters and office requisites; plastic materials for packaging;|
|Trademark Class 17||Rubber, asbestos, mica and goods made from these materials; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes|
|Trademark Class 18||Leather and imitations of leathe; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery;|
|Trademark Class 19||Building materials, (non-metallic), non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.|
|Trademark Class 20||Furniture, mirrors, picture frames; goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother- of-pearl, meerschaum or of plastics|
|Trademark Class 21||Household or kitchen utensils and containers; combs and sponges; articles for cleaning purposes; unworked or semi-worked glass; glassware and earthenware;|
|Trademark Class 22||Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags, padding and stuffing materials(except of rubber or plastics); raw fibrous textile materials|
|Trademark Class 23||Yarns and threads, for textile use|
|Trademark Class 24||Textiles and textile goods, not included in other classes; bed and table covers.|
|Trademark Class 25||Clothing, footwear, headgear|
|Trademark Class 26||Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers|
|Trademark Class 27||Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings(non-textile)|
|Trademark Class 28||Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees|
|Trademark Class 29||Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jams, fruit sauces; eggs, milk and milk products; edible oils and fats|
|Trademark Class 30||Coffee, tea, cocoa, sugar, rice, tapioca, sago; bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar; spices; ice|
|Trademark Class 31||Agricultural, horticultural and forestry products and grains; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt|
|Trademark Class 32||Beers, mineral and aerated waters, and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages|
|Trademark Class 33||Alcoholic beverages(except beers)|
|Trademark Class 34||Tobacco, smokers’ articles, matches|
|Trademark Class 35||Advertising, business management, business administration, office functions|
|Trademark Class 36||Insurance, financial affairs; monetary affairs; real estate affairs|
|Trademark Class 37||Building construction; repair; installation services|
|Trademark Class 38||Telecommunications.|
|Trademark Class 39||Transport; packaging and storage of goods; travel arrangement.|
|Trademark Class 40||Treatment of materials.|
|Trademark Class 41||Education; providing of training; entertainment; sporting and cultural activities.|
|Trademark Class 42||Scientific, design and technological services; industrial analysis and research services; design and development of computer hardware and software.|
|Trademark Class 43||Services for providing food and drink; temporary accommodation.|
|Trademark Class 44||Medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.|
|Trademark Class 45||Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.|