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TRADEMARK REGISTRATION

Trademark Registration Process in India

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

  • Beneficial,
  • Cost-effective and
  • Time-saving.

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

Trademark Registration Process and Procedure in India

Source: IpIndia.nic


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.
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How do I check a trademark name? When can you use the TM symbol? What are the three types of trademarks? What is trademark in simple words?

FAQs On Trademark

Frequently asked questions for Trademarks

Ques 1: What is a Trademark?

Ans: A Trademark is an Intellectual Property asset obtained for certain names, recognizable sign, symbols, designs, devices, or words or expression associated with the company’s corporate, product brand and identity. A trademark is a sign capable of distinguishing the goods or services of one enterprise from its competing enterprises. Trademarks used to identify services are usually called service marks.

Ques 2: What are different types of trademarks that may be registered in India?

Ans: There are 7 different types of trademarks that are registered in India

  1. Product Mark
  2. Service Mark
  3. Collective Mark
  4. Certification Mark
  5. Shape Mark
  6. Pattern Mark
  7. Sound Mark

Ques 3: What are the benefits of registering a trademark?

Ans: Benefits of regestring a trademark:

*Grants Exclusive Rights;

*Protects others from using your trademark;

*Differentiates your Products from competitor’s Products;

*Recognition to product’s Quality;

*Creates image for the goods/ services;

*Advertises the goods/services;

*Protects against infringement.

Ques 4: Who can apply for Trademarks?

Ans: Any person who is an individual, a company, a proprietor or a legal entity claiming to be owner of the trademark can apply for trademark.

Ques 5: What does TM and R signify, when can we use them?

Ans: The symbol “TM” means “Trademark”  and signifies any mark filed with the Trademark Office.

The “R” means “registered trademark” and signifies the trademark is registered and validated by theTrademark Office for the product or service.

Ques 6: Where should trademark application be filed?

Ans: Trademark applications can be submitted filed physically at the Front Office Counter of the Indian Patent Office or filed on line through the e-filing gateway available at the official website www.ipindia.nic.in.

Ques 7: What is the validity of the trademark?

Ans: Validity of trademark is 10 years from the date of application. The trademark can renewed indefinitely by paying renewal fees  every 10 years. In India, a renewal request is filed in FORM TM-R within one year before the expiry of the last registration of trademark.

Ques 8: What is classification of goods adopted in India?

Ans:  Nice Classification is adopted for classification of goods and services. Accodring to Nice Classification:

Classes 1-34: For Goods

Classes 35-45: For Services

Ques 9:Are trademarks territorial?

Ans: Yes, Trademarks are territorial in nature and must be filed in the countries the aplicant seeks for protection.

Ques 10: Can a registered trademark be amended at later stage?

Ans: Yes, a registered trademark can be amended at a later stage as per the provision of Section 22  of the Trademark Act.

Section 22 in The Trade Marks Act, 1999

22. Correction and amendment.—The Registrar may, on such terms as he thinks just, at any time, whether before or after acceptance of an application for registration under section 18, permit the correction of any error in or in connection with the application or permit an amendment of the application: Provided that if an amendment is made to a single application referred to in sub-section (2) of section 18 involving division of such application into two or more applications, the date of making of the initial application shall be deemed to be the date of making of the divided applications so divided.

Ques 11: Can a trademark be removed on the ground of non-use?

Ans: Yes, a trademark can be removed on gounds of non- use as per the Section 47 of the Indian Trade Marks Act of 1999 if

  1. That the trade mark was registered without any bona fide intention and was not used till a date three months before the date of the application for removal; or
  2. Trademark is not used for a continuous period of five year from the date of registration of trademark and application was made after three months from the expiry of five years.

Ques 12: What are the different grounds for refusal of registration of a trademark under the trademarks Act?

Ans: Different grounds for refusal of registration of a trademark under the trademarks Act

Absolute Grounds – (Section 9 of the Act)

Relative Grounds (Section 11 of the Act)

Ques 13: How to file International Trademark Application?

Ans: An applicant can file an International trademark Applicantion:

Madrid Protocol: Using a single application to register the trademark in multiple countries by taking priority of one of the countries; or

Direct filing: Registering the trademark directly in the Trademark Office of jurisdiction of interest for soughting protection in that particular jurisdiction with or without taking priority in the domestic country.

Note: Under Madrid Protocol protection can only be obtained in member countries and these member countries listed below:
http://www.wipo.int/treaties/en/ShowResults.jsp?treaty_id=8

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Trademark Search

Before applying for trademark it is very necessary to conduct a trademark search to identify potential conflicts that could arise with existing trademark applications or registered trademarks in the same trademark class. In order to avoid it is always recommended to conduct a “Trademark Search” as trademark searches are an integral part of trademark ownership.

While conducting trademark seaches ONE can identify trademarks identical to your own mark, confusingly similar trademarks that conflict with your own mark making it more difficult to spot.

It is very important to conduct a preliminary search prior to registration of a new mark is very important to know about potential infringements, as well as to be protected against potential revocation of your mark. If there are any pre-registered marks significantly similar to your own which may lead to the refusal of your mark’s registration.

It is very important to get a proper search conducted by a trademark attorney as an improperly conducted trademark search at the initial stage could mean that your latterly registered trademark is liable for revocation if the existence of a similar pre-existing mark comes to light significantly contributing to wastage of time and resources.

Thus companies must carry out trademark searches routinely or comprehensively.

Comprehensive Trademark Search

Compared to a preliminary search, a comprehensive trademark search is always considered better due to its wider scope.

We specialize in providing a comprehensive trademark search as we have access to a large database having various state trademarks, company names, publications and domain names. This helps in performing a detailed comparative study and in seeking legal advice about concerns that you may face later while registering your trademark.

Start protecting your brand today by registering a trademark online through IPR STUDIO

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