In recent times, when Trademark is being considered as an attractive tool by the Big entities to show their presence in and outside India, it is at the same time becoming vulnerable to copy by their competitors. Therefore it is crucial to discuss the important facts about Trademarks and its procedure. Here is an effort to highlight the procedure to be followed to register a Trademark in India and incidental matters related to registration.

Understanding the term Trademark–

A Trademark (popularly known as Logo or Brand) can be termed as a Symbol, a Mark, a label or an Expression which represents an entity or Goods or Service and which is capable of distinguishing the Goods and Services than those of others in the industry.

It not only gives the Registered Owner an exclusive right to use such mark but also prevent its identity from being used by other competitors. Registration of Trademark is now a necessity as it may become a valuable Asset for the Entity or an Individual getting it registered.

• Types of Different Marks:

i. Standard Mark: Standard marks are basic marks which denote the source of Goods and Services and which are not to be classified as Collective or Certification mark. This is the most common mark used for Trademark Application.

ii. Collective Mark: Collective mark is generally used to distinguish the origin of a product or service at a specific geographical region or by specific group or association. The owners of Collective marks are generally regional Institutions.

iii. Certification Mark: These are the marks used to indicate that the particular product meets the set standards specified with respect to quality or safety or any such thing.

iv. Series Mark: These are marks which are similar to each other substantially and differ only with non-distinctive characters.

• The validity of a Trademark once Registered

Once a Trademark is registered in India, it is valid for 10 years from the date of its Registration, once expired, it can be renewed for further 10 years from the date of expiration by filing Form TM-R.

• The procedure of renewal of a trademark

The registrar of trademark sends a notice to the Registered Owner of the trademark to get the trademark renewed before the expiration of Trademark. In case the Registered Owner fails to renew within the time limit, the Trademark can be renewed within further 6 months from expiration date after paying a late fee along with Renewal Charges if still the Registered Owner fails to renew then he gets extension of 6 more months in which he can restore the Trademark by paying Restoration fees.

• Effect of registering a Trademark

Once a Trademark is registered with Registrar of Trademark, The Registered Owner get an exclusive right to use such Trademark. It is important to note that the conferred right is only limited to the Republic of India. If an entity wants to get the global protection then it needs to apply for the registration in every country individually.

• Steps to be followed to Register a Trademark in India:

STEP 1:- Do a details research of Trademark to make sure the Trademark to be applied is not already registered in the name of some other Entity or Individual. To have a details research one need to identify the class or category for which Trademark is to be registered. (Website: ipindia.nic.in)

STEP 2:- As per Rule 23 of the Trademark Rules, 2017, a Trademark can be registered by filing a written Application to the Registrar of Trademarks in Form TM-A duly signed by the applicant or his agent on behalf of the Applicant or by creating a Login id at Trademark website and selecting New Form Filing using Class 2 DSC of Applicant or Agent.

• Status of the Trademark Application:

Once an Application is filed, the applicant gets an Application number which enables him to check the status. One is required to check the status of Form from time to timeat http://ipindiaonline.gov.in/eregister/eregister.aspx under head Trademark Application / Registered Mark. Following are the different types of Status:

i. Formality Check Pass / Fail: Once a Form is filed it passes through all the basic formalities like the description of goods and services and the documents required to be attached if some discrepancy is found at the initial level then Formality Check becomes fail.

ii. Marked / Sent for Examination: Once the Formalities checked, the form is sent for Examination to the Registrar which examines the Form and finds any irregularity and duplicity in the Mark

iii. Accepted & Advertised: When the Department accepts the Form does not have any objection and the mark is advertised in the Journal.

iv. Objection: Upon Examination of Form TM-A, If examiner encounters any inconsistency in the Form, it may raise the objection under section 9 and Section 11 of the Trademark Act, 1999 regarding the description of Goods and Services and other common issues and require a reply to be satisfied that why the Objection should not be raised.

v. Opposition: Once the mark is advertised in the journal and someone finds it similar to their registered mark they may write to Examiner and oppose the Application which leads to hearing.

vi. Abandoned: When there is no response from the Applicant’s side on the objection raised by Examiner or opposition within the specified time then it is marked as abandoned.

vii. Withdrawal: If the Applicant withdraws the Application filed then the status becomes withdrawal.

viii. Registered: Once the Examiner is completely satisfied with the Application and there is no opposition filed, the status gets Registered.

• Time Duration to register a Trademark:

In the best cases the minimum time to be taken to register a Trademark is 8-12 months, in case there is Objection raised, it may lead to delay of a year and if there is opposition filed by a party then the Application may take nearly 2 years to get registered.

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Disclaimer: The contents of this article are for information purposes only and do not constitute an advice or a legal opinion and are personal views of the author. It is based upon relevant law and/or facts available at that point of time and prepared with due accuracy & reliability. Readers are requested to check and refer relevant provisions of statute, latest judicial pronouncements, circulars, clarifications etc before acting on the basis of the above write up.  The possibility of other views on the subject matter cannot be ruled out. By the use of the said information, you agree that Author is not responsible or liable in any manner for the authenticity, accuracy, completeness, errors or any kind of omissions in this piece of information for any action taken thereof. This is not any kind of advertisement or solicitation of work by a professional.

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