This blog discusses the common problems faced at every step of the Trademark Registration process in India. Understanding these common issues is crucial for navigating through the process of Trademark registration successfully!
The registration of a trademark is a long-term process, which normally takes a period of more than 1-2 years in India, which is improving day by day, thanks to the computerize of the office of the Registrar of Trademark.
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The step-wise process of Registration of Trademark is as under:
Step 1: Search of Trademark
The Registrar of Trademark maintains a register of all trademark registered in India or applied, the same can be searched to ascertain whether the applicant’s trademark is same or similar to any other mark which has already been registered or which is pending before the Registrar Trademark for its registration. A thorough search must be conducted in all classes of a trademark to ascertain the same.
Step 2: Determination of Class
There are 45 classes of a trademark under which a TM application can be filed for seeking its registration. The classification is in conformity with NICE Classification. The Classes 1 to 34 are with respect to goods whereas Classes 35 to 45 are with respect to services. The trademark application must be filed in the appropriate class based on the trade/service description.
Step 3: Attorney Authorization
The application to the Registrar of Trademark can be filed with the help of a Trademark Attorney. However, to authorize such an attorney the applicant must issue a formal authorization in the prescribed form TM-48. The said form is in the nature of a Power of Attorney hence it must carry a stamp duty of Rs. 100/-. Further TM-48 should also be notarized.
Step 4: Filing of TM Application
Once the TM-48 and all other required information are obtained in terms of our trademark questionnaire we prepare a demo application and send across to our customer for their confirmation. After receiving the confirmation, the TM application is filed with government fees of Rs. 4,000/- within 24 hours. In case of expeditious application, the Government fees are 5 times of the ordinary filing fees.
Step 5: Review of application
The trademark office after receipt of a TM application, categories it as a new application and reviews it to find out if the application is complete in all respect and that the classification is per its description. If it is found to be correct the application is marked for examination otherwise a clarification may be sought. The objection must be resolved within 30 days of its communication to the applicant.
Step 6: Examination of TM application
Based on the submissions in the application, the registrar marks the applications to be examined by an examiner of TM. The examiner after thorough examination issues an examination report which may contain objections to the registration on absolute grounds of refusal or relative grounds of refusal under the Trademark Act, 1999. A reply to the examination report must be filed within 30 days of its release.
Step 7: Personal hearing before the Registrar
In the first instance, the objection raised in the examination report is resolved by submitting a reply to the same. However, in case the registrar is not satisfied with such a reply a personal hearing is immediate remedy wherein the applicant must prove novelty of his trademark.
Step 8: Publication and opposition
Once the examiner of the trademark is satisfied the application is published in trademark journal so as to invite opposition from the public at large, any aggrieved person can file an opposition to the registration of a trademark within 4 months from the date of its publication in the trademark journal.
Step 9: Registration and Renewal
At the end, if all objections and opposition (if any), is resolved to the satisfaction of the registrar, the trademark application is accepted and a certificate of registration is issued. The validity of registration is of a period of 10 years reckoned from the date of its application. However, it can be renewed for an indefinite number of times.
Most common problems faced while registering in Trademark in India
A Trademark can get registered only if it is capable of graphical representation and able to distinguish the goods and services it is intended to be used for. However, meeting these basic conditions do not always guarantee the registration of your trademark as there are other grounds for its refusal under the Trademark Act.
- Absolute grounds of refusal (Sec. 9): It deals with the objections that are primarily related to the mark inherent qualities or nature of the mark and not due to any external factors. This ground of refusal is primarily aimed at protecting the interests of the general public instead of any specific third party.
- Relative grounds of refusal (Sec. 11): These grounds of Refusal are related to external issues like the existence of a similar trademark already registered or applied for registration by third parties. The purpose of this grounds of refusal is to protect the trademark rights of a specific third party holding a similar or identical trademark and to safeguard the general public from confusion or deception caused due to the availability of two similar trademarks.
Based on these grounds for refusal, we have observed some of the most common problems you might encounter during the Trademark Registration Process in India.
#1. Existence of Similar Trademarks:
The applied trademark must not be the same or similar to an already registered trademark or a mark for which a registration application is pending before the Registrar. The expression similar means any visual or phonetic similarity. The Registrar shall also have regard to the nature of goods, the purpose of the goods and channel of trade for the goods while deciding the similarity between trademarks applied under classes marked for goods (Class-1 to 34). However, the Registrar shall consider the nature of services, purpose of services, uses of services and normal business relationship, while deciding the similarity between trademarks applied under classes marked for services (Class-35 to 45).
#2. Trademark is devoid of a distinct character
Whether the applied trademark falls under the absolute ground of the refusal is dependent on reasons like it is devoid of any distinctive character or in other words, it is not capable of being distinguished from the goods or services of another person.
#3. Trademark is a Word or symbol used in Common Trade Practice:
The applied mark could be refused if it is a generic word or symbol used in common trade practice with the purpose of indicating the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or services. Also, the same grounds of refusal may apply if the mark indicates any other mark which has become customary in the current language or general practice of trade. Overall, if the applied mark is of such a nature, which can deceive the public at large or cause confusion, it might get refused during the registration process itself.
#4. Trademark is obscene and offensive
If the applied mark is likely to hurt religious sentiments of any class or section of the citizens of India or it is a mark which is scandalous or obscene, it is likely to get refused by the Department. Further, the mark should not be something which is prohibited under Names & Emblems (Prevention of Improper Use) Act, 1950.
#5. Trademark results from obvious shape of Goods or nature of services
Further, the applied trademark should not be something which results from the obvious shape of goods or nature of services it is intended to be used for, as this would mean that the mark is devoid of any distinctive character.
Conclusion
The process of trademark registration in India is a multi-step journey that requires careful consideration and adherence to legal requirements. While advancements in technology have streamlined the process to some extent, it still takes time and effort to successfully register a trademark. The challenges faced during registration are mainly related to ensuring the distinctiveness of the mark, avoiding conflicts with existing trademarks, and meeting the criteria set by the Trademark Act.
To overcome these challenges, it is crucial for applicants to conduct a comprehensive trademark search, determine the appropriate class for their goods or services, and seek professional assistance from a trademark attorney.
FAQs
Q1: What are the common problems faced during the trademark registration process in India?
Common problems in Trademark Registration include meeting the requirements for distinctiveness of the mark, making sure the mark is not prohibited under any law, and avoiding conflicts with existing trademarks. Additionally, addressing objections raised during the examination stage and opposition stage from third parties is crucial.
Q2: How can I ensure that my trademark application is not rejected on absolute grounds of refusal?
To ensure your trademark application is not rejected on absolute grounds, it is crucial to choose a mark that is distinctive and capable of distinguishing your goods or services. Avoid using descriptive or generic terms, and aim for a mark that is unique and not commonly used in trade practice.
Q3: What steps can I take to avoid conflicts with existing trademarks during the registration process?
Conducting a comprehensive trademark search is vital to identify any existing trademarks that may conflict with yours. Engaging a trademark attorney or professional Trademark search service provider for this purpose is ideal as they can help assess the risk of conflicts accurately and much ahead of time.
Q4: What are the potential objections that can arise during trademark examination?
Objections during trademark examination can relate to absolute grounds (such as lack of distinctiveness) or relative grounds (conflicts with existing trademarks) of Trademark Refusal as prescribed under the Trademark Act. It is essential to carefully review the examination report and address each objection raised with appropriate legal arguments, evidence, or modifications to the trademark application, within the given timeframe.
Q5: How can I overcome opposition to my trademark registration from third parties?
If opposition is filed against your trademark, it is important to prepare a strong response that addresses the concerns raised by the opposing party. This may involve presenting evidence of acquired distinctiveness, proving that there is no likelihood of confusion, or negotiating a settlement with the opposing party. Seeking guidance from a trademark attorney is highly recommended to navigate the opposition process effectively.
This article offers valuable insights into common brand protection challenges. A must-read for anyone looking to safeguard their business.