Table of Contents
Step 1: Search of Trademark
Step 2: Determination of Class
Step 3: Attorney Authorization
Step 4: Filing of TM Application
Step 5: Review of application
Step 6: Examination of TM application
Step 7: Personal hearing before the Registrar
Step 8: Publication and opposition
Step 9: Registration and Renewal
Most common problems faced while registering in Trademark in India
The two basic conditions for registration of a Trademark are:
(i) That the Trademark is capable of graphical representation; and (ii) That the trademark is capable of distinguishing the goods or services of one person from that of others. However, fulfilling these basic conditions does not always guarantee registration of a trademark as the Trademark Act prescribed two further hurdles to be cleared before a Trademark can be registered, these are as under:
(i) Absolute grounds of refusal (Sec. 9): It deals with the objections that are primarily related to the mark itself and which are not register-able due to their inherent problems. This ground of refusal is primarily aimed at protecting the interests of general public instead of any specific third party.
(ii) Relative grounds of refusal (Sec. 11): It is with difficulties which a trademark faces while its registration on the ground of same or similar trademark having been already register or an application for registration is filed by some third party. The purpose of this grounds of refusal is to protect, rights of a party holding a similar or identical trademark and to safeguard general public from confusion or deception.
2. The applied trademark must not be same or similar to an already register 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 trademark 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 trademark applied under classes marked for services (Class-35 to 45).
3. Whether the applied trademark falls under the absolute ground of the refusal, which are reasons like the brand 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.
4. Whether the applied mark indicates its kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or the time of provisioning of the services or any other characteristic of goods or services.
5. Whether the mark applied indicates any mark which has become customary in the current language or general practice of trade. Further, whether the applied mark is of such a nature, which can deceive the public at large or cause confusion.
6. Whether 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 matter. Further, the mark should not be something which is prohibited under Emblems and Names (Prevention of Improper Use) Act, 1950 or the applied trademark is with respect to the shape of goods which results from the nature of good itself or which gives substantial value.