Common problems trademark registration
Common problems trademark registration
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. The step-wise process of Registration of Trademark is as under:
|Step 1: Search of Trademark:||Step 2: Determination of Class:||Step 3: Attorney Authorization:|
|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.||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.||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:||Step 5: Review of application:||Step 6: Examination 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.||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.||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:||Step 8: Publication and opposition:||Step 9: Registration and Renewal:|
|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.||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.||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:
1. The two basic condition for registration of 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.