This blog provides comprehensive information and guidance on the role of a Trademark Attorney Search in the Trademark Registration process. It serves as a valuable resource for individuals and businesses seeking clarity on the effective strategies for trademark protection.
A trademark is registered under the provisions of the Trademark Act, 1999 and the Rules framed thereunder and in conformity with the trade practices issued by the Registrar of Trademark. The Registrar has been entrusted with the responsibility of registering the trademark in a specific class for which description has been filed and to ensure that the application is free from discrepancies and the trademark is registrable.
Following are the some of key aspects which the registrar must keep in mind which accepting a TM application on for achievement or advertising a TM Application without acceptance.
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That the trademark is capable of graphical representation and which is distinguishable from the goods or services of one person from those of others. |
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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 trademarks applied under classes marked for services (Class-35 to 45). |
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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, which is an absolute ground of refusal under section 9. |
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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. |
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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. |
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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. |
Trademark Attorney Search Report
Before applying for a trademark registration or making investment into manufacturing, trading or advertising, it is strongly advised to seek a formal opinion from an experienced Trademark Attorney. who shall examine the trademark and shall conduct a thorough search in the database of trademark regarding the availability of the proposed mark and its possibilities of getting registered.
For a TM attorney search report shall reflect on the classes in which application for the proposed mark should be filed for comprehensive protection depending native the goods/services and the way of operation of an business during such dealings. He will further draft a suitable description for the class trademark in which is to be filed.
The Attorney such report is a comprehensive report which enables the decision maker to foresee the possibility of registration of the Trademark from the perspective of Absolute grounds of refusal as specified under Section 9 and the relative grounds of refusal as prescribed under Section 11 of the Trademark Act. It shall further highlight the possibility of a third party objection or further litigation.
The two basic conditions for registration of Trademark are:
- That the trademark is capable of graphical representation
- That the trademark is capable of distinguishing the goods of services of one person from those 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:
- Absolute grounds of refusal (Sec. 9): It deals with the objections that are primarily related with the mark itself and which are not registerable 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.
- 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 ground of refusal is to protect, rights of party holding a similar or identical trademark and also to safeguard general public from confusion or deception.
Once an application passes through all four stated tests the same gets register and a registration certificate is issued with a validity of 10 years reckoned from the date of application.
Trademark Attorney Search Reports and Its Benefits
Trademark attorney search reports and its benefits To appreciate the benefits of trademark attorney search report we have to understand that the registration of trademark is a long duration process, which normally takes a period of around 1.5 years. The most important aspect is the examination of the trademark application by the examiner of trade mark. The examiner shall check the registrability of application on following basis.
- Whether the application can be allowed in terms of section 9 of the trademark Act which lays down absolute grounds of refusal. Please Read in detail as to what are the absolute grounds for refusal under section 9.
- Whether the application can be allowed under section 11 of the act which lays down the relative grounds for refusal of registration
The time taken for issuance of the examination report is normally six -eight months, which normally calls for a reply where in the applicant can put his submissions on the observations of the examiner. By the time it came to the knowledge of the applicant about the possible obstruction in registration of the trademark the brand owners would have already invested heavily.
In case the registration is refused the brand remains unprotected which no business prefers. A trademark Attorney Search is a sensible investment and is strongly recommended to the potential applicant of trademark. Our attorney reports are based on a thorough search of all the registered trademarks in India in respective class in which the trademark falls.
It also searches the database of all pending trademark applications. Apart from search the report also considers legal position on trademarkability of trademark as such. The report helps in saving wasteful spending on a brand which is Not likely to get registered or which is likely to invite legal issues on the company in near future.
Immediate advantages of an Attorney Report on Trademark
- With KPS Trademark Attorney Search Report You get a thorough search at trademark registry in India
- An expert analysis of search of trademark in context of already registered trademark as well as pending applications of trademark
- Examination of trademark application in view of NICE Classification
- A detail analysis on possibility of registration in view of law of trademark and court pronouncement
For Assistance in Trademark Registration, its Renewal & Enforement Please click here
Conclusion
Conducting a thorough trademark search is a vital step in protecting your intellectual property rights. By understanding the nuances of trademark law and utilizing the expertise of trademark attorneys, you can ensure that your proposed mark is distinctive, avoid potential conflicts with existing trademarks, and increase the likelihood of a successful trademark registration.
Remember, investing time and effort into a comprehensive trademark search is a proactive measure that can save you from costly legal disputes down the line and provide a solid foundation for your brand’s growth and success.
FAQs
Q1: What is a trademark search, and why is it important?
A trademark search in India involves examining existing trademarks to determine their availability for registration. It is important to avoid conflicts and increase the chances of successful registration.
Q2: How can I conduct a trademark search on my own?
You can conduct a trademark search on the official website of the Indian Trademark Registry or consult a trademark attorney for a more comprehensive search.
Q3: What are the potential risks of not conducting a trademark search before using a mark?
Risks of not conducting a trademark search in India include potential infringement claims, legal disputes, and rejection of your trademark application.
Q4: Can I use a trademark if it's not registered but not in conflict with any existing trademarks?
Yes, you can use an unregistered trademark as trademark registration is not mandatory. Unregistered trademarks in India have some protection under common law. However, registering your trademark provides stronger legal protection and exclusive rights.
Q5: What is the difference between a basic trademark search and a trademark attorney search?
A basic trademark search checks the Indian Trademark Registry for conflicts, while a trademark attorney search includes analyzing multiple sources for a more thorough assessment of risks.
Essential for brand protection! This article explains the importance of a trademark attorney search report in a friendly and accessible way.