Process of Trade Mark Registration In India

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• With the advent of globalization and expansion of trade and industry

trade marks have gained immense significance. In the view of the same

the old Indian Trade and Merchandise Marks Act, 1958 was amended

and new Trade Marks Act, 1999 was enacted. The said Act of 1999,

with subsequent amendments, conforms to the TRIPS (Trade Related

Aspects of Intellectual Property Rights)

• At present India is governed by the Trade Marks Act,1999 and Trade

Marks Rules, 2002.

What is a Trade Mark?• Any mark which can be graphically represented and is capable of

distinguishing the goods and services of one from those of another. Trade Mark can either be a word mark or a device mark.

• Trade Marks can be a name, logo, phrase, letter , slogans ,combination of colors etc.

Service Marks

• Trademarks pertaining to services.

• Trade Mark Classification: The Trade Mark Registry, for the purpose

of registration has classified goods and services under 45 classes in

accordance with the 10th Edition of Nice Classification of goods and

services. Class 1 to 34 being in relation to goods and class 35 to 45 for

services.

Good Trademarks

• Should be easy to pronounce and spell

• Non-descriptive

• Should not be generic or suggestive

• Coined words make good trademarks

Trade Mark filing in India

Trade Mark Search: It is advisable to conduct a pre-registration search at the Trade Mark

Registry to find out deceptively similar and confusing marks already existing on the Trade

Mark Registry. The search is conducted so that the proprietor is aware of the probable

objections or oppositions that may be initiated against the prospective trademark

Trade Mark Filing: An application is to be filed under the Trademarks Act and the

Trademarks Rules. The following documents are required for the filing of an Application,

with respect to a used or proposed Trade Mark or Service Mark:

Application for Registration- Full description of the Applicants to be provided.

User detail – The user date should denote the month and date of first use in India. Conversely

it can be on “proposed to be used” basis.

Additional Representations

Power of Attorney- To be filed along with the application duly executed by the Applicant in

favour of the trademark attorney.

Trade Mark Prosecution

• Examination Report and reply to examination report: Upon

Application, the Registrar shall cause the application to be

examined and shall issue an Examination Report to the Applicant

stating his objections, if any; and, the reply must be submitted

within a month from the date of issuing of the Examination Report.

• Advertisement in Trade Mark Journal: As and when the objections

are waived after receiving the reply followed by hearing, the

application will be accepted for advertisement in the Trademarks

Journal.

Opposition

• Notice of Opposition can be filed within 4 months from the date of advertisement or re- advertisement of the Trade mark in the Trade mark journal.

• The Applicant of the impugned trademark has to file a Counter Statement within 2 months from the date the Notice of Opposition is served upon them.

• The Opponent on receiving the Counter Statement has to file Evidence in support of Opposition under Rule 50 of the Trade Mark Rules, 2002 within 2 months from the date the counter statement is served.

• The Applicant has to file Evidence in support of application under Rule 51 of the Trade Mark Rules, 2002 within 2 months from the date the evidence in support of opposition is served.

• The Opponent gets the opportunity of filing evidence in reply under Rule 52 of the Trade Mark Rules, 2002 within 2 months from the date evidence in support of application is served.

• The matter is posted for hearing and the decision can either lead to registration for a period of 10 years or the opposition is allowed and the application for registration is refused.

Trade Mark Registration and Renewal

Upon Registration a certificate to that effect is issued in favour of the Applicant. A Trade Mark/Service Mark is valid for a period of 10 years and can be renewed in every 10 years. Renewal application can be filed 6 months prior to the due date of the respective renewal date.