Intellectual properties are creations of the mind. Throughout history, one can observe that to claim ownership over one’s work is a common practice.
With the emergence of intellectual property law, claiming ownership and rights over intellectual creations, technological inventions including machine learning, artistic, literary works, etc. is easier and systematic.
The importance of IP protection can be visibly seen as it gives the owner legally enforceable power to prevent the illegal use of such intellectual assets.
They are a part of the institutional infrastructure which helps in encouraging creativity, innovation and act as an incentive for people to invest in research and development projects. This article specifically focuses on the process of Trademark Registration in India.
Online Trademark Registration Steps in India
- Class search -the first step would be to find under which class the good or service would be categorized under. It is very important to register the mark under an appropriate class to prevent issues during the pre/ post-registration process.
- Availability– once the class is confirmed it is important to verify if there are no other similar or same existing marks under the same class. As registration would not be granted in case a similar mark is registered.
- Application filing -After verification, the next step is to file the application for trademark registration in e-form TM-1. Make sure you attach all the required documents and correct information in the application before submitting it.
- Objection -It is not necessary that you get an objection, but if your trademark is objected to, then you have to reply to the objection. Once you reply to the objection and convince the registrar that the mark is registrable you will be granted the registration.
- Registration- The trademark registration procedure will take 15-18 months. When your application is filed you can use TM sign on your brand name and when finally, it gets registered you can use the sign on your brand name
*This infographic shows a timeline of how the trademark registration application is processed by legalwiz.in
Here is The Description of the Steps Involved in the Registration of a Trademark
Trademark Application:
You can file your trademark application online yourself or through a professional. However, you will need to provide the following documents:
- Proof of Applicant- Card, Address Proof of Applicant/Certificate of registration (other than an Individual applicant)
- Brand Name & Logo
- User Affidavit- if a specific user date is to be claimed, the user affidavit is also required to be submitted
- Proof of TM Use- to claim a specific user date, documentary proof such as invoices, registration certificates, etc. with the brand name should also be provided
- MSME / Start-up Recognition(if any) – firms, body corporates (other than an individual) can provide a certificate of registration under MSME or Start-up India scheme to avail 50% rebate on the Government fee
- Signed Form TM – 48(if the application is filed by an attorney or trademark agent)-It is a legal document that allows the attorney to file the trademark on your behalf with the trademark registry.
The application would go through the following stages:
Send to Vienna codification:
A trademark that contains a logo or figurative elements then they are processed under Vienna codification.
A Vienna code is assigned to it as per the Vienna Agreement. It is basically to enable the trademark search of a logo for internal use. It takes approximately 3-5 working days to process.
Formality Check:
Then the application is examined along with the supporting documents. It is done to verify the authenticity of the information provided.
For example, if a user date is claimed, then the ministry checks if supporting documents are attached with it or not.
If the ministry finds any defects in the application or any missing documents, then the status will turn to “Formalities Check Fail”.
Reply to Formality check fail:
If the application is in the stage of Formality check fail, then the reply has to be filed within 30 days of receipt. If a rectified application is not submitted within 30 days, it can lead to abandonment.
Formality check pass:
If there is no fault in the application or if the error is rectified after filing the reply to the formality check fail, the application will be marked as “Formality check pass”. The first stage of the process gets cleared and proceeds to the next stage. The process may take 7-10 working days.
Marked for Examination:
In this stage the trademark is examined according to section 9 and section 11 of Trademarks Act, 1999.
For instance, the ministry checks if the mark is obscene or not and whether it harms any religious sentiments, etc.
There are many other grounds on which the mark/ logo is checked and then an examination report is issued an either objecting or accepting the trademark. The process takes around 10-15 working days.
Objection and reply:
This is the next stage is when the trademark is compared to other applications/ registered marks. If there is a mark that is deceptively similar to the applicant’s mark an objection would be raised.
An objection can also be raised if the brand name is not capable of being distinguished from others or it directly shows the characteristics of the goods or service such as the kind, quality, quantity, purpose, value, geographic origin.
The applicant then must file a reply to the objection within 30 days from the receipt of such an examination report. If he fails to do, the application gets abandoned.
Hearing:
In case the examiner is not satisfied with the written reply and needs more clarification; he will schedule a hearing. The application status visible to the applicant would be “ready for show cause hearing”.
Accepted & Advertised:
This is the stage where the trademark is published in the trademark journal for a period of 4 months. Once it is published in the journal any third party who believes that the mark should not be registered can file an opposition against it.
The application is accepted and advertised only if it-
- Is not objected
- The objections have been replied with a justified reply or
- They are cleared during the hearing
Opposition:
A third party can raise opposition against the registration of a trademark within 4 months of publication of trademark in the journal. In case of no opposition, the trademark will be processed further for registration.
Counterstatement:
When an applicant receives a third-party opposition, a reply has to be sent within 2 months. In case of failure it leads to abandonment.
Hearing:
The last stage of opposition is the hearing. Here both sides will be allowed to argue and put forth their statements.
After hearing both sides the officer will pass necessary order. If the order is in the favour of the applicant, then the trademark will get registered otherwise it will get abandoned.
Registration
After the final decision, the applicant would be granted the trademark if the order has been granted in the applicant’s favour.
In case there was no opposition or objection the registration would be granted much sooner.
Once the mark is registered the applicant can use the trademark exclusively for years to come if it is renewed every 10 years.