STEPS INVOLVED IN TRADEMARK REGISTRATION
- TRADEMARK SEARCH
The first step in the trademark registration process is the trademark search. It is unsafe to proceed further without conducting proper trademark search.
- TRADEMARK FILING
After successful search, trademark is filed in the form TM-A, with attached documents like, TM-48, Affidavit, Invoice, MSME certificate etc. and uploading of logo, image. Online trademark registration for brand name and logo is quick and effective. In case of an online filing, acknowledgement receipt with application number is instantly generated on the government portal. After receiving acknowledgement, one is eligible to use TM symbol beside the brand name.
- FORMILITIES CHECK PASS
If the basic requirements of the trademark application are complied with like filing of TM-A, power of Attorney, user document, Affidavit, proper fees, translation and transliteration of the mark etc. the status reflects “Formalities check pass”, otherwise the status shows “Formalities check fail”. If status is “check fail”, all the objections to be complied within the prescribed period to keep the application alive.
- VIENNA CODIFICATION
This stage of application for device mark only. The moment a logo/device/artistic work is filed, same is send to Vienna codification process to be conducted by Trademark Registry. The main purpose of such an exercise is to prevent duplication of the logo/device etc.
- MARK FOR EXAM
In this stage, trademark application is assigned to the examiner, who either issue examination report or accept the application. If the application is accepted, the same is published in the Journal for objection.
An examination report of a trademark is issued by an Examiner on the following grounds:
- Mark is objectionable under Section 9 of the Trademark Act (absolute ground)
- Mark is objectionable under Section 11 of the Trademark Act (relative ground)
- Whether any condition, limitation or restriction is required to be imposed.
Whenever an examination report is issued, appropriate reply to be submitted within one month to keep the application alive.
In this stage, application is kept waiting for hearing. Application which reply are submitted generally show the status “Objected”. The applicant is required to submit Affidavit, user documents etc. before the hearing.
At the time of hearing, hearing officer will hear the arguments of applicant/attorney/agent and pass necessary orders accordingly.
7.ACCEPTED & ADVERTISED
If the hearing officer accept the trademark application, the status will reflect “Accepted”. After acceptance, the trademark is published in the Trademark Journal published weekly and contains the details of all trademark that has been accepted by the department. The waiting period of a trademark in the Journal is 120 days. During this period, third party can raise objection against a trademark by filing an opposition within the Journal period.
If the hearing officer for any reason, do not accept the application, it is refused and status will reflect “Refused”. There is scope for review of the refusal order before the Registrar of Trademarks if sufficient grounds exist.
In case, after the advertisement of the trademark in the Journal, a third party files an opposition to the registration of the trademark within the 4 months from the date of advertisement then the trademark status in the Indian trademark registry website will show as ‘Opposed’.
A third party usually files an opposition when there is a similar trademark published in the journal or if the trademark is alleged to be deceptively similar.
The trademark status changes from “Accepted & Advertised” to “Opposed”, after a notice of opposition is filed by an opponent (third party). The notice is served on the applicant which states the ground of opposition on which the opponent rely.
After receiving the notice, applicant is required to file counter statement within 2 months from the date of receipt of the notice of opposition. If no reply is submitted within 2 months by the applicant, the status changes from “Opposed” to “Abandoned”.
The status of a trademark application is reflected as “Withdrawn”, when the applicant voluntarily files an application before the Registrar of Trademarks to withdraw the trademark.
The status of a trademark is reflected as “Removed”, when the Trademark is permanently removed the trademark registry. The removal can be for various reasons like non –renewal of the trademark, non-use of trademark, trademark remaining wrongly in the registry etc.
When the trademark status is reflected as “Registered” it means that the trademark registration certificate is generated. After this, the applicant becomes the registered owner of the trademark and will have the exclusive right to use the trademark. Applicant is also entitled to use the symbol ® next to the trademark.
Under the Trademark Act, 1999 registration is valid for 10 years from the date of application. Before expiry it has to be renewed for another 10 years to remain as registered trademark. If registration is renewed after time penalty is imposed, which is known as “surcharge”.