Trademark Filing and Prosecution in India is a multi-stage process that needs detailed and complete understanding. This rise is the result of enhanced innovation and the government’s impetus to the innovation sector. In this article, we will discuss the complete process of filing a trademark.
Before jumping to the trademark filing and prosecution, let us first understand the basics of the trademark.
What is a Trademark?
A trademark is basically a unique brand name that cannot be used by anyone else. You can get a trademark for logo, device, single color, color combination, and brand numerals, etc. Along with providing a unique identity to your product, a trademark also provides value to your brand.
Registration and Regulation of Trademarks in India
The regulation of trademark filing, trademark prosecution, trademark infringement, etc. comes under the ambit of the Trademarks act, 1999 in India. Under this act, you can register word marks, certification marks, service marks, collective marks, product marks, and also the marks for shapes, sounds, and colors.
Procedure for Trademark Filing and Prosecution in India
Trademark prosecution is the whole process consisting of trademark filing along with arguments in the courts during the hearing on the opposition raised. It is a multi-phase process that usually takes 6-12 months to complete. A person can file a trademark himself or hire an IP professional. Below is a step-by-step guide for trademark filing and prosecution in India.
The main purpose of conducting a trademark search is to check whether the trademark is available or not. You can perform a trademark search online via the Indian Trademark Registry Database to find similar trademarks. Mainly there are three types of trademark search-
- Comprehensive Trademark Search: A comprehensive search aims to eliminate every possible reason that may cause a problem for your trademark. The comprehensive trademark search is complex and usually done by professional attorneys who can access information data from various platforms.
- Preliminary Trademark Search: The prime aim of a preliminary trademark search is to identify trademarks that are visually confusing or phonetically similar to the applied mark. A preliminary search prevents the risk of any future objection, opposition, infringement. It also improves the strength of your trademark.
- Trademark Image Search: The focal point of this exercise is to determine the authenticity of names, words, or logos.
Trademark Application Preparation
The application preparation needs following details:
- Applicant Name
- Details of goods and services
- Trademark date of in India or globally.
- Name and designation of the attorney filing on the applicant’s behalf.
- Various details of the applied mark including the class of applied mark
- Name and type of the applicant’s entity, i.e. whether Individual, Limited Liability Partnership, or a Company.
- Once you are sure that there are no similar marks, you can file the trademark application at the Trademark Registration Office or online. You can also use a single trademark application to file your trademark in more than one trademark class. Trademark filing is possible offline at the office on all working days or online through the IP India website. While trademark filing, make sure that the documents have signatures of the applicant or the IP professional along with the date and place of trademark filing. This process of filing usually needs 1-2 working days. It is possible to track the application status by the application number.
Cost of Trademark Filing in India
|Registration Application Type||Physical/Offline Filing Fee||E-Filing Fee|
Trademark Application Examination
Once the trademark filing is done, the application is allotted to a trademark examiner who thoroughly checks the application for any kind of disparity or mistake in the application form or filing. This check is done according to the provisions of the Trademarks Act, 1999. The whole process of examination takes 3-5 months. However, there is an option to file your application through form TM-63 to request the examination on priority. Now, the examiner has an option to either raise an objection or accept the filing for further process. An additional fee of 3000 for physical filing and 2700 in case of e-filing needs to be paid for speeding up of examination.
Options available to the Examiner
- In case of an objection by the examiner, an examination report is sent to the applicant. An answer called trademark examination reply needs to be sent back within a month. If the examiner is still not satisfied, then he can further ask for a hearing.
- If the trademark application is accepted, then it is published in the Trademark Journal.
- Apart from raising an objection or accepting the trader application, the examiner also has an option to reject the application altogether. This rejection is possible on two grounds:
- Relative Grounds of rejection include a trademark’s similarity with an earlier registered trademark or goods and services aka likelihood of confusion. Relative grounds for trademark rejection also include trademarks whose use is prohibited by any law.
- Absolute Grounds of rejection includes the situation when the trademark is not able to distinguish between goods and services or can cause confusion.
After the acceptance of the trademark by the examiner, the next step is its advertisement in the Trademark Journal. The publication invites the opposition filings from the aggrieved person.
If an aggrieved person objects, then a hearing takes place at court. Both the parties need to be present during the hearing if a 3rd party has opposed.
If no opposition has been made or the case is solved at the court, then the trademark is registered for a time period of the next 10 years immediately starting from the date of issuance of the registration certificate. However, trademark renewal is possible after the expiry.
Choose us for your Trademark Filing and Prosecution Needs
Getting a trademark is no less than a Launchpad for your business and you should do it the right way. Our team of experienced and professional IP personnel takes care of the complete process of trademark filing and prosecution in India. Our huge basket of trademark management services includes trademark searching, trademark strategizing, trademark registration, and trademark renewal. Want to know more? Visit us here
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