Trademark Registration

Step by Step Trademark Registration Procedure

A Trademark is a sign, design or expression which helps in recognizing and identifying a particular product or services manufactured or provided by a particular manufacturer or service provider. It separates a particular goods or services from those of others. Trademark can be affixed to a particular product, voucher or label. In this article, we are presenting steps for the trademark registration procedure.

Objective of Trademark Act

• The Trade Mark Law was designed to fulfil the public welfare objective i.e. of “consumer protection.”
• The main aim of registration of a trademark is to prevent the general public from being misled as to the origin or quality of product or services.
• It also aims that a registered trademark should serve as an incentive for manufacturers, providers or suppliers in maintaining their public reputation.

History of the Trade Mark Act

• The Trademark law in India before 1940 was based on the common law principles of Passing off & Equity. The likewise law was followed in England.
• And the first statutory law related to a trademark in India was the Trade Marks Act, 1940 which contained the similar provision of the UK Trade Marks Act, 1938.
• In the year 1958, the Trade and Merchandise Marks Act, 1958 was enacted. The main feature of this act was that it consolidated the provisions related to trademarks contained in other statutes like the Indian Penal Code^[1], the Criminal Procedure Code, and the Sea Customs Act.
• The Trade and Merchandise Marks Act, 1958 was repealed by the Trade Marks Act, 1999 and the same is the current governing law related to registered trademarks. Though some aspects of the unregistered trademarks have been enacted into the 1999 Act, they are primarily governed by the common law rules based on the principles evolved out of the judgments of the Courts. Where the law is ambiguous, the principles evolved and interpretation made by the Courts in England have been applied in India taking into consideration the context of the legal procedure, laws, and realities of India.
• After the registration of Trademark, it is considered to be prima facie evidence of ownership of the Trademark.
• If required a trademark registered in India can be used as the basis for registering a trademark in other countries if required. Foreigners and Foreign entities can also register a trademark in India if they wish to trade in India.

Trademark Registration Procedure: What can be registered as a Trademark?

Any word, name, device, label, numerals or a combination of colors that can be represented graphically (in a paper) can be registered as a trademark. The trademark to be registered must also be distinctive for the services or goods for which it is proposed to be registered.

Trademark Registration Procedure: Which type of Trademarks cannot be registered?

Any trademark, which is identical or similar to an existing registered trademark or trademark for which an application for registration has been made and the same is pending, cannot be registered.

A trademark that causes or would likely cause deception or confusion or is offensive may not be registered.

Common names or common trade words and common abbreviation or geographical name can also not be registered as a trademark.

What are the Benefits of Trademark Registration?

The benefits of Trademark registration can be summarized as under:

• Exclusive rights

A registered trademark confers a bundle of exclusive rights upon the registered owner i.e. the owner of the trademark has the exclusive right to use the mark in relation to the products/services for which it is registered.

• Prevent Unauthorized Person from using your mark

In most of the jurisdiction, the law allows the owner of a registered trademark to prevent any unauthorized person to use the registered mark in relation to any products or services which are identical or colorfully similar to the registered products or services.

• Prevent the use of a similar mark on entirely dissimilar products

In certain cases, the registered trademark also prevents the use of a similar mark on entirely dissimilar products or services.

• Can be hypothecated as security

A registered trademark can be hypothecated as security i.e. registered trademark can be pledged.

• Separate & independent existence

Registration of a trademark is an identifiable intangible property i.e. a registered trademark will have a separate & independent existence and it can be transferred to any other asset.

• Legal Protection

If a trademark is registered, the owner of the registered trademark can institute legal proceedings in the event of its infringement. If a trademark is registered it can be used in legal proceedings as evidence of the validity of the original registration.

• Protect your brand name worldwide

If the trademark is registered it can be used to obtain registration in some foreign countries and the brand name can be protected worldwide.

• Helps in identifying the commercial source of the origin of products

A registered trademark also helps in identifying the commercial source of the origin of products or services.

• Business expansion

With trademark, a connection between customers and the product of an enterprise is established. It will further expand your business.

Trademark Registration Procedure

Step 1: Trademark Search

This is one of the crucial steps in the whole process of registration. Many entrepreneurs do not comprehend the importance of a trademark search. Having a unique brand name decreases the possibility of trademark litigation. So a trademark search will help you to get to know that if any other identical trademark is available and it gives you a fair picture of where your trademark stands. It also helps in reducing your money in time-consuming trademark litigation.

Step 2: Filing Trademark Application in India

After you assure yourself that the brand name or logo which you choose to be registered as the trademark is not listed in the Trademark Registry India i.e. it is not identical with any other registered trademark, you can opt for registering the same. After checking the availability of trademark, the next step is to file a trademark application form at the Trademark Office, India. The Indian trademark offices are located at Chennai, Delhi, Mumbai, and Kolkata. Nowadays, filing is mostly done online. Once the application is filed, an official receipt is immediately issued for future reference.

 Step 3: TM Examination

After the application has been submitted for a trademark in the Trademark office then it is examined by the examiner for any discrepancies. The examination of discrepancies may take few days time. If no discrepancies are found in the application, the examiner might accept the trademark absolutely or conditionally or he may also object if the application contains some discrepancies.

If accepted unconditionally, the trademark gets published in the Trademark Journal. If any conditions are required to be fulfilled before accepting the application then that conditions are required to be fulfilled or the objections would be mentioned in the examination report and a month’s time will be given to fulfil those conditions or to respond to the objections raised.

Step 4: TM Publication in Trademark Journal

Once such response which is given in respect of the objection raised is accepted, the trademark is published in the Trademark Journal. If the response received is not accepted, the person can request a hearing. While hearing, if the examiner feels that the registration of the trademark should be allowed then he shall register the and further proceed for publication in the Trademark Journal.

Anyone who objects to the registering of the trademark has the opportunity to oppose the same. If, after 3-4 months from publication there is no opposition, the trademark proceeds for registration. In case if any person opposes regarding the registration of trademark then a hearing shall be held before the Registrar and the decision shall be given by him.

Step 5: Registration Certificate

After the application for Trademark Registration has been given and it has been registered and the same has been published in Trademark Journal, a registration certificate under the seal of the Trademark Office is issued.

It may be noted that the trademark can be renewed after every 10 years and it can be done perpetually. Hence, the registered logo or brand name can be protected perpetually.

Ceasing of Trademark Registration Rights

The trademark holder would cease to enjoy his trademark registration rights in the following cases:

• If after the registration of a trademark, it is not actively used for a period of time (in most of the jurisdiction it is normally 5 years) the rights shall be ceased.
• In the case of infringement of rights if the owner fails to enforce the registration it may also expose for removal from the register after a certain time.

Conclusion

Trademark registration is beneficial if you wish that your brand or product is recognized and the trademark registration procedure is also simplified by online filing. It is a mark of uniqueness which contributes significantly towards building your brand image. Therefore, register your trademark today.

Read our article: International Trademark Registration: A Route to Global Branding