By Rohit Chakraborty
A trademark is a distinctive sign or symbol that identifies a particular set of goods or services to its respective proprietor and distinguishes the goods or services of one party from those of others. It may consist of a word, a phrase, a logo, a symbol, a design, an image, or a combination thereof. The primary function of a trademark is to enable consumers to easily identify and choose products or services they trust or prefer.
As per the legal definition given under Section 2(zb) of the Indian Trademarks Act, 1999, a trademark is a distinctive marker that distinguishes products or services from competitors in the market.
A trademark is valid for a period of 10 years from the date of registration, upon expiry of which it may be renewed.
Various types of trademark registrations cater to different needs and fulfil varied purposes, all aimed at enabling consumers to recognize products and services associated with specific manufacturers or service providers. The following are the different categories of trademarks recognized worldwide:
The registration of a trademark follows a lengthy process and may take anywhere between 6 to 12 months for completion. The following illustration offers a brief idea about the steps involved.
Prior to moving forward with a TM application, it is important to first conduct a comprehensive trademark search in order to ensure the availability of a particular trademark and avoid any conflicts with already existing, registered marks.
Once satisfied with the search results, the next step would be to file an application before the Indian Trademarks Office requesting registration along with all the relevant details. Upon filing of a new application along with the requisite fee, the status “Send to Vienna Codification” is assigned to the trademark.
If the Trademark contains any figurative elements such as a logo, symbol or design, the same is subjected to an examination as per the Vienna Convention. Through this examination, the figurative part of the mark is checked under 29 different categories (Celestial planets, stars, moon, natural events, maps, animals, etc.) in order to ensure non-duplication in the trademark registry.
Upon a successful examination, the registry updates the status to “Formalities Chk Pass”. No further action is needed at this point of time. The status would soon change to “Marked for Exam” once the application has been assigned to a trademark examiner.
In case any clerical errors are found in the application during examination, the status shall change to “Formalities Chk Fail”. In such a case, the application needs to be rectified along with a Government Fee.
Prior to moving forward with a TM application, it is important to first conduct a comprehensive trademark search in order to ensure the availability of a particular trademark and avoid any conflicts with already existing, registered marks.
Once satisfied with the search results, the next step would be to file an application before the Indian Trademarks Office requesting registration along with all the relevant details. Upon filing of a new application along with the requisite fee, the status “Send to Vienna Codification” is assigned to the trademark.
If the Trademark contains any figurative elements such as a logo, symbol or design, the same is subjected to an examination as per the Vienna Convention. Through this examination, the figurative part of the mark is checked under 29 different categories (Celestial planets, stars, moon, natural events, maps, animals, etc.) in order to ensure non-duplication in the trademark registry.
Upon a successful examination, the registry updates the status to “Formalities Chk Pass”. No further action is needed at this point of time. The status would soon change to “Marked for Exam” once the application has been assigned to a trademark examiner.
In case any clerical errors are found in the application during examination, the status shall change to “Formalities Chk Fail”. In such a case, the application needs to be rectified along with a Government Fee.
Once the formalities are checked, the particulars of the application are now pending examination by the office. Upon completing the examination, the office issues an Examination Report documenting their findings. At this stage, the office may either Accept the application straight away or raise an Objection. The status of the trademark shall accordingly change to either “Accepted” or “Objected”.
In case no objection is raised by the office and the status shows as “Accepted”, no further action would be needed on the part of the applicant. The trademark would be advertised and opened to opposition in due course of time.
However, if an objection is raised by the office and the status is “Objected”, it is important to go through the grounds of objection provided in the Examination Report and provide a point-wise reply to the same within 30 days. Objections are generally raised either under Section 9 or under Section 12 of the Trademarks Act, hence it is pertinent to meticulously understand these provisions of law.
If the office is satisfied by the reply, the application will move forward and the status will now change to “Accepted”. On the other hand, if the office is not convinced by the reply, they may call upon a hearing and provide the applicant with a final chance to make their case.
As the Trademark has now been “Accepted and Advertised”, it is now open to opposition by any third-party. The time period to file an opposition is ordinarily of 3 months and extendable by one additional month.
If no opposition is received during this timeframe, the trademark is now fully registered and has a validity of 10 years.
If one or multiple oppositions are received, the status changes to “Opposed” and the applicant needs to defend their stance against all the oppositions individually through evidence filing, counter-statements and hearings. Upon successful defence against all claims, the trademark may finally be granted registration.
Navigating the intricacies of trademark registration in India requires careful attention to detail and adherence to legal procedures. By securing robust protection for your trademarks, you safeguard your brand’s reputation and goodwill in the marketplace. As your trusted trademark attorneys, we at Advoke Law are here to guide you through every step of the process, ensuring optimal protection for your intellectual property assets. Advoke Law specializes in Trademark Registrations, Prosecutions as well as Litigation. We also offer other Trademark services such as Trademark Watch and Trademark Due-Diligence. Feel free to contact us to schedule a free consultation!
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