HOW DO I REGISTER MY MARK?
FIRST STEP is to conduct a search with the Trade Marks office in India. Search of Trade Mark office database is conducted in specific class by using Key Words. After the amendment in Trademark Act in 2010 the provision for official search has been abolished and thus no fee is payable nor will the Trademark Office in India issue any Search Report. Thus, Trademark search shall have to be conducted by your IPR Attorney based on data base of Patent & Trademark Office. Search Results are based on (i) Applications filed and pending (ii)Applications registered (iii) Applications abandoned due to any reason.
SECOND STEP is to file the application after providing a Power of Attorney to your Attorney (Foreign Applicant need not file the POA at the time of filing of Application and the same can be filed at a later stage). POA is not required to be legalized or notarized. Application must be filed in each class of goods or services in respect of which the mark is being used or proposed to be used. For complete protection one must file WORD MARK as well as LOGO MARK application in each class of goods or services. Word and Logos are registered separately for seeking protection on descriptive elements contained in the Logo. It is advisable to have the Logo as well as the Word Mark registered for better protection. An application for registration can be filed with a claim of “Usage in India” as well as “Intended User/Proposed User”. You must provide the Usage Date if the mark has been used in India i.e. either commercialized, exported to India, Advertised in India with documentary proof of such usage.
THIRD STEP is the time when the application is taken up for examination and the examiner reviews each application for its distinctiveness, similarity, identity or otherwise in relation to a previous registered mark or pending application. This stage is reached after nearly 3-6 months of application. This period may also take longer time depending on the workload and number of pending applications.
FOURTH STEP is to respond to the examiners objections, if any, by providing all necessary documentary evidence to prove distinctiveness and usage if any. Reply must be filed within one month from the date of receipt of Examiner’s objection letter. The examiner considers the response in a hearing before him and either allows the application or disallows the application.
FIFTH STEP is when the examiner allows the application, the same is ordered to be published in the Trade Marks Journal for inviting Opposition from general public. The Opposition must be filed within three months from the date of publication or a further period of one month provided an application for extension of time is filed alongwith the Opposition. The publication normally takes 3-6 months from the date of the order in the Fourth Step. At times it may also take a longer time depending on the pending number of applications for publication..
If the examiner disallows the response in the Fourth Step then one is required to appeal before the Appellate Board for reconsideration.
SIXTH & FINAL STEP is when the registration certificate is issued. Trade Mark Registration process is completed after a lapse of three months with an addition of one month (Extended Period) period from the date of publication. Issuance of certificate takes about 3-6 months from the date of expiry of period of opposition.
Note: India has adopted NICE classification of Goods and Services.
WHAT INSTRUCTION IS TO BE GIVEN TO THE ATTORNEY
You must provide the following instruction to the attorney in India for filing of Trade Mark Application
LOGO/MARK (10 copies of legible LOGO in JPG Format);
- Name of the Applicant;
- Address of the Applicant;
- Description of goods or services with international class (NICE Class);
- Date of First Usage of the mark in India (export within India is also an evidence of usage). If the mark is not used in India, then one may file as Proposed User as well.
- Power of Attorney in format provided by Attorney. (POA need not be notarized or legalized) (Foreign Applicants may file the same at a later date).
WHAT IS THE TOTAL TIME REQUIRED TO OBTAIN A REGISTRATION IN INDIA.
If there is no third party opposition then registration of Trade Mark takes about 24 months to 36 months to register and obtain a trade mark certificate in India.
WHAT IS A TRADEMARK/SERVICE MARK
A Trademark is any word, name, logo, device, artistic work, or any combination thereof used by a person to identify his or her goods from those of others and to indicate the source of the goods.
A Service Mark is any word, name, logo, device, artistic work, or any combination thereof used by a person to identify his or her services from the services of others and to indicate the source of the services. Service would mean any nature of service that may be provided by a person including Banking, Financial, Repair, Business Management, Legal Services, Fashion Designing, Hotel & Restaurant, Real Estate Development, etc.
Rights in a trademark or service mark ("mark") arise with the usage of the mark in connection with goods or services.
CAN I REGISTER COLLECTIVE MARK IN INDIA
You can register a collective mark in India. Chapter VIII of the Trade Marks Act, 1999 provides for registration of “Collective Marks” in India. An Application for registration of Collective Mark must be accompanied by the Regulations governing the use of such Collective Mark. The Regulation governing the use of such Collective Mark shall specify the (i) The persons authorized to use the Collective Mark, (ii) Conditions of membership of the association, (iii)Conditions of the use of the mark , (iv) Any sanctions against misuse and such other matters as may be prescribed.
CAN I REGISTER A “CERTIFICATION TRADE MARK”
Certification Trade Mark is registered in India and the relevant provisions are contained in Chapter IX of the Trade Marks Act, 1999.
IS IT NECESSARY TO SHOW USAGE OF THE TRADE MARK BEFORE FILING AN APPLICATION
NO. In India a Trade Mark Application can be filed with an “Intended User” or “Proposed User”. It is not necessary to file a Trade Mark Application in India. Please note that a mark is considered to be used in India if such goods or services have been exported to India or sold in India or advertised in any Indian Journal or Publication.
WHY DO I REQUIRE REGISTRATION?
Registration is not a requisite of mark ownership; Section 28 of the Trade Marks Act, 1999 provides certain substantive and procedural advantages i.e. (1) exclusive right to use the mark in relation to the goods and services (2) to obtain relief in respect of infringement of the Trademark
WHAT IS INFRINGEMENT?
When a registered Trademark is used by a person who is not entitled to use such trademark under the law, it constitute infringement. A registered trademark is infringed, if –
- the mark is identical to a registered trademark and is used in respect of similar goods or services;
- The mark is similar to a registered trademark and is used in respect of similar goods or services;
- The mark is identical or similar to a registered trademark and is likely to cause confusion on the part of the public or is likely to cause confusion regarding the origin of goods or services.
- The mark is identical or similar to a registered well known Trademark and is used in respect of goods and services other than the goods or services for which the mark is registered.
- The mark is identical or similar to a registered Trademark and is used for identifying the business venture or corporate name.
WHAT IS MY LEGAL POSITION IF I AM USING A MARK WHICH IS UNREGISTERED?
You do not derive any advantage under the Trade Marks Act, 1999 except your rights under the Common Law. As a proprietor of unregistered mark you have the right to sue and seek injunction and damages for Passing off goods and services in terms of Section 2 (2) of the Act. However, it will be a difficult battle as you may have to prove the marks well known reputation, its distinctiveness, period of usage etc.
WILL REGISTRATION IN INDIA PROVIDE ME LEGAL RIGHTS IN ALL COUNTRIES?
No. Registration grants rights which are limited to territorial jurisdiction of India. Thus you do not acquire any right under the Trade Marks Act, 1999 in any other country. In order to obtain a legal right in other countries, you must file Trade Mark application in all such country where you have a business venture or you export your goods or services.
IS INDIA A MEMBER OF CONVENTIONS AND TREATIES
Yes India is a signatory
WHY DO I REQUIRE AN ATTORNEY TO REGISTER MY TRADE MARK
It is recommended that a Trade Mark Application for registration is filed through an expert attorney who shall not only guide you in choosing the classes and nature of services but also the manner of making an application for a valid and legally sound protection. It is recommended that the strategy and advice of the attorney is acted upon and adopted. Infini Juridique is a leading Law Firm in India and one of the preferred IPR Law Firms by foreign clients. It has the best IPR Talent in the industry and is also well versed with Trade Mark and other IPR Laws prevalent in India.