One can register words, logos, numerals, slogans, devices, and even scents in India as a trademark. Therefore, the Trademark Registration of a Company provides an exclusive right for the use of the registered trademark to its owner. But Trademark registration is a long process hinged with multiple legal roadblocks. This article is drafted to enlighten its reader on the trademark registration procedure prevalent in India. Let us look at these steps one by one.
First Step: Performing Trademark Search
Why Trademark Search?
Before embarking on the trademark registration procedure, the Company Owner must conduct a trademark search on the RoT database, i.e., Register of Trademarks. The search procedure will provide information about any similar existing trademark already registered with the Registrar.
How Trademark Search?
The trademark applicant can conduct a trademark search by visiting the official Registrar's Website. To know in depth about the Trademark search procedure, you can visit our Trademark Search service page.
Then, Application Filing for Trademark Registration
Drafting the Trademark Application
After completing the Trademark Search, the applicant can file the application for trademark registration with the Registrar of Trademarks. The applicant must draft the application for registration in the prescribed manner. They must pay the requisite registration fee along with the registration application.
Where to file the Trademark Application?
The applicant can file the Trademark applications at any of the five Registrar Offices. These offices must have jurisdiction over the State or be present online. You can also seek help from a recognized telecom consultant to draft and compile your registration application properly.
Content of the Application
The trademark applicant must include the following elements in their trademark registration application:
· Trademark Logo
· Name of the Trademark Proprietor
· Address of the Trademark Proprietor
· Class of Trademark Logo
· Date of Trademark Inception
· Description of the Company's goods and/or services
Further, Examiner assign the Application Allotment Number
Once the applicant files the registration application with the Registrar of Trademarks, the Examiner will provide a Trademark Application Allotment number within one or two working days. The applicant can then track the trademark application online through the online available Trademark Search facility.
Usually, the applicant, after getting the application allotment number, affixes the TM symbol next to the proposed logo.
What is Vienna Codification?
The Vienna Agreement established the Vienna Codification in 1973 as an international classification standard for the symbolic elements of trademarks. Once the applicant files the trademark registration application, the Registrar will apply the Vienna Classification standards to the filed trademark based on the symbolic elements of trademark logos.
When the applicant checks the trademark application status as work in progress, he can see the status reflecting- "Sent for Vienna Codification".
Examination of the filed Trademark Application
After the completion of the Vienna Codification procedure and the assignment of the allotment number, the Examiner will allot the trademark registration application to a Trademark Officer or Examiner at the RoT's Office (Trademark Registrar Office).
The appointed Trademark Officer reviews the trademark application for all its correctness. Based on the analysis, he issued an examination report. Here, the Trademark Officer can indulge in two scenarios:
· Accept the registration application and publish the trademark in the Journal, or
· Object the registration application and send it to the applicant for re-drafting
If the Trademark Officer objects to the filed trademark registration application, then the trademark applicant can appear before the Trademark Officer and address the objections and make the necessary changes or defend his case against the Trademark Objection.
You can always hire a legal professional to file your Trademark Objection reply in the proposed format. The applicant can also hire a trademark consultant to present their case before the Examiner.
If the Trademark Officer is satiated with the justifications provided by the trademark applicant upon his or her summons, then the Examiner green flags the publication of the trademark in the trademark journal.
What if the Examiner is not satisfied with the Objection's reply?
If the appointed Officer is not satisfied with the submitted justifications by the applicant, then the trademark applicant can appeal for the Trademark Officer's decision before the IPAB, i.e., the Intellectual Property Appellate Board.
Journal Publication of the proposed Trademark
Once the Registrar, upon clearance, accepts the filed trademark application, the proposed trademark is published in the Trademark Journal.
What is a Trademark Journal?
The Trademark Journal is a weekly magazine that publishes all the Trademark Examiner's accepted trademarks. Once the Registrar publishes the trademark in the Trademark Journal, the general public can oppose the published trademark if they find any similarity with their pre-existing trademarks. They can reason the opposition on the damage the trademark will cause upon registration.
If no objections are filed within 90 days of that publication, the Trademark Office will autromatically register the logo within 12 weeks – months.
If anyone during the publication period opposes the trademark registration application, the Court will summon the involved parties for a hearing. It will be presided over by a Trademark Hearing Officer. The Court imparts both the applicant and the opposing party a chance for their defenses at the hearing. They can provide justifications for registration or rejection of the trademark application to the Court. This whole procedure is known as the Trademark Opposition procedure.
The Court, based on the hearings and the evidence presented, can delegate the Hearing Officer to determine if the filed registration application is accepted or rejected. If the ruling does not come in the applicant's favour, then he can challenge the decision of the Trademark Hearing Officer by escalating the issue to the IPAB (Intellectual Property Appellate Board).
To prepare for the Trademark Hearing procedure, you can always hire a trademark consultant of Regiastrationwala to present your case in Court.
Grant of Trademark Registration certificate
If all the filed objections and/or oppositions for the trademark registration application are quashed or resolved, then the Trademark Office will prepare the trademark manuscript and registration certificate. After the Registrar issues the registration certificate, the trademark is registered with the RoT. This will grant the trademark proprietor exclusive use of the newly registered trademark.
Thereafter, The ® symbol will be placed next to the trademark logo.
For more information on the Trademark Registration procedure, connect with the Trademark Experts at Registrationwala.