Trademark - Its requirement and registration

[Biswajit Sarkar]

 A trademark is a symbol, design, or expression that aids in the recognition and identification of a certain product or service created or given by specific manufacturers or service providers. It distinguishes one set of goods or services from others. A trademark can be applied to a certain product, testimonial, or marker. This blog will walk you through the stages of trademark registration, and the specific provisions related to the trade mark registration in India.

What is the objective of the Trademark Act of 1999?

• The Trade Mark Act was created to achieve the common good of "consumer protection."
• The primary goal of trademark registration is to avoid the public at large from being deceived about the source or quality of an item or service.
• It also intends for a registered trademark to serve as a motivator for a manufacturer, provider, or supplier to preserve their public image.

What kind of trademarks can be registered?

Any visually representable (on paper) term, symbol, device, mark, number, or colour combination may be filed for trademark registration. Additionally, the proposed trademark registration must be unique for the goods or services it is intended to cover.

What kind of trademarks cannot be registered?

Any trademark that is identical or confusingly similar to a trademark that has already been registered or for which a registration application has been submitted and is pending is ineligible for registration.

It is improper to register a trademark that deceives customers, causes confusion, or is offensive. Furthermore, geographical names, acronyms, common names, and popular commercial phrases are not eligible for trademark registration.

When is the ideal time to register a trademark?

Since a trademark can take up to three years to successfully register, barring third parties, the trademark registration procedure is first-to-file, thus it should be started as soon as possible. The trademark application process and its length are covered in Chapter III of the Trademarks Act of 1999.

Who can apply for a trademark registration?

Any person i.e., an individual, companies, sole proprietorship, and any other companies can apply for a trade mark registration in India and will be referred to as the Applicant in the application of trademark registration. Further, once the mark has been registered, the applicant will be referred to as the owner of the mark.

What steps should be followed for the trademark registration process in India?

Step 1 - Choosing an Indian trademark lawyer

Only the Proprietors are entitled to register for trademark registration if their primary place of business is in India. If the circumstances are different, a mediator such as an agent or an attorney will be appointed to submit the application on the right holder’s behalf. The minor details are often handled by the agent or attorney.

Step 2 - Select a trademark that is eligible

If a given trademark does not resemble any previously registered trademarks with the comptroller general's office, it meets the eligibility requirements. Additionally, the trademark ought to be distinctive. The agent typically begins the enrolment procedure by establishing if the trademark is suitable for enrolment and carrying out a clearance search to discover if the comptroller general's office already owns a mark that is comparable.

Step 3 – Conducting a proper public search

Once the parties have chosen a mark for their business, then the primary step is to conduct an effective public search, to check that there are no similar marks already registered in the trademark’s registry. The search is conducted with reference to the Nice classification, in which there is a detailed mentioning about the goods and services, for which the mark is to be applied for trademark registration.

Step 3 - Completing the application form and submitting it

If the owner of the trademark gives the agent power of attorney, the agent may complete the application by providing the information needed to explain the services and goods that will be associated with the mark as well as the owner's information in the form of a user affidavit.

Either offline (at the trademark office) or online submission of the application of trademark registration is possible. If the application is submitted online, a Class III Certificate of Digital Signature is necessary.

Step 4 - The trademark office reviews and assigns a unique number.

After reviewing the application, the trademark office staff assigns it a unique number. If the trademark is registered, this number subsequently serves as the registration number.

Step 5 – Examination of the mark by the Examiner

The Examiner after receiving the application of trademark registration, will then proceed with the further examination of the mark, that takes about an approximate time of 2 months. In circumstances, if the Examiner is not satisfied with the mark, then he subsequently issues an examination notice to the authorised agents on record of the trademarks registry website, and mentions the provisions of section 9 and 11, if any, in that particular examination report.

After the issuance of the examination report, the owner of the trademark has to send a letter as a reply to the examination report within 1 month of the issuance, so that the mark further proceeds for publication in the journal.

After taking into account the Examination Report, the Registrar shall accept the registration application. According to Section 20(1) of the Trade Marks Act of 1999, the applicant must be informed of this acceptance, and it must also be publicised.

The applicant must respond within one month of receiving the Examination Report and communicating it to the applicant. If he doesn't, the application would be dismissed.

If the applicant responds to the examination report within that time frame, the registrar will decide whether to accept the application, notify the applicant, and promote it.

Step 5 – Advertisement of the mark

The step of publication of the trademark in the journal has been incorporated in the trademark registration procedure with the purpose that if any third-party objects to the registering of the trademark being deceptively similar to the mark, then they further have the right to oppose the mark within four months of the publication of the mark in the Journal.

If, after four months, from publication there is no opposition then the Registrar would further proceed for the registration of the mark, and accept it, followed by its registration.

The trademark manuscript and trademark registration certificate must thereafter be created. Following the issuance of the Certificate, the applicant is given exclusive use of the trademark and becomes its legal owner.

To summarise, after going through the complete trademark registration process, it is clear that registering your trademark is important/required since you may enjoy unlimited benefits in the form of Rights, and no third party can breach your brand or monetarily misuse your goods or services.