REGISTRATION OF TRADEMARK, ITS PROCEDURE AND THE DURATION OF TRADEMARK IN INDIA
A Trademark means “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours”. (Section 2 (zb) of Trademarks Act, 1999).
The Trademarks Act, 1999, is divided into XIII Chapters mainly containing conditions for registration, procedure, effect of registration, use of trademarks, offences and penalties, etc.
STEP -1: TRADEMARK SEARCH
- After the company/firm/proprietor has decided on their mark/brand/logo, the individual should conduct a ‘preliminary trademark search’ after identifying the relevant Class of goods and services. The basic trademark search can be done online through Intellectual Property India website and for a thorough search, the services of law firms, agents may be obtained in order to ensure that the mark to be registered by the individual is not in conflict with other similarly registered trademarks.
- A Trademark search is an important step before any trademark registration as it gives a basic reference and clarification regarding trademark and further draws a smooth pathway towards its registration.
STEP-2: TRADEMARK APPLICATION
- In terms of Section 18 of the Trademarks Act, 1999, any individual who wishes to register their mark shall apply as per the requisite form before the Trademark Registry.
- The Registration and applying of the Trademark can be done in both in hardcopy or digitally through IP India website.
- Before applying of a Trademark, the individuals needs to ensure that the same is filed within the territorial limits where the office of Trademark Registry is situated.
For Ex: – Any Individual who carries on his business in Jaipur city have to apply before the Trademark Registry in Ahmedabad.
- Along with the filing of Application, requisite fee for per class and per application shall be deposited with the Trademark Registry.
- After the filing of Trademark application, the Registrar at the Trademark Registry shall thoroughly examines the application, either to refuse the mark or to raise objections concerning similarity or infringement towards the registration.
STEP-3: OPPOSITION TO REGISTRATION
- That after the filing of the Trademark and after curing the defects/objections raised by the Registrar, the application which has been accepted by the Registry shall be ‘advertised’ in the Trademark Journal and a time period of 4 months is provided from the date of advertisement for any third party to raise its opposition towards the registration of the said mark.
- The applicant after receiving the opposition from third party is granted 2 months’ time to submit a ‘Counter Statement’ stating the grounds along with evidences as to why the mark applied by applicant be accepted .
- The Registrar thereafter provides an opportunity to the applicant as well as to the opposite party to raise their grounds for seeking acceptance or dismissal of the concerned mark. (Section 20 and 21 of the Trademarks Act, 1999)
STEP-4: ACCEPTANCE
- After complying with the above steps, the Registrar shall both accept the contentions raised by applicant and accordingly register the said Trademark with the Trademark registry.
- After the registration of Trademark, the Registrar shall issue to the applicant a ‘Certificate’ containing the mark registration along with the seal of Trademark Registry (Section23 of the Trademarks Act, 1999)
DURATION AND RENEWAL OF TRADEMARK
- A Trademark is valid for period of 10 years which can be renewed from time to time in accordance with Trademarks Act, 1999 (Section-25 of the Trademarks Act, 1999)
The Firm regularly applies, handles and registers Trademarks for various companies, organizations and individuals.