According to Section (1) (z) (zb) of The Trademark Act, 1999 “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 the shape of goods, their packaging and combination of colours”. In simpler terms, a trademark is a graphical mark which helps in visually distinguishing the goods and services of an enterprise with similar products of another enterprise.
Trademark Registration is a crucial step which must be adhered to in order to establish uniqueness amongst your target market. Apart from this, a trademark also helps in establishing brand value amongst the customers.
A) PROCESS OF TRADEMARK REGISTRATION
The requisite procedure for registration of trademark has been given under Chapter 3, and particularly under Section 18 of the Act. The ingredients of Section 18 are laid down below for your reference:
- According to Section 18 (1), if any person wishes to register a trademark for whom he claims to be the proprietor of or if he proposes that such trademark is used by him, he shall send a written application to the Registrar in the prescribed manner.
However, in the growing digital era, you can even fill an application form on the online portal which is named as Online Trademark Registration India. You will be required to fill the following details:
- First, sign up on the online portal by filling in your personal details.
- Secondly, you will be required to furnish a valid Class 3 digital certificate.
- Then, you will be required to fill other details such as Type of Applicant, Trade Description, Service Address, Legal Status etc.
- After registration, you will be directed to the payment site.
- Later, check if the trademark that you wish to register has been previously registered or not. If not, you can use that particular trademark.
- Login on the online portal and click on the New Form Filling tab.
- Now, fill in the required details.
2.) According to Section 18 (2), the applicant can make a single application for different number of goods and services. However, the fee has to be paid for every individual class of goods and services.
3.) Section 18 (3) talks about the jurisdictional or territorial limits within which an application under to Section 18 (1) shall be made. It is explained by way of the following smart art:
4.) Section 18 (4) gives discretion to the Registrar to either refuse or accept such an application for registration of Trademark. The Registrar also has the power to party accept the application subject to any amendments, modifications, conditions or limitations. After successful acceptance, your Trademark will be recorded in the Trademark Journal
5.) In case your application is rejected or conditionally accepted under Section 18 (4), the Registrar is obliged to record the grounds for rejection or conditional acceptance under Section 18 (5).
6.) In case your trademark is accepted by the Registrar, the next step would be publication under the Trademark Journal. This is done so that the Registry can receive any objections regarding the same.
7.) In case no objections are received, the applicant will now receive the Registration Certificate.
B) HOW TO REPLY TO TRADEMARK OBJECTION
An objection can be filed against an application of Trademark registration based on the grounds that are mentioned under Section 9 and 11 of the Act. Such objection may be either filed by the Registrar or by a third party.
In case you have received such an objection, you must adhere to the following steps:
- The applicant must file a counter statement within a period of 1 month from the date of receipt of such notice of objection. If this step is not catered to within 1 month, the status of application will change to Abandoned.
You must include the following points in your counter statement:
- You must clearly state that the mark used by you is a blend of unique words.
- You must state that the mark is highly distinctive.
- You can even quote precedents of the Hon’ble Supreme Court where a similar trademark was duly registered.
- Later, the Registrar may call for a hearing with the parties that are involved. In case, he rules in the favour of applicant, the trademark will successfully get registered. However, if the Registrar rules in favour of the opposing party, the application for registration will be rejected.
- The remedial measure after such a rejection would be to file an appeal before the Intellectual Property Appellant Board.
- Such appeal has to be filed within 3 months from the date of passing such an order.
- In case of delay, the reasons for such a delay must be clearly stated. However, IPAB holds complete discretion to condone or reject such a delay.
- In case the delay is condoned, the applicant will have to pay a fine.
- After the case has been successfully registered, a date of hearing will be fixed by IPAB.
- IPAB will then decide the case on the basis of submissions that are put forth by both the parties.
- In case a party fails to appear on the required date, IPAB has the discretion to rule on the basis of merits of the case, ex- parte or dismiss the case.
Knowing how to reply to the examination report for trademark objection is an important stage to get your trademark application processed. Click here to remove objection to your TM Application.
Follow the above-mentioned steps in order to register your Trademark.
FAQ’s
1.) How to apply for trademark registration?
You can either submit a physical application to the Registry or fill an application on the online portal.
2.) What is the fee for filing an application of Trademark Registration?
Rs. 4,500 for an Individual applicant/ Startup/ Small Enterprise
Rs. 9,000 for all other classes
3.) What is the fee for filing an opposition for a trademark publication in the Trademark Journal?
Rs. 2,700
4.) Can a registered trademark be removed from the register?
Yes, the Registrar can remove any registered trademark upon receiving such application or complaint that the mark is wrongly entered in the register.
5.) How to check Trademark registration status?
You can check the status of your Trademark registration by filling in the application details on the IP INDIA website.
6.) On what grounds can a Trademark registration application be rejected?
The grounds for refusal of registration of a trademark are given under Section 9 and 11 of Act.
HOW CAN COMPLIANCE CALENDAR HELP YOU?
We, at Compliance Calendar will be your one stop destination for all legal requirements with respect to Trademarks. We can assist you with a varied set of interrelated functions such as:
- Trademark application
- Trademark renewal
- Trademark assignment
- Trademark infringement
- Trademark opposition
Our IPR experts will assist you in handling registration of your Trademark while you can focus more on establishing and expanding your business. Get in touch with us at 9988424211 or send us your queries at [email protected]
