The process of registration of trademark begins with filing a trademark application . Once the application is filed an official filing date and number is issued by the trademark registry. After this the application is then examined by the trade marks office as to the existence of any similar trademark already registered or pending registration. If a trademark which is similar to the trademark already filed and other objections which can be taken is noticed by the trade office , the same is intimated to the applicant . After this intimation the application can overcome the objection by filing a written reply to such objection and presenting before the registrar where his application is posted evidence in his support to prove that his trademark is genuine and unique and bears no resemblance to the trademark already existing .
If after considering the reply filed by the applicant and evidence on record the registar allows the trademark application a letter of acceptance is issued. After this if no objections are received for 4 months after the publication in the trademark journal, a trademark registration certificate is issued.
The process of registration is a very lengthy process and it takes around 18-24 months to obtain registration in cases where there are no objections
The priority in a trade mark application starts from the date of filing the trademark application and issuance of application number in this regard .
The trademark registration once sought is valid for a period of 10 years from the date of application. The registration once done can then be renewed after a period of 10 years by paying the appropriate renewal fees.
Here, we are going to discuss the five simple steps which is to be followed for registering ones’ trademark either offline or online.
Step 1: TRADEMARK CLEARANCE SEARCH
This step is called the trademark clearance search. As the name suggests, this step involves a prior check to see if a same or similar trademark/logo has been filed or registered for the same/ similar class of goods or services. This step is advisable to avoid any potential objection to the trademark registration.
To conduct a trademark check you have to go to https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx# and fill in the details of the word/s (letters contained) or phonetics or Vienna Code andclass of the goods/services. To check your class of goods/services you can check from the categories given in https://ipindiaonline.gov.in/tmrpublicsearch/classfication_goods_service.htm .
The Vienna code for classification of figurative elements can be found at https://www.wipo.int/classifications/nivilo/vienna/index.htm
Step 2: FILING
The foremost step for registration of a trademark, is that an application is required to be filed at any of the 5 trade mark offices in India which are in 5 different cities of Delhi, Mumbai, Kolkata, Chennai and Ahmedabad.
Documents Required– The documents/ information required for filing a trademark application are:
- Name of the owner i.e. whether it will be for an individual name or for a company or for a start-up;
- Additionally, for start-ups, documents pertaining to registration of a start-up company are required;
- For companies, an authorised personnel is required who will be signing the documents and a letter of authorisation signed by the Board;
- If the filing is done through an attorney, then a copy of Power of Attorney is required;
- Along with all these, some basic information and its supporting documents are required. The basic information include the description of goods and services in which the company is involved in trading, the class of goods under which the trademark is being sought for and also the priority date on which the company is claiming its usage. Now, here if the priority date is prior to the date of the filing i.e. if the company is claiming usage of the trademark before the application date, then an affidavit mentioning the date and details is required along will other documents like invoices, letter heads, banners, other advertisement materials, emails etc. If the logo was in case designed by any third party, then a no objection certificate or NOC is required by them mentioning that it was designed by them solely for the use of the company;
Fees– The official governmental fees for filing a trademark application is INR 5000 for start-ups or individuals and INR 10,000 for companies.
It is advisable that before filing, the company should identify the class of goods and services under which it is claiming trademark. You can check the classes of goods/services from https://ipindiaonline.gov.in/tmrpublicsearch/classfication_goods_service.htm
Step 3: Examination and Publication
After filing the trademark application, the trademark office issues an examination report within. 30 days. In this report either the application is allowed or an objection is raised.
The objections are generally raised on the grounds of either similarity of trademark applications or trademarks being general and not being distinctive, and etc as provided under Section 9 and 11 of the Act. The objections can be raised on different grounds based on individual cases.
The reply to this objection has to be filed within 30 days from the date of receipt of the objection report failing which the application might get abandoned. After the reply is filed, the trade mark office then checks that whether it is possible to proceed with the application or there is a need to further clarifications. If further clarifications are required, a hearing maybe scheduled by the Trademarks Registry so that the Applicant can respond to the objections in person.
Thereafter if the Examiner is satisfied with the arguments, he will accept the mark and pass an order for publication of the mark in the Trademark Journal.
Step 4: OPPOSITION
The next and the final step is the publication of the application in the Trademarks Journal where it is open to the general public to file objection/ notice of opposition. This opposition has to be filed within 120 days. If no objection is filed against the application, then the mark proceeds to registration.
If an opposition is filed within 120 days, then the applicant need to file reply to the opposition. After submission made by both the parties, it is open to the registrar of the trademark to decide as to whether to proceed with the application or not. In case the opposition plea is rejected, the mark proceeds for registration and if the opposition plea is accepted, the trademark ceases.
STEP 5: REGISTRATION
Once an application is examined and is unopposed after the completion of 120 days from its date of publication in the trademarks Journal, the mark is registered and a certificate of registration is issued. A trademarks is valid for a period of 10 years from its date of application and has to be renewed before its date of expiry to remain valid.
Total Forms required for the filing of a trademark
The number of forms required for the registration of trademark has been reduced to eight from seventy four after the implementation of Trade Marks Rules 2017 to simplify the process for the customers. All forms are available at http://www.ipindia.nic.in/form-and-fees-tm.htm. The list of the forms is as follows-
- TM A-Application for registration of a trademark for any good/services
- TM M- Request for any amendment in an application, grounds of decision, expedite examination, request for inclusion of a mark as well-known, authorization of an agent etc.
- TM R-for Renewal and restoration of a trademark
- TM O- All opposition related matters
- TM P- Applications to dissolve association, assignment; amendment for description of goods/services, for all post registration matters etc.
- TM U-Application for Registered users, etc
Detailed Steps for e-filing of Trademark:
- Go to https://ipindiaonline.gov.in/trademarkefiling/user/frmNewRegistration.aspx and fill the new user registration form. If already registered, a user can use the exiting login credentials;
- Before proceeding procure a Class- III or Class-II Digital Signature certificate;
- Under ‘Type of Applicant’, there are three options namely ‘Proprietor,’ ‘Attorney’ and ‘Agent. Select the applicable one.
- After that fill the Proprietor’s name and select ‘submit’ in order to search the records for any previous code.
- If already registered, the code will appear along with name and address.
- If not then add the details manually in the page in the proprietor registration form. Select the appropriate proprietorship firm from Single, proprietorship firm, Private limited company, start up etc. Fill basic proprietor details such as name, address, email ID and phone number. Select ‘submit.’
- Note down the proprietor code that will be shown on your screen.
- The credentials will be e-mailed to the e-mail id already submitted.
- The credentials are to be used to login to move on to further steps and filing of the details.
- Applications for International registration can be filed using the Link IAOI (International Applications Originating from India) and the Domestic Applications can be filed using the link New Applications.
- For domestic registrations, click on New Applications tab after logging in and select File TM-A and put class into the textbox and submit.
- After that a temporary application number is generated which is to be used till the payment is done.
- Then on the left hand side of the screen, click drafted applications and then open the TM-A form available at http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/FORM-TM-A.pdf.
- Fill all the fields along with digital signature.
- Then proceed with the payment option.
- After the payment will be done, an e-mail will be sent for the confirmation of submission of application.
- Objections can be raised against opposition by clicking the TM-O button after logging in to your account. (TM-O form available at http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/FORM-TM-O.pdf.
- Renewal of a TM Application can be filed within six months before the expiration of validity upto six months after the expiration of validity. To file a Renewal request one can go to “Form Filing Tab” and select TM-R form available at http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/FORM-TM-R.pdf. While drafting a TM-R form you will require entering the application number for which renewal request is being made