Intellectual Property Rights

A trade mark is a mark which can be represented graphically and which can distinguish the goods and services of its proprietor from those of others. Apart from the conventional trade marks, a symbol, sound, smell, colour can also be a trade mark if it is capable of graphical representation. A trade mark lends exclusivity of use to its proprietor and if it is used aggressively and continuously to promote one’s product, it has the potential to create an ever-lasting impression in the mind of general public.

Before initiating the process for registration of a trade mark one needs to minimise the risk of rejection of trade mark application. As a trade mark is a valuable asset, a number of careful searches are required to be conducted to make sure that the subject mark is registerable. First, one must conduct a common law search through internet, newspapers, financial sources etc. to make sure no unregistered trade mark similar or identical to one’s trade mark exists. Additionally, search on database of Ministry of Corporate Affairs website and International applications designating India under Madrid protocol is also recommended.
The second kind of search is conducted to discover the existence of identical or similar trade marks which are registered. This search can be conducted online on the official website of Indian Trade Mark Registry.

Different goods and services are classified under different classes to streamline the process of trade mark registration. The trade mark protection afforded by registration is generally limited to the particular class in which the registration was made. Therefore, one must carefully consider the specifications of one’s goods and services to make sure the registration is done in the correct class.

Process of Registration of a Trade mark

Check List for filing a Trade mark Application

Details of the Applicant

• Name
• Address
• Nationality
• The names of all the partners (if the Applicant is a partnership firm)
• The country or state of incorporation (when the Applicant is a company)

Details of the trade mark

• A list of goods and/or services to identify the relevant class
• Soft copy of the proposed trademark
• English translation of non-English words which form part of the trademark
• First date of use in India, if any.

Power of attorney simply signed by the Applicant.

Trade Mark Registration

To start the procedure, an application is filed containing details of the proprietor, the trade mark and the goods or services it pertains to. The application can be filed both online and offline. The application is given an application number. The trade mark registry then examines the application to determine if its registration is permissible under the Trade Marks Act. If the trade mark is similar or identical to any existing mark or if the trade mark suffers from any other defect which makes it unregistrable, an objection to that effect is raised by the examiner. In order to remove the objection, a reply to the examination report is filed by the applicant. In most cases, a show cause hearing is also fixed. If the Examiner/hearing officer is satisfied that the trade mark is registrable, he issues a Letter of Acceptance and the mark is published in the trade marks journal.

If someone is of the view that the advertised mark is similar or identical to their mark, they may oppose the same by filing a notice of opposition. The applicant is given an opportunity to file a counter-statement to deal with such opposition. After this, the opponent and the applicant each file an evidence in support of opposition and evidence in support of application respectively. The opponent can further file evidence in reply if he wishes to do so. After this stage, a hearing may be fixed by the registrar. If the registrar is convinced that the trade mark is distinct form the opponent’s mark, then he may proceed with the registration of the trade mark.

Application under madrid protocol

Filing an international application under Madrid Protocol is a good option if registration in multiple countries is sought in one go. There are more than 100 member countries and the applicant can choose to get registered in any of them. To file an application under the Madrid Protocol, an application/registration must be made with the Indian Trade mark Registry. After this, a certification has to be obtained from the Indian Trade mark Registry confirming that the details provided in the international application regarding the mark, class of goods or services, colour claim etc. are identical to those in the Indian application/registration. The Registry also certifies the date on which the international application is filed before forwarding the application to WIPO.

The application goes through a formal examination to check if it fulfils the statutory requirements. In case of impropriety, the applicant is notified regarding the same and three months is given him to overcome the irregularities. If the applicant fails to do so within the stipulated time, then his application is treated as abandoned. If the irregularities are removed, the application is recorded in International Register and published in the WIPO Gazette of International Trade marks. A certificate of registration is issued to the applicant. The trade mark offices of the member countries where the applicant is desirous to register his trade mark as per his application are also notified. The application passes through the same registration process as a national application of the designated country. The designated country then notifies WIPO whether the application is accepted or refused and proceed with the mark accordingly.