Easy to Understand Process of Trademark Registration
In-office process/actions in processing applications for registration of trademarks
Briefing on the simplified process of registration of trademark, an application for trademark registration is received at any branch office of the Trade Marks Registry or the Head office or within whose territorial peripheries the Principal place of the enterprise of the applicant is located. Trademark applications are tackled by the Office of the Controller General of Trade Marks, Patents, Industrial Designs and Geographical Indications. The digitization and scrutinizing of the application is conducted at the respective branch offices. The application should be filled according to territorial jurisdiction.
The Application is then evaluated typically in order to determine the eligibility and availability of the relevant trademark for distinguishing applicant’s goods or services, whether it is forbidden for registration under any legal enactment for the time being in force, whether the registration of the mark is foreseeable to cause deceit or ambiguity because of already existing identical marks prevailing on records. The evaluation of all the filed applications is conducted centrally in the Head Office of the TRADE MARKS Registry situated at Mumbai.
The trademark Registry office reviews the application thoroughly to check if it is complete and then assigns the application a number. This number allotted becomes the registration number if the trademark is registered. The Registrar on review of the application and any proofs of use or uniqueness make a decision of whether the application should be welcomed for registration or not, and if accepted, prints the same in the Trade Marks Journal, an official tabloid of the Trade Marks Registry, which is announced weekly on the official website.
Within a time period of 4 months from the date of publication any business, individual or entity can file an opposition. In case of filing suits, the opposition proceeding is done at the respective office of the Trade Marks Registry. The trademark association finds out if the application is prohibited from registration either on relative or absolute grounds for refusal as mentioned in the Trade Marks Act, 1999.
Under proceeding for opposition, a print copy of the notice of opposition is sent to the applicant who is asked to submit a counter-statement within two 2 months failing which the application is considered as renounced. If the counter statement is received by the applicant, then a copy of the same is served to the opponent, who produces proofs in support of his case by way of affidavit, then the applicant shows evidence. After that, the opponent files proofs by way of rebuttal (counter-argument). On finishing up with filing of evidence from both the involved parties, the matter is reckoned for a hearing and the judgment is made by a Hearing officer.
At the time of ‘show cause hearing’ subject to the facts an application might be accepted, or accepted with certain restrictions or fully rejected. The registrar’s decision made in the opposition proceedings is appealable and can be challenged by the persecutor by filing an appeal. If the application is rejected by a Hearing officer, the applicant holds the rights to appeal at the Intellectual Property Appellate Board, which has been embodied for the first time under the provisions of The Trade Marks Act, 1999.. However, within the term of 3 months publication in the Trademarks Journal, if not objected by a third party, the trademark will get on its way for registration and the trademark authority will get under way to offer a registration certificate.
Registration of a mark can be opposed by anyone on any of the grounds spelled out under Sections 9, 11 and 18 of the Act. The opposition contestant can file, as a ground of opposition that the mark filed for registration is:
- Lacks distinctiveness
- Incapable of differentiating
- Straight away references to the quality or character of the product or services.
- It is a topographical term which in its accustomed sense has come to be known for a specific kind of quality of goods
- It consists of heinous or atrocious elements or its use is condemned under the Emblems and Enactments (Prevention and Improper Use Act, 1950)
- Its identity of the goods covered by the earlier mark or similarity with the earlier trade mark
- The use thereof is likely to cause disorientation and imposition and is bound to be prevented under the laws of passing off or in the interest of copyright
- If the application for registration of trademark has been filed in back date or if a person applying is not the proprietor of the mark