A trademark is a visual symbol, word, phrase, label, numerals and/or combination of colors used by its owner to represent its business/trade. Fundamentally, it is the face of the ‘brand ‘that identifies and distinguishes the goods or services or articles of commerce possessed by its proprietor from those of its competitors.
The registration of trademark can stop others from using your trademark. Even being intangible, it is the most important and valuable asset as it evaluates the goodwill of your business. Although, the registration is not obligatory but in the event of infringement, it provides the owner the right to sue for damages.
Trademarks in India are registered by the Controller General of Patents, Designs and Trademarks under the Trademark Act, 1999 and the Trade Marks Rules of 2002. There are five regional trademarks offices, which are strategically located at Mumbai (H.O), New Delhi, Kolkata, Ahmedabad, and Chennai.
Firstly, the ‘Search’, is the most important aspect before applying for the registration of a trademark. The search runs through the records of the Trademark Registry and the result provides with an existing list of such marks, whether registered or applied, which are not very dissimilar from the mark applied for and may cause confusion in the minds of general public. A mark ought to have certain unique qualities and also shall not be identical or deceptively similar to the other applied or registered trademarks.
The Search result primarily helps the Applicant and / or his Attorney to predict or nticipate any objections which can be raised by the Examiners of the Trademark. This activity helps to save any future litigation / hearing which may delay the registration process.
REGISTRATION OF TRADEMARK:
Any person including an individual, company, proprietor or legal entity can apply for the registration of trademark. The Applicant can make an application to the Trademark Registry having jurisdiction along with the prescribed form (TM-1) and the applicable fees.
Once applied, the Applicant receives a unique application number along with date of filing. Many such applications are then allotted to a particular Trademark Examiner for examination. The Examiner carefully examines each application and ensures its registrability and whether it is within the purview of the said Act and Rules. The Examiner also has to very cautiously confirm any similarity with existing marks whether registered or applied. The marks which are identical or deceptively similar to any registered or applied trademark, cannot be registered as that would likely cause deception or confusion.
The Trademark Examiner, if finds any discrepancy, generates an ‘Examination Report’ objecting the registration under Section 9 and Section 11. The Examination Report states the details and reasons as to why the mark cannot be registered and calls for the applicant’s reply within specified period. The Applicant in response can reply to the said report putting forth his stand and defense. The Applicant can even request for ‘Hearing’ at the Trademark Registry.
PUBLICATION & OPPOSITION:
In the due course the mark is advertised in the Journal published by the Trademark Registry. This is done so as to bring the mark to the notice of the public at large and cal for any objection for its registration (TM-5). During the 120 days of mandatory period for opposition, it is made available to the public at large to oppose the registration. In a case where no opposition proceedings against the said trademark has been received or where an opposition against the said trademark was filed and decided in favour of the applicant the application would ultimately proceed for registration.
REGISTRATION AND RENEWAL:
Once the mark is registered, the Trademark Registry issues the Registration Certificate. A registered trademark is valid for 10 years from the date of application and can be renewed time to time as long as the renewal fees are paid. The application for renewal of Trademark has to be filed with the concerned regional trademark office within the expiration of this period in prescribed form and applicable fees.
Once you apply for registration one can start using the superscript “™” which means ‘Trademark Applied’. And once the mark is registered and the Trademark Registry issues a Registration Certificate you can start using the superscript “®” which means ‘Trademark Registered’.
Rishabh H. Vakharia, Practising Advocate in Bombay High Court and
Associate Partner with Medialexicon – Solicitors & Attorneys , Mumbai.