Trademark registration is not a mandate under the Indian trademark law, however it is advisable to go for a registration for certain reasons. A registered trademark has greater legal protection as in cases of infringement under Section 29 of the Trademark Act, 1999, the proprietor of a registered mark can file a trademark infringement lawsuit seeking remedies. Under Section 31, the registration certificate of the trademark serves as an evidence during infringement lawsuits.
There are several steps in the registration process of trademarks in India and the application procedure is laid down by the Trademarks Act, 1999 and Trademark Rules, 2017. The Act through Section 18 empowers the proprietor of the mark to file the application for its registration. The following steps are to be undertaken in order to get a mark registered as trademark under Indian trademark law:
a. Trademark Search- It is the initial step to make a trademark search even before making an application for trademark registration. The trademark of the proprietor or the mark that the proprietor seeks to get a registration for has to be first checked for similarity with any other mark. This search is done in order to prevent a new mark running risk of being deceptively similar to an older mark and getting rejected by the Registrar. Online trademark databases and the trademark database maintained by the Registry can be searched in order to prevent filing registration for a mark similar to an already registered mark.
The search has to be made in such a way that similarities with respect to a word mark, phonetic similarities and similarities in the classes of goods or services for which the newer mark and the previously registered old mark exists are found and compared. This step makes the trademark registration application fool-prove and eliminates the probability of rejection by the Register on the grounds of similarities with another existing mark.
b. Filing of Trademark Registration Application: The next step is to file the trademark registration application with the Trademark Registrar via TM-A. The application will be submitted with the prescribed fee and should be in written format containing details of name of the mark, goods or services the mark will be representing, the classes under which such goods or services falls and personal details of the proprietor of the mark and the date and place of filing has to be provided too. A graphical representation of the mark has to be submitted along with the application. The documents such as the Power of Attorney and those which evidence the commercial presence of the mark in the market must be attached in the application form.
c. Trademark Examination- The trademark registration application filed is examined by the Examiner to find out if there are any deviations from the criteria of registrable trademarks in India and if the mark in the application is either similar or identical to any earlier registered mark. The applications are checked for the presence of any grounds of rejection for registration application provided under Section 9 and Section 11 of the Act, as these two sections lay down the absolute and relative grounds for refusal to grant registration to trademarks in India.
Then, the Examiner raises a set of objections by issuing examination report to the Applicant. In case, the mark can be registered with some conditions, then the proposal for conditions or amendments via TM-M are also mentioned in this report. This report is both sent to the applicant and posted on the official website of the Trademark Office.
d. Reply to the Examination Report- Post the examination step comes the step where the applicant replies to the objections raised in the report. The response of the applicant is considered, if upon such consideration the objections can be waived off based then the trademark is accepted for registration and published in the trademark journal and any one among the general public, business owners, brand owners etc, can oppose the trademark within 4 months of the publication being made.
If such objections are not raised and even if raised are resolved, then it gets the green-signal for registration and the registration certificate with the seal of the Trademark Office is issued. In case, the objections raised through the examination report is not resolved by the reply from the applicant then a show cause hearing is scheduled, and the applicant is given an opportunity to be heard.
These above mentioned steps are the way in which a trademark registration procedure is carried out in India. The entire procedure takes up to 12-18 months, however, it can take longer if there are objections that need to be resolved. Registration of a trademark can be renewed indefinitely after every ten years for protection of one’s business identity and is highly advised in an era of fierce market competition.