Trademark Application Filing & Prosecution in India
Trademark prosecution and procedure in India involves the stages of filing, examination, publication or advertisement, opposition, registration and renewal.
A trademark application can be filed for a single class or multi class. Application claiming priority from a convention country can also be filed in India within six months from the priority date.
Issuance of Examination Report
After an application is filed the same is then examined by the Registrar in accordance to the provisions of Trademark Act. If an objection to registration of the mark is raised, an official examination report will normally be issued by the Registrar within 3 months to 6 months of filing depending on the backlog of the Registry.
The Registrar may accept or refuse the application subject to the provisions of the Act. An application can be refused / objected by the Registrar on relative or absolute grounds:
Relative Grounds: The relative grounds for refusal of a trademark are provided under Section 11 of the Trademark Act, 1999.
- That a trademark cannot be registered if because of:
- Its identity with an earlier trademark and similarity of goods or services;
- Its similarity to an earlier trademark and the identity or similarity of the goods and services, there is likelihood of confusion.
- That a trademark cannot be registered which is identical with or similar to an earlier trademark and which is to be registered for goods and services which are not similar to those for which earlier trademark is registered in the name of a different proprietor if, or to the extent, the earlier trademark is a well- known trademark in India.
- That a trademark cannot be registered if or to the extent that, its use in India is liable to be prevented by virtue of any law.
Absolute Grounds- Section 9 of the Trademark Act, 1999 provides for the absolute grounds for refusal of a trademark. The absolute grounds of refusal are:
- If the trademark is devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of others;
- If the trademark consists exclusively of the marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origins or the time of productions of the goods or rendering of the service or other characteristics of the goods or services;
- If the trademark consist exclusively of marks or indications which have become customary in current language or in the bona fide and established practices of the trade.
- The trademark is of such nature so as to deceive the public or cause confusion;
- The mark comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
- The mark comprises or contains scandalous or obscene matter;
- Use of the mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950
- If the mark consists exclusively of:
- The shape of goods which results from the nature of the goods themselves; or
- The shape of goods which is necessary to obtain a technical result; or
- The shape which gives substantial value to the goods.
However, a trademark which may be initially refused on absolute grounds can be registered if it acquires a distinctive character/ secondary significance as a result of extensive and continuous use
Pursuant to the issuance of Examination Report/ office action, the applicant has to file an appropriate reply alongwith the required documents (if any) for overcoming the objections raised by the Registry against the Trademark.
The Reply to office action is to be filed within one month from the date on which the office action has been received
If the Examiner after scrutinizing the reply to office action finds it appropriate then the Trademark will be advertised in the Trademark Journal. If the Examiner is not satisfied with the reply or the objections are not met then he may list the application for hearing on a stipulated date and time.
The next stage in the process of trademark prosecution is publication or advertisement of trademark. After examination and upon acceptance of the response by the Registrar, the application is ordered for advertisement /publication in the Trademarks Journal. An application is advertised in the Trademarks Journal and open to the public for filing opposition against the registration of a mark. Thus, once a mark is accepted, the Registrar advertises the mark in the official Trade Marks Journal, which is published and is available on the Registry’s website every Monday.
Once the trademark is published in the Trademarks Journal, any aggrieved person can oppose its registration by filing a notice of opposition with the Registry. The notice of opposition is required to be filed within the prescribed period of four months from the date on which the mark was published in the Trade Marks Journal.
Registration and Renewal
The last step in the process of trademark prosecution is registration and thereafter renewal. The application shall proceed to registration where no notice of opposition is filed against the mark or where the opposition was filed and subsequently decided in favor of the applicant. The mark is then registered for a period of 10 years from the date of filing of the application and the registration certificate is issued. A registered trademark can be renewed from time to time on payment of renewal fees, failing which the mark becomes liable to be removed from the Register of trademarks. Each renewal term is for a period of 10 years.
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