REGISTRATION APPLICATION

Because what Consumes Your Business, Controls the Market! Certify your trademark to protect the distinct identities anywhere in India With Legal Dekho experts!

Overview of Trademark Registration in India

Is it imaginable to you, someone else getting the benefits of your sweat and hard work? A top brand name doesn’t develop in one day; instead, it takes years of continuous efforts and sweat. Nevertheless, once you have fortunately marked your brand name in the minds of people, its advantages can be realized by you and your period to come. Thus, it is of utmost concern to protect the uniqueness of your merchandise or service from gaining an ambitious advantage in the market through trademark registration.

What is a Trademark?

Any ‘word’, ‘phrase’, ‘symbol’, and ‘design’ capable of identifying and characterizing the source of the goods of one party from those of others are known as a trademark. Trademark Act, 1999 permits you to register a trademark/Brand in India. It creates a way for exclusive ownership rights and prohibits all others from its usage and thereby benefiting the owner of the registered mark. In simple words, trademarks are distinctive, unique signs that are used to identify goods or services from a specific company. They can be designs, pictures, symbols or even expressions. It is important because it differentiates your products from the competitions. It can be associated with your brand or product.

Unlike patents, trademark does not have a definite limitation period. Where a patent expires in 20 years, a trademark registration expires after ten years of its record, but unlike patents, a trademark can be renewed again for another ten years. This process can be indefinitely done, meaning as long as you keep repeating the trademark it will not expire and will continue to be under the protection of the Act.

Application for logo registration can be made fast, immediate and online. You can start using a “TM” symbol as soon as the application is made. However, the TM registration process takes up to 4-6 months. It includes various methods for validating original ownership of the mark. Trademark registration in India is going through many innovative changes. Consider this – one can now avail trademark for Unconventional Marks through which even a distinct sound can currently be registered as a trademark in India.

Benefits of Trademark Registration in India

Trademark allows you and a third party to distinguish your commodities and services from those pertaining to your competitor. However, it would be helpful to hold in mind that geographical names, familiar names, fair trade words and common compression cannot be registered as a trademark. Apart from existing unique, a Trademark should be simple to use, make your goods marketable and generate brand recognition for your products.

Legal Protection:

Trademarks are categorised as IPR and are accordingly protected from invasion. Trademark registration also presents an independent claim to the use of the trademark in accordance to the “Class” of goods or service it offers. Once you have applied and filled the trademark application, the Symbol “TM” can be obtain with your products. In the case of unauthorised use of a registered trademark, you can seek relief for violation in proper and adequate courts in the country.

Product Divergent:

Trademark will enable differentiation of your product as upon the products of your competitors. Also, since trademark registration will be confirmed for the entire class of goods or services so described, it will help in precisely identifying your products. Customers uniquely distinguish products carrying different trademark, thus forming a customer base for your product.

Brand Recognition:

Customers correlate a product’s appearance, quality, features, and hence on with the company producing such products. They identify the product usually by the logo, which would be a registered trademark. Trademark registration aids brand identification for your goods and services. It also builds goodwill associated with the brand.

Creation of an Asset:

Trademark registration constitutes an asset for a business venture. Trademark is recognised as an indefinite asset for accounting and pay tax purposes. Trademarks are intellectual property and carry a value compared with the products they describe. Trademarks can be sold, franchised, distributed or commercially utilised in any other habit. You can understand the value or cost associated with trademarks in the books of accounts, demand a deduction for depreciation and verify income from the same.

Business Valuation and Goodwill:

Trademarks registered and connected with your products, magnify your overall business assessment, goodwill and net worth in the industry. Your trademark describes your quality assurance, distinct features of your products and your organisation’s purpose.

Trademark Acknowledgement:

Trademark registration in India is confirmed for ten years from the date of filing of an application. Still, the trademark can be further renewed. In a case wherever you want to use your trademark outside India or increase your business outside India, you need support or trademark registration in the particular countries. In such cases, your trademark registration and business in India functions as a base to obtain certifications outside India.

Business Expansion:

A trademark establishes a connection between the customers and the products of an enterprise. With efficient or unique products, you can create a customer base. Your trademark helps you in retaining and expanding the customer base. Trademark Registration of your trademark confers exclusive rights of use for 10 years and protects your business revenues. Business enterprises can leverage the benefits of a customer base by introducing new products and expanding their business.

Requirements for Registering a Trademark

• Details of the brand name, logo, symbol or slogan for which trademark registration is required.
• Date of first use of the trademark.
• Details of the owner of the trademark like name and address. In case trademark is sought on company name than the Name of all the members.
• An authorization form named TM-48.
• Applicable fees for Trademark registration.
• MSME / Start-up Recognition
• Partnership firm, body corporates (other than an individual) can provide a certificate of registration under MSME or Start-up India scheme to avail 50% rebate on the Government fee

How to Register a Trademark – Trademark Registry

The trademark registry was initiated in 1940 then came the ‘Trademark Act’ which was passed in 1999. As a functioning body, the trademark registry performs all the rules and regulation of the trademark law in India. The Head Office of the trademark registry is in Mumbai, and it has branch offices in Delhi, Ahmedabad, Chennai and Kolkata. Meanwhile recording a trademark, it is registered under the Trademark Act, 1999 and then the registry of trademarks discloses and registers it. In this process, the registry will check whether the registering mark meets all the conditions of the Act before recording it.

REPLY TO EXAMINATION REPORT

Reasons for Trademark Objections

Upon receipt of the application, the trademark examiner scrutinizes the application for its correctness. Objections can be received for the following reasons:

• Incorrect FormIf the applicant applies for trademark registration by filing the wrong form, the examiner can object.
• Incorrect Applicant NameExaminer double-checks for the correctness of the applicant’s name; the name must be similar to what is provided in PAN. Hence, it is advisable to cross-check the spelling of the name double.
• Usage Of Deceptive WordsIf trademark name or logo used is deceptive in nature or usage of any misleading term that gives a false description about the product shall be rejected.
• Offensive TermsTrademark shall not use any offensive term which can lead to the rejection of the trademark
• Insufficient Information On Goods Or ServicesWhen the trademark application failed to mention necessary information, in brief, the trademark examiner may reject the application based on such grounds.
• Identical Logo Already RegisteredIf the proposed trademark is similar or identical with the already registered logo, the examiner shall raise the objection stating the reason it can create confusion.

Respond to Objection Raised

Once the objection is filed, the applicant is given notice stating the ground of such objection. Once the objection is received, the applicant needs to follow the following steps thereafter:

• Receipt Of Trademark ObjectionOnce the objection is received, the applicant shall analyze and study the objections carefully to leave no room for ambiguity.
• Objection ReplyOnce the objection is received, the applicant shall file a counter statement to the objection raised. Proper answer with supporting rules and documents shall be drafted, such as:• An affidavit stating the usage of trademark• Advertisement in the media• Proof of availability of trademark online Such reply along with supporting documents shall be filed on Trademark e-filing portal online.
• Hearing Authority, when receiving the objection reply, will either approve or reject it as per its discretion. In case the authority accepts the reply, it will proceed further for registration and advertise the same in the trademark journal. However, in case it is not accepted, or authority sought for further clarification, the examiner shall schedule the trademark hearing and the same shall be notified through hearing notice.
• Trademark JournalIn case after the hearing, a trademark is accepted and granted, the same shall be published in the Trademark Journal. However, during the hearing, if the trademark is rejected, the authority shall pass the refusal order stating the reason in brief.
• Review PetitionUpon the receipt of refusal order, the applicant can file a review petition within 30 days of receipt of refusal order and shall specify the reason on which grounds the order must be reviewed.
• RegistrationAfter the trademark is published in the journal, it shall remain open for four months for the opposition. In case of no receipt of any opposition during the stated period, it shall proceed towards registration and thereafter registration certificate shall be issued that contains the logo registered along with the class in which it is registered.

What to do when the online status of the Trademark Registration application says “objected”?

• Get in touch with a trademark expert consultancy
• Obtain the examination report and go through it thoroughly. React to the report and must mention how and why objections are not tenable.
• Give a befitting reply to the objections raised within 30 days from the date of receipt otherwise application will be considered as abandoned. It is crucial to submit the reply within the stipulated time period and in an expedited manner.
• Frame your reply in a clear and precise manner. Make it strong enough with high precision that it could establish the distinctiveness of the mark, thus making it eligible for trademark registration.

What to do after filing Trademark Objection?

• Once a reply has been submitted against the objection raised via examination report, the Registrar will respond to the reply either by accepting the trademark or by conducting a hearing session.
• In case a hearing date is given, hire a trademark consultant or lawyer who will represent you and put up your side before the authority strongly.
• Contact Corpbiz; we have an experienced group of people who are expert in handling trademark objection.

AMENDMENT APPLICATION

Before understanding amendment of pleadings, there is a need to explain what is Pleadings and its Rule. Pleadings are the statements which are the backbone of every civil suit.
No civil suit will come into existence if there are no Pleadings.
Pleadings have been defined under Order 6 Rule 1 of CPC which states that Pleading shall be Plaint or Written Statements.
Plaint is the statements filed by the Plaintiff in a Civil Court to prove his claim whereas Written statements are the statements defined in Order 8 Rule 1 of CPC which states that defendant should file written statements in 30 days from the date of issuance of the summons. Written statements are filed by the defendant for his defense. Plaint has not defined in CPC but it can be termed as pleadings of Plaintiff from which civil suit is initiate Pleadings should be properly drafted and it should not contain any vague or unambiguous statements. Pleadings are those material facts which helps plaintiff to define the cause of action and defendant to establish his defense in a civil suit.

What rules to be followed while drafting of pleadings?

1. Pleading should contain the facts but no law should be applied in pleadings. Only the court has the power to apply the law on the basis of fact stated in the Pleadings.
2. Pleadings should contain material facts. Parties should avoid using immaterial or irrelevant facts in the Pleadings.
3. Parties should not give the evidence in the pleadings from which facts are proved.
4. Pleadings should contain the material facts in the brief form. Parties should avoid using irrelevant or immaterial statements while drafting the Plaint.

OBJECTION FILING

If your trademark is objected, it doesn’t mean it has been rejected. Your respond on the objection of a trademark can upgrade the chances of registering the trademark.

Understanding Trademark Objection

Trademark objection must be handled cautiously and is considered as the most crucial stage of trademark registration. Trademark Registration application procedure includes trademark objection. Trademark examiner raises the objection on the grounds of finding during the examination procedure on certain goods. It should be handled with care, and convincing reply should be provided on the raised queries; otherwise, it can lead to the rejection of trademark application. The trademark should not be similar or identical to any third-party mark; it should be distinguished in every possible way.

Trademark is one of the rights granted to protect intellectual property in India. Rights covered under Trademark Act 1999 include protection, registration, and objection of a trademark with government authority.

Trademark Registration undergoes the following steps:

• Trademark verification/search
• Filing of application
• Formality inspection
• Publication in the journal
• Grant of registration

A registered trademark cannot be used by any third person without authority; thus it protects it from any infringement.

What is Trademark Objection?

Once the trademark is applied for registration, it can be objected by the public, examiner or any other third party. It happens during the initial stage of the trademark registration process when the examiner objects the trademark application due to several reasons. The objection cannot be the reason for rejection; however, registrar seeks further clarification or explanations about the logo and its legality.

The third-party can also object trademark in the name of public interest. Two ways when a public or third party can object the registration of trademark:

• When the trademark is published on Trademark Journal
• In case the applicant uses the mark before its registration

When the objection is received, the applicant shall file a comprehensive objection reply within a month or in the prescribed time period.

Reasons for Trademark Objections

Upon receipt of the application, the trademark examiner scrutinizes the application for its correctness. Objections can be received for the following reasons:

• Incorrect FormIf the applicant applies for trademark registration by filing the wrong form, the examiner can object.
• Incorrect Applicant NameExaminer double-checks for the correctness of the applicant’s name; the name must be similar to what is provided in PAN. Hence, it is advisable to cross-check the spelling of the name double.
• Usage Of Deceptive WordsIf trademark name or logo used is deceptive in nature or usage of any misleading term that gives a false description about the product shall be rejected.
• Offensive TermsTrademark shall not use any offensive term which can lead to the rejection of the trademark
• Insufficient Information On Goods Or ServicesWhen the trademark application failed to mention necessary information, in brief, the trademark examiner may reject the application based on such grounds.
• Identical Logo Already RegisteredIf the proposed trademark is similar or identical with the already registered logo, the examiner shall raise the objection stating the reason it can create confusion.

Respond to Objection Raised

Once the objection is filed, the applicant is given notice stating the ground of such objection. Once the objection is received, the applicant needs to follow the following steps thereafter:

• Receipt Of Trademark ObjectionOnce the objection is received, the applicant shall analyze and study the objections carefully to leave no room for ambiguity.
• Objection ReplyOnce the objection is received, the applicant shall file a counter statement to the objection raised. Proper answer with supporting rules and documents shall be drafted, such as:• An affidavit stating the usage of trademark• Advertisement in the media• Proof of availability of trademark online Such reply along with supporting documents shall be filed on Trademark e-filing portal online.
• HearingAuthority, when receiving the objection reply, will either approve or reject it as per its discretion. In case the authority accepts the reply, it will proceed further for registration and advertise the same in the trademark journal. However, in case it is not accepted, or authority sought for further clarification, the examiner shall schedule the trademark hearing and the same shall be notified through hearing notice.
• Trademark JournalIn case after the hearing, a trademark is accepted and granted, the same shall be published in the Trademark Journal. However, during the hearing, if the trademark is rejected, the authority shall pass the refusal order stating the reason in brief.
• Review PetitionUpon the receipt of refusal order, the applicant can file a review petition within 30 days of receipt of refusal order and shall specify the reason on which grounds the order must be reviewed.
• RegistrationAfter the trademark is published in the journal, it shall remain open for four months for the opposition. In case of no receipt of any opposition during the stated period, it shall proceed towards registration and thereafter registration certificate shall be issued that contains the logo registered along with the class in which it is registered.

What to do when the online status of the Trademark Registration application says “objected”?

• Get in touch with a trademark expert consultancy
• Obtain the examination report and go through it thoroughly. React to the report and must mention how and why objections are not tenable.
• Give a befitting reply to the objections raised within 30 days from the date of receipt otherwise application will be considered as abandoned. It is crucial to submit the reply within the stipulated time period and in an expedited manner.
• Frame your reply in a clear and precise manner. Make it strong enough with high precision that it could establish the distinctiveness of the mark, thus making it eligible for trademark registration.

What to do after filing Trademark Objection?

• Once a reply has been submitted against the objection raised via examination report, the Registrar will respond to the reply either by accepting the trademark or by conducting a hearing session.
• In case a hearing date is given, hire a trademark consultant or lawyer who will represent you and put up your side before the authority strongly.
• Contact Legal Dekho; we have an experienced group of people who are expert in handling trademark objection.