This article has been written by Jessica Fernandez from Lloyd Law College. Edited and published by Risha Fatema.

Table of Contents

INTRODUCTION

Among the various kinds of property, one is an intellectual property. It is the kind of property that includes the intangible creations of the human mind and intellect. They include patents, trade secrets, copyrights, geographical indications, etc. Trademark is one of the most essential kinds of intellectual property. It is the unique identification given to a product or service that helps to distinguish it from other products and services in the market. A trademark can be a word, symbol, logo, a combination of colours, or even an identified smell. It is with the help of a trademark that companies and individuals create a brand name and distinguish themselves from their competitors. The Trade Marks Act of 1999, The Trade Marks Rules of 2002, and The Trade Marks (Amendment) Rules of 2017 are the governing legislation for trademarks in India.

IMPORTANCE OF REGISTRATION OF A TRADEMARK

There are various benefits of registering a trademark. It can be licensed, sold, purchased and can also be used as collateral to obtain loans. A registered trademark provides a unique identification to a business while also protecting its brand reputation. A trademark can be used for ten years after registration before being renewed; therefore, as long as the owner renews it on time, it can be used for as long as the trademark owner’s firm exists.
Many times, individuals and new businesses try to snatch away the reputation created by other products that have created a name for themselves in the market, the main motive behind it being revenue and profit. Only a registered trademark holder can file an infringement suit against any third-party infringer who attempts to infringe or pass off their own goods and services by leveraging the reputation and goodwill of another person’s registered trademark. The cost and time required to register a trademark have been lowered, and the expense is one-time. Now, registration takes 6 to 12 months, and once registered, it is valid for the next ten years.

REGISTRATION OF A TRADEMARK

The following steps are required to be taken for the registration of a trademark:

● SEARCH FOR A TRADEMARK AND ITS DISTINCTION FROM OTHERS

This stage is critical before filing for trademark registration since it allows a trademark owner to determine whether their brand is distinctive and whether there are any similar or identical marks already in existence. Since all existing trademarks are available with the Trademark Registry, the trademark owner will be able to determine whether they have any current competitors in the same
trade. Conducting a search indicates whether the owner will face any risks in using that trademark or whether it is safe. No two trademarks can be the same or be very similar or else the very purpose for its registration would be defeated.

● FILING OF AN APPLICATION

After finding a suitable trademark for one’s business, an application needs to be filed for registration. The application must be filed in Form TM-A either online from IP India’s official website or physically at the Trademark Registry Office according to one’s jurisdiction. The application for registration must be filed for
only a single trademark. It can be filed in only one class of products or services or several classes, and fees will be computed for each class contained in the application. The application must be accompanied by all relevant paperwork, as well as complete details with regard to the trademark. Furthermore, if the trademark was already in use prior to submitting the application, i.e., if the owner
wishes to claim previous use, then they must include a user affidavit showing the use of the mark as well as evidence of prior use in the trade.

● EXAMINATION PROCESS

Once the application is filed, the Registrar will thoroughly examine it, prepare an examination in writing, and send a copy of it to the applicant within 30 days to let them know whether the Registry wants to refuse or conditionally accept the application, as well as specify the materials that led them to such a decision. If it
so happens that the registration application is refused by the Registrar, then, within 30 days of receiving the examination report, the applicant must file a reply stating all defences and evidence against the objection raised by the trademark office, and the owner must present reasons why their application should not be
denied and should proceed to further registration procedures.

● POST EXAMINATION PROCEDURES

Once the applicant has filed a response to the examination report, the Examiner may, upon their discretion, schedule a hearing if he or she is dissatisfied with the response supplied by the applicant or if the response fails to meet the objective mentioned in the report. After the hearing, if the examiner is completely satisfied, he or she may accept the mark and transmit it for publication in the Trademark Journal, or he or she may decline the application if any objections remain after such procedure.

● PUBLICATION OF POTENTIAL TRADEMARK

After the examiner accepts the application, it will be published in the Trademark Journal and will remain there for the next four months. The application is advertised so that any third party can see it and, if they so desire, register an opposition against the applicant within the time frame specified earlier. Once a week, specifically every Monday, the Journal is updated with newly accepted
trademark applications.

● NOTICE OF OPPOSITION

Any aggrieved party may file a notice of opposition in Form TM-O within four months of the application’s publication date. When a third party believes that the applicant has infringed on their already existing and priorly used trademark, or that the application was filed in bad faith, and such a trademark is registered, it will hurt the third party’s reputation and goodwill connected with the prior
trademark. According to the Trademark Act of 1999, a notice of opposition will halt the registration process of the trademark, and the applicant must go through certain legal procedures if they want to continue with the registration of the same mark, which includes filing a counter-statement, submitting evidence in reference
to that counter-statement, and in some cases, the applicant must also go through a hearing as well.

● REGISTRATION OF THE TRADEMARK

The final step in the registration process is to obtain the certificate of registration. After the mark has gone through all of the legal processes linked to the opposition, and if the opposition is successful, the applicant will obtain the certificate. If there is no opposition or false opposition filed after 4 months of publication, the trademark registry office will issue the applicant an auto-generated registration certificate within 7 days, which must be renewed every 10 years to keep it active.

CONCLUSION

From the above discussion, it becomes evident that the process of registration of a trademark is not a very complex one, only the necessary precautions are taken by the authorities in order to identify those who have mala fide intentions of stealing the
goodwill that other businesses have build through the years for the products and services that are being offered by them. Without a doubt, it is important to register one’s trademark as innumerable benefits can be obtained by doing so, they can be obtained in the form of rights, and no third party can infringe that specific registered trademark. Such a registered product or service cannot be commercially exploited. A suit can be brought against a third party only when a right has been infringed. It is the registration of the
trademark that brings such right into existence and thereby, enables the owner of that trademark to claim his right.