Among different types of intellectual properties present, Trademark is one of
the essential types of intellectual property which is basically a word or
combination of words, colors, logos, designs, etc which can be represented
graphically and helps to differentiate one person's goods and or services from
that of another person.
Trademark helps individuals and companies to create a brand name in the market
by which, general public comes to associate one's product with a mark and also
helps to understand the origin and quality of certain goods and services.
Trademark represents and advertises its product, for example, "COLGATE" is
associated with dental care items. Thus, COLGATE promotes its items and also
differentiates it from similar/ identical items of its competitors.
Two of the above trademarks are involved in the same trade; they both
manufactures and sells various dental care products and their consumers ranges
are also same, but still, the consumers just by looking at these two marks on
the products, can easily recognize and associate with the origin and quality of
products which they sell. That is the power a trademark with unique features and
quality holds in itself.
Importance Of Registration Of A Trademark
Trademarks are jurisdictional rights and like any other tangible assets, its
also tangible in nature like, it can be licensed, sold, and purchased and can
also be utilized as a security to obtain loan. Hence, such a tangible asset
needs protection to keep acquiring economic benefits as long as the owner of
such a mark wishes to.
A registered trademark gives exclusive identity to one's business and also
safeguards their brand reputation. A trademark after registration can be used
for 10 years before its renewal and hence, as long as the owner keeps renewing
it on time, it can be used as long as the business of the trademark owner is
Only a registered trademark can file an infringement suit against any third
party infringer who tries to infringe or pass off their own goods and or
services by utilizing the reputation and the goodwill of another person's
registered trademark. The cost and time for registration of a trademark has ben
reduced and also it is a one time expense. Now, the time required for
registration ranges from 6 to 12 months and once its registered, it will remain
valid for next 10 years.
Steps To Register A Trademark
To register a trademark, the owner needs to go through the following steps:
Step 1: Trademark Search
- Conducting an exhaustive trademark search;
- Filing an application with necessary documents;
- Examination of the application by the Trademark Registry;
- Post examination procedures;
- Advertisement of the application in the Trademark Journal;
- Opposition by any third party;
- Registration and renewal of the same after every 10 years.
This step is very crucial before filing for trademark registration because
conducting a detailed search will help a trademark owner to know whether their
trademark is unique and distinct in nature and also check whether there is any
similar or identical mark already existing or not. The trademark owner will get
to know whether they have any existing competition in the same trade or not,
since, all the existing trademarks are available with the Trademark Registry.
Conducting a search gives a warning that whether the owner will have any risk of
using that trademark or is it safe.
Step 2: Filing an Application
After conducting a search, comes the process of filing the application for
registration. The application must be filed in Form TM-A either online from the
IP India's official website or physically at the Trademark Registry Office
according to one's jurisdiction.
The application must be filed for registration of a single ,ark only in a single
class of goods and or services or in multi-class, and the fees will be
calculated for each class included in the application. The application must be
backed up with the required documents, along with complete details of the
Moreover, if the trademark is already in use before filing the application (i.e.
the owner wants to claim prior use), they have to attach an user affidavit
indicating the usage of the mark also the evidence of its prior use in the
Step 3: Examination Process
Once the application is filed, it will be thoroughly examined by the Registrar
and they will prepare an examination in writing and will send a copy of it to
the applicant with 30 days to let them know whether the Registry wants to refuse
or conditionally accept the application and shall also include the materials by
which he came to such a decision.
The applicant within 30 days from receiving the examination report, must file a
reply, stating all the defenses along with evidences against the objection
raised by the trademark office and the owner shall put forward the reasons as to
why their application should not be refused and must be proceeded for further
registration procedures. If the applicant fails to reply within the above
mentioned time frame, the application will be abandoned.
Step 4: Post Examination Procedures
Once the applicant files the reply to the examination report, the Examiner if
wants can arrange a hearing if due to any reason he/she is not satisfied with
the reply sent by the applicant or if, the reply is not able to fulfill the
purpose of th objection stated in the report.
After the hearing process, if the examiner is fully satisfied, can accept the
mark and forward it for publication in the Trademark Journal or can refuse the
application if any objection is still there.
Step 5: Publication of the Trademark Application
After the examiner has accepted the application, it will be published in the
Trademark Journal which will remain there for 4 months. Advertisement of such an
application is done so that within the time period stated above, any third party
can see it and if they want can file an opposition against the applicant.every
Monday the Journal is updated with new accepted trademark applications.
Step 6: Notice of Opposition
Within 4 months from the date of publication of the application, any aggrieved
party can file a notice of opposition in Form TM-O. When any third party feels
that their already existing and prior use trademark has been infringed by the
applicant, or the application is made in bad faith and if such a trademark is
registered, it will harm the the reputation and good will associated with the
prior trademark of the third party.
Notice of opposition will halt the registration process and the opposed mark of
the applicant according to the Trademark Act, 1999, and the applicant have to go
through certain legal procedures if they wants 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 it is seen
that the applicant have to go through hearing as well.
Step 7: Registration
The last step in the registration procedure is to get the certificate of
registration. After the mark goes through all the legal processes related to the
opposition, and if the opposition is cleared, the applicant will receive the
In case where there is no opposition or any false opposition filed, after 4
months of publication period is over, within 7 days an auto- generated
registration certificate will be issued to the applicant by the trademark
registry office which needs to be renewed after every 10 years for keeping it
A trademark registration procedure is fast and simple, although not mandatory,
but it is recommended to get assistance from a trademark lawyer for registration
of the same to make it an easy and smooth procedure.
By: Madhuri Chakraborty