Trademark registration/Objection/Opposition/renewal

Trademark

Registration

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Trademark Registration

Building a brand requires a lot of time, effort, and capital. In order to protect the brand’s logo, tagline, product shape, packaging, sound, fragrance, and color combinations, as well as anything else that gives it a distinct identity, it is necessary to make sure that you possess the rights to use them. Trademark registration is a type of intellectual property that differentiates your product or service from other competitors in the market. This article discusses trademark registration in India, eligibility for trademark registration, documents required to register a trademark online, and the types of trademark registration in India.

Trademark Registration in India

In India, the Trademark Act of 1999 permits individuals, corporations, and non-profit organizations to register a trademark. Trademark registration allows for exclusive ownership rights and prohibits others from using the mark, favoring the registered mark’s owner. Once a trademark is registered, the “TM” symbol can be used with the applicant and the brand. To protect the brand name, trademark registration in India is essential. It is typically best to seek trademark registration under the supervision of a professional, as the process entails several steps and needs constant government follow-up.

Eligibility for Trademark Registration

Trademark registrations are prevalently used to protect unique brands, slogans, or invented terms. Individuals, corporations, and non-profit organization can all file for trademark registration in India. However, each class of person or entity has its own set of requirements when it comes to filing a trademark application.

An individual (person) who is not doing any business can also obtain a trademark application and obtain trademark registration for a symbol or word that is proposed to be used by the applicant in the future. The joint owners of a company together can file for a trademark, and both their names must be mentioned in the application.

A proprietorship firm may file a trademark application under its proprietor’s name but not under the business and proprietorship names. If you include a proprietorship name and a business name in your application, those details will be considered separately.

A partnership company must include all the names of the partners in the application while registering for a trademark, with a maximum of ten members. If a minor partner is present, the name of the minor’s guardian representing him must be mentioned.

In the case of the Limited Liability Partnership, the application should be in the name of the LLP. It is an incorporated body where the partners have their own identity. The partners cannot be the applicant as the trademark belongs to the LLP.

Any Indian company, regardless of whether it is a private limited, limited, or any other form, must file a trademark application in the company’s name. It should be noted that any incorporated entity has its own identity, so a company’s director cannot be a trademark applicant.

If a foreign incorporated entity applies for a trademark in India, the application must be made in the corporate name as it is registered in the foreign country. The nature of the registration, the country, and the law should all be mentioned here.

If a trademark application is filed on behalf of a trust or society, the managing trustee, chairman, or secretary who is representing the trust or society must be named.

Documents Required to Register a Trademark Online

If the trademark is registered under a company or LLP, an incorporation certificate is required. If the trademark is registered under a partnership firm, a partnership deed is required. The PAN card of the authorized signatory and their Aadhaar card are also required. The TM-48 form, which is a legal document that permits your attorney to submit your trademark with the trademark registry on your behalf, must be signed. Finally, the logo must be uploaded in color to ensure that all colors of the trademark are covered under the registration.

Types of trademark registration:

Standard Character Mark: This type of trademark registration protects the word or phrase itself, regardless of font, size, or style. It’s often used for business names, slogans, and product names.
Design Mark: This type of trademark registration protects the design or logo associated with a particular product or service.
Collective Mark: This type of trademark registration is used by organizations or groups to distinguish their goods or services from those of others. It’s often used by trade associations, unions, and cooperatives.
Certification Mark: This type of trademark registration is used to certify that a product or service meets certain standards or qualifications. It’s often used for products like organic food or fair trade coffee.
Sound Mark: This type of trademark registration protects a unique sound or musical jingle associated with a particular product or service.
Trade Dress: This type of trademark registration protects the overall look and feel of a product or service, including its packaging, design, and advertising.
Service Mark: This type of trademark registration is used to protect services, rather than physical products. It’s often used for things like restaurant services or consulting services.

Each type of trademark registration offers unique benefits and protections, so it’s important to choose the right one for your business or organization.

Trademark Objection

Trademark registration is an important aspect of protecting a brand, and it is crucial to ensure that the application is free from any objections. However, there are several reasons why the Trademark Office may raise objections to a trademark application. In this article, we will look at some of the top reasons for trademark objections and the corrective actions that can be taken to overcome them.

Use of Incorrect Trademark Form

One of the most common reasons for trademark objections is the use of an incorrect trademark form. If the application is not made in the proper form, the Trademark Examiner will raise an objection. This objection can be overcome by requesting to correct the trademark application by filing a request on form TM-16.

Incorrect Trademark Applicant Name

It is essential to ensure that the trademark applicant’s name is entered correctly in the application. If there is an incorrect trademark applicant name, the Trademark Examiner will raise an objection. The applicant can overcome this objection by requesting to correct the trademark application by filing a request on form TM-16.

Failure to File Trademark Form TM-48

If a Trademark Attorney or Trademark Agent files the trademark application on behalf of the applicant, Form TM-48 must be attached. Failure to attach or incorrectly executing Form TM-48 will result in an objection raised by the Trademark Examiner. The applicant can overcome this objection by requesting to correct the trademark application by filing a request on form TM-16.

Incorrect Address on Trademark Application

If the applicant’s address for service in India is not mentioned in the trademark application, an objection can be raised. The applicant’s principal place of business should also be mentioned in the application. To overcome this objection, the applicant can request to correct the trademark application by filing a request on form TM-16.

Vague Specification of Goods or Services

In a trademark application, if the specification of goods or services is too vague or encompasses a large variety of goods and services in a class, the Trademark Examiner will raise an objection. To overcome this objection, the applicant can provide exact items in respect of which the trademark is sought to be registered by filing a request on form TM-16.

The Same or Similar Trademark Exists

If the Trademark Examiner finds the same or similar earlier trademarks of different trademark owners in respect of the same or similar description of goods or services, an objection will be raised. The applicant can submit a reply to the trademark examination report by stating that trademarks cited as conflicting marks in the examination report are different from the applicant’s trademark, along with supporting evidence.

Trademark Lacks Distinctive Character

Trademarks that are not capable of distinguishing the goods/services of one person from those of another person are devoid of distinctive character and are liable for objection under absolute grounds for refusal of trademarks. To overcome this objection, the applicant can submit proof to show that the mark has acquired a distinctive character by virtue of its prior use.

Trademark is Deceptive

If the mark has the potential for the deception of the public by reason of something inherent in the mark itself or its use, an objection can be raised by the Trademark Examiner. To overcome this objection, the applicant can seek to exclude goods or services from the specification by filing Form TM-16.

In conclusion, trademark objections can be a significant hurdle in the registration process, and it is essential to ensure that the application is free from any objections. By being aware of the common reasons for objections and taking corrective action accordingly, the applicant can increase the chances of a successful trademark registration.

Trademark Opposition

Trademark Opposition is a legal process that takes place after the Registrar has approved a trademark application and published it in the journal. This process is designed to allow any person to oppose the registration of a trademark if they believe it is likely to create confusion among the public. The grounds for opposition include similarity or identity with an earlier or existing registered trademark, lack of distinctive character, descriptiveness, bad faith, being customary in the current language or business practices, causing confusion or deception, being contrary to or prevented by law, being prohibited under the Emblem and Names Act, 1950, or containing matters that are likely to hurt any class or section of people’s religious feelings.

Eligibility for opposition is open to any person who can demonstrate that the mark is likely to cause confusion among the public. This can include customers, members of the public, competitors, or anyone else who believes they have a valid claim. The person filing the trademark opposition needs to be a prior registered trademark owner. Once a trademark opposition is filed, both parties need to conclude whether the trademark should be abandoned or registered.

The procedure for trademark opposition starts with the filing of an opposition notice within four months of the first date of appearance. This notice must be filed on Trademark Form 5 in the prescribed format and with the applicable fees. The trademark registrar would then serve a copy of the trademark opposition notice to the trademark applicant, who must file the counter statement within two months of receiving the opposition notice. If the trademark applicant fails to file the counter statement within the specified time frame, the trademark application will be “abandoned”. However, it is necessary to understand the status of trademark registration.

After the evidence filing stage, the registrar shall send notices to both parties stating the date of hearing, which shall be at least one month after the date of the first notice. The hearing is based on the opposition notice, counter-statement filing, and evidence submitted. The registrar hears the case, and if any of the parties fail to appear for the hearing, the registrar will rule against them. The registrar decides whether the opposition was successful based on a review of the evidence submitted and a hearing of both parties and thus whether the trademark should be registered or not. However, a party who is dissatisfied with the registrar’s decision may appeal it to the Intellectual Property Appellate Board.

The time limit for trademark opposition is three months after the trademark advertisement in the Trade Marks Journal, which may be extended by a period not exceeding one month. Trademark opposition filings can only be done at the Trademark Registrar’s office and cannot be taken to a Court or the Appellate Board directly (IPAB). If a trademark opposition is successful, the trademark’s registration will be rejected, and if the trademark opposition application is rejected, the brand will be registered.

To file a trademark opposition, the details of the trademark application against which the opposition is entered must be provided. This includes the application number against which opposition is entered, an indication of the goods or services listed in the trademark application against which opposition is entered, and the name of the applicant for the trademark. Additionally, the details of the earlier mark or the earlier right on which the opposition is based must be provided. If the opposition is on account of an existing trademark application or registered trademark, the application number or registration number of the earlier mark must be provided. If the opposition is based on a mark that is alleged to be a well-known trademark, then an indication to that effect must be provided, stating in which country or territory the earlier mark is recognized to be well-known.

Moreover, details of the opposing party must be provided, including the name and address of the proprietor of an earlier mark or of the earlier right, an indication that they are the proprietor of such mark or right.

Trademark Renewal

Trademark renewal is an essential aspect of maintaining a registered trademark in India. A trademark registration is valid for ten years, and after that period, it needs to be renewed to maintain its legal protection. The renewal process ensures that the registered trademark remains in force and continues to offer the exclusive rights to the trademark owner.

The trademark renewal process must be initiated six months before the expiry date of the trademark registration. If the renewal process is not completed within the stipulated time frame, the trademark registration will expire, and the trademark owner may lose the legal protection provided by the registration.

To renew a trademark in India, the trademark owner needs to file a renewal application with the Trademark Registrar. The application must be made in the prescribed format and accompanied by the appropriate renewal fees.

The trademark renewal application should include the following details:

The trademark registration number
The trademark owner’s details, including name, address, and contact information
The class of goods or services for which the trademark is registered
The renewal period for which the renewal is being sought
The appropriate renewal fees

Once the renewal application is filed, the Trademark Registrar will examine the application and verify that all the necessary requirements have been met. If the application is complete and meets all the requirements, the Trademark Registrar will renew the trademark and issue a renewal certificate.

Trademark renewal provides several benefits to trademark owners. Renewal ensures that the trademark remains protected and cannot be used by others. It also allows the trademark owner to continue to use the trademark to promote their goods and services and maintain the goodwill associated with the brand.

Trademark renewal is a critical process that helps protect a registered trademark’s legal rights in India. Trademark owners should ensure that they initiate the renewal process in a timely manner to avoid the risk of losing their trademark registration.