A trademark is the first point of reference between the customer and the brand. The unique features of a TM make it easy for a consumer to recognize it. So, it is a must for a company or brand owner to take steps to keep the brand exclusive and secure it through trademark registration.
Before getting into the process of Trademark registration let us understand what a trademark is …
A trademark can be a name, logo, tag line, word/group of words, besides other combinations of these. It is what distinguishes the goods and services of one company/person from its competitors. Upon registration the owner gets an exclusive right to use these specific words, names or tag lines under the class they are registered in. This right empowers the trademark owner to sue or claim damages from a person who tries to infringe the mark.
Moving on…Now let us focus on why you should register?
To begin with, the first proof registration is asset creation. Trademarks are known as an intellectual property which can be sold, assigned or lent like any other asset. So, it helps in propelling the value of the said company or brand.
Secondly, they are perpetual in nature. That is, unlike patents you can claim right over the trademark forever. Provided it is used continuously and is renewed every 10 years.
Thirdly, it gives the trademark owner a legal right to claim his/her absolute authority, over the mark and its use.
Hence, the sooner you get your mark registered the better. Having proof of prior use can add weight to your application.
Now let us discuss the trademark registration process
Currently, the registrations are processed through legal professionals or trademark agents who have expertise in intellectual property laws. With the service of e-application, the process has become streamlined and convenient. Even so, before you appoint a legal representative, you must have a thorough idea of how the registration is done.
The following are basic steps:
Step 1: Determine the goods and services
Before you go forward with the registration it is a must to understand the type of class your goods/ services will fall under. Trademark registration is class-specific hence you can claim exclusive rights under the trademark class you have applied under. For example, if you deal in clothing items your trademark will be registered under class 25. After finalizing the class, you will be able to conduct a trademark search for the said mark.
Step 2: Conduct a trademark search online
Before you finalize the trademark for your company you must conduct a public search to verify the uniqueness of the mark you plan to register. This is a crucial step as it clarifies if the mark can be registered or not. In case there is an existing mark similar to your brand name you will have to make alterations or decide upon a different name, word or logo design for your mark. This step helps save time, money and effort as it minimizes the chances of trademark objections.
Step 3: Trademark application
Once you have successfully determined the class and exclusivity of the mark, you will have to submit all the required documents and information to your legal representative who will apply for the mark on your behalf. Once the trademark is applied for, one can start using “TM” sign on the brand name or logo as per the application.
The trademark application now will go through the following process:
Send to Vienna codification
This is the first update that the application would get if the trademark includes a logo or any figurative element. The registry checks the logo before it is sent for further examination. This may take 3-5 working days
Formality check fail
This is an update you will see on the application in case the ministry finds any flaw in the application. It can be regarding the details entered or any missing documents.
In this situation, the applicant must reply to the registry within 30 days of receipt. If one fails, the ministry may declare the application as abandoned.
Formality check pass
If the application is filed properly and has all the essential documents attached, the registry would approve it and an update of formality check pass would be seen on the application. This is a step forward in the registration process.
Marked for examination
Under this stage, the mark is scrutinized according to the Trademarks Act. Essentially, the registry will check if it fulfills the requirements according to section 9 and 11 of the Trademarks Act. These two sections are bases of this examination stage. After examination, the registry would send an examination report to the applicant either objecting or accepting the trademark.
Objection & Reply
In this stage comparison of the trademark is done with the existing marks to check if there are any similar marks and the registry raises an objection if it feels that there is a possibility of a conflict or confusion. Reply to objection must be sent justifying the validity of the mark within 30 days.
A hearing would be scheduled in case the examiner is not satisfied with the examination reply and needs more clarification.
Accepted and Advertised
The application is accepted by the examiner if Accepted & Advertised
- There are no objections raised in the examination report.
- The reply to the objection is found satisfactory by the officer.
- An applicant can clear the application in the hearing.
In all these cases, the trademark will be published in the trademark journal for 4 months during which anyone can rise an opposition against the registration. in case there is no opposition, the application would be processed further. Trademark journal publishes all such trademarks which are about to get registered.
Opposition & Counter statement
Once the mark is advertised in the trademark journal it is open to oppositions from third parties. The applicant must reply to the raised objection within 2 months from the receipt of notice of opposition. In case of failure, the application would be abandoned.
The applicant files a counter-statement justifying the registration of the mark and negating the opposition raised by the third party.
The registry passes an order of either acceptance or refusal of registration after it hears out both the parties and has considered all the supporting evidence. This order can be challenged by the aggrieved party by filing an appeal to the Intellectual property appellate board.
If the application is accepted by the registry the applicant would receive a trademark certificate. And he/ she can now start using the registered symbol beside their brand name.
These were the many stages a trademark has to go through. Even though it is a lengthy process it can benefit your business in many ways hence it is essential. The Registration is valid for 10 years from the date of application and may then be renewed for a period of 10 years within 6 months of the due date of expiry of the 10 years.