Procedure For Trademark Registration

IPR Study Material: NIFT/Gandhinagar

Procedure for Trademark Registration A trade mark is a mean of identification of your goods. It is a symbol which a person wises in the course of trade, in order to that his goods may be distinguished by the purchasing public from similar goods of other traders. Registration of a trade mark, under the trade and merchandise marks act, 1958, confers a statutory monopoly in the use of that trade mark in relation to the goods for which it is registered and the owner has the right to sue in the courts of law for infringement of the trade mark. SELECTION OF A TRADE MARK Proper selection of the trade mark is necessary from business as well as legal point of view. From the general business point of view the trade mark shall be easy to pronounce, remember, attractive and as far as possible short. From the legal point of view, the trade mark must fulfill all the requirements of the section 9, of the trade and merchandise marks act, 1958, i.e. It should not be a personal name, surname, geographical name, name of a tribe /caste or refer to the character or quality of the goods. It should also not be laudatory. A good trade mark should be an inherently distinctive trade mark, preferably be an invented or coined word. Nevertheless, the above said trade mark may be registered if the same has been used for a continuous period of at lease 3 to 4 years. However, geographical names, loudatory words referring to the character and quality of the goods etc. Can never be registered. HONEST CONCURRENT USER If it is found that there is a resembling mark on the register (or any other previous application is pending w.r.t. Any similar mark, the trade mark may still be registered on proof of the honest and bonafide adoption of the trade mark, and sufficiently long and continuous user of your trade mark and the same shall be subject to the satisfaction of the registrar of trade marks. The period of honest and concurrent user is not defined in the act, but to give you an idea and advise you, it is suggested that the trade mark must have been used at least for a period of 5 to 6 years for qualifying for the registration on the basis of the honest and current uses. SEARCH OF TRADE MARK If you are planning to start a new trade or industry, and want to get a trade mark adopted and registered, unless you are quite sure that there is no identical mark on the register, you are advised to go for official search of your trade mark from the office of the registrar of trade marks, before filing of the application. TRADE MARK APPLICATION FILING REQUIREMENTS 1. NAME OF THE APPLICANT

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CO. 2. ADDRESS

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REGISTERED OFFICE 3. NAME OF THE PROPRIETOR PARTNERS/ONE OF THE Dr. Binaya Bhusan jena

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IPR Study Material: NIFT/Gandhinagar

DIRECTORS OF THE APPLICANT COMPANY, WITH FATHER’S NAME 4. COUNTRY/NATIONALITY

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OF THE APPLICANT 5. SINCE WHEN THE TRADE

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MARK HAS BEEN FIRST USED 6. NATURE OF GOODS

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MANUFACTURED & MARKETED 7. In case trade mark is depicted in stylished /logo /artistic manner copies /bromides of the trade mark , are to be pasted on the application. 8. Power of attorney (tm-48/general power of attorney), duly signed by the applicant or authorized representative / principal officer of the applicant. Where a representative signs the capacity of such representative shall be indicated. power of attorney can be filed subsequently also. PRIOR USE It is not necessary to use a trade mark in india for filing an application for obtaining registration .the application can be filed for a proposed trade mark, which the applicant intends to use in future. CLASSIFICATION The trade mark applications are filed as per the international classification of 34 classes of goods & services. Separate applications must be filed for different classes of goods, and /or different trade marks. TRADE MARK APPLICATION NO. After filing of the trade mark application, an application number is granted to the application, after about a period of two months, normally. This application no. Is of six digits .on the completion of the registration process this application no., becomes the registration no. Of your trademark. ISSUE OF EXAMINATION REPORT After filing of the applicatin, and allotment of the application no., an examination report of your trade mark application is issued by the office of the registrar of trade marks, bombay.the trade mark application is thoroughly examined by the registrar of trade marks. This examination does not only involve prior registered marks or pending applications, but the registrar also considers the registrability of the trade mark as such, taking in to consideration conditions laid down in the sec.9 and other provisions of the trade and merchandise marks act, 1958,possible public confusion, reference to the character and quality of the goods and public policy etc. REMOVAL OF OBJECTIONS After the issue of the examination report, the objections, if any, are removed by taking legal grounds, tendering evidence (if available) and arguments etc.in case the objections are not removed, an hearing is also demanded before the appropriate Dr. Binaya Bhusan jena

IPR Study Material: NIFT/Gandhinagar

hearing officer in which arguments are heard and further evidence is tendered to the hearing authority. PUBLICATION IN THE TRADE MARK JOURNAL After arguments and evidence etc., if the application is accepted, the trade mark is published in the trade mark journal, published from bombay. OPPOSITION After publication of the trade mark in the trade mark journal, 4 months period is granted to the general public for opposing the registration of the trade mark, and if no opposition is filed, then the registration is granted. REGISTRATION CERTIFICATE AND DURATION If no opposition is received in time, certificate is issued to the applicant, with retrospective effect from the date of the application. Trade mark once granted, remain in force for a period of seven years from the date of the application. RENEWAL OF TRADE MARK The trade mark registration must be renewed after every ten years, from the date of the application. Otherwise the trade mark is removed from the register of the registered trade marks. TIME REQUIRED FOR THE REGISTRATION OF A TRADE MARK As per the present trends available, registration of a trade mark normally takes minimum of 1to 2 years, but when the registration certificate is issued, it is effective from the dat of the application. In case the registration is opposed, the registration may take even more time. FILING OF TRADE MARK APPLICATION In case of label mark/logo/artistic mark, please send 40 labels/printed representations/bromides of the trade mark. No representations are required for a word mark. CAUTION Do not use the symbol of “r””in a circle” or represent in any other manner or claim that your mark is registered, until final registration is issued to you by the registrar of trade marks. Such false representation is punishable with imprisonment. note:- The above information is for your general guidance and information only, not necessarily containing all legal principles, rules, regulations and judicial pronouncements. please contact us for further, specific, detailed discussion .the above information is subject to change without notice. kindly verify your legal status before acting on the above information. we shall not be responsible for any loss, whatsoever and of whatever nature.

Dr. Binaya Bhusan jena