Who Can file a Trade Mark Application:
Any person claiming to be the proprietor of a mark may file a trade mark application.
Jurisdiction:
Applications can be filed before the Trade Mark Registries at Mumbai, Delhi, Chennai, Ahmedabad and Kolkata. When the applicant carries on business in India, the application shall be filed before the Registrar within whose territorial Jurisdiction the applicant has his principal place of business.
If the applicant does not carry on business in India, the applicant must mention a place for service in India, and this serves as the location for determining the jurisdiction where the application can be filed.
Classes:
It is important to first determining the Class under which the application is to be filed. There are 45 classes out of which Classes 1 to 34 relate to various goods while Classes 35 to 45 relate to services.
Search:
Before filing a trade mark application, it is essential to take a search of the online records of the Trade Mark Registry to ascertain whether any identical or similar mark is already pending or registered. It is also advisable to conduct other searches Other online searches are also advisable.
Filing the Application:
The application can be filed online (provided you have a Digital Signature and the TMR software installed on your computer) or you may file the application physically at the Trade Mark Registry.
The requisite details of the applicant must be filled in. A clear representation of the trade mark must be affixed to the application, details of the goods/services for which the applicant desires to use/has used the mark must be filled in, the class and other details as required. If the applicant has used the trade mark, the first date of use along with an affidavit proving such use must be filed.
Examination of the application:
The application is examined by the Registrar to ascertain whether it complies with all the formalities. The Registrar also checks whether the mark is capable of being registered i.e. whether it is distinctive and whether it is identical or deceptively similar to any other mark that is already there on the register. The Registrar then issues his examination report listing out his objections, which must be replied within 30 days.
Show Cause Hearing:
If the Registrar is not satisfied with the applicant’s reply to the examination report, he may fix a hearing where the applicant/attorney can present their arguments in person.
Advertisement in the Journal:
If the Registrar accepts the application, the mark is published in the Trade Mark Journal, which is published at regular intervals and is available on the website of the Trade Mark Registry.
Opposition to Registration:
Any person aggrieved by the mark that is advertised, may, within 4 months from the date of advertisement file a Notice of Opposition. The Registrar serves a copy on the applicant who must file his Counter Statement within 2 months, failing which the application is deemed to be abandoned. After the Counter Statement is filed and served on the Opponent, he must file is Evidence within the prescribed time and serve a copy upon the Applicant. Similarly Evidence has to be filed by the Applicant. The Registrar after hearing the parties and considering the evidence, decides whether or not to reject the application or allow it.
Registration:
Where the mark has not been opposed and the time for filing the opposition has elapsed or where the application has been opposed and the opposition has been rejected in favor of the applicant, the mark will proceed for registration. The registration shall relate back to the date of filing of the application. On registration the Registrar issues a certificate to the applicant bearing the seal of the Registry.
Duration of the Registration:
Once the mark is registered it is valid for a period of 10 years from the date of the application. The mark can be renewed from time to time.
If you are confused or require any additional information you may visit our website www.rgajria.com for more information or contact us to talk to one of our experienced attorneys.