Trademark prosecution
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This article is written by Sakshi Jain, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.

Introduction

In today’s modern world, consumers are inundated and constantly exposed to trademarks in their ordinary lifestyles. Consider the terms- Pepsi, BournVita, Pampers, Band-aid, Whirlpool and Jacuzzi, to name a few; consumers sub-consciously regard these trademarks as the actual products/services that they are offered with, rather than their respective brands. But it is pertinent note that these strong companies were not born with this monopolistic association between their brands and the product/services that they offer. Not only did they think up a name, symbol, design, or logo which resonated with their product concepts, additionally they got their intellectual property registered as trademarks. 

The importance of these trademarks, for both, the companies and the consumers can never be emphasised enough. These trademarks help the companies gain recognition of their brands, to make their products and services distinctive in terms of their competitors; in addition to this, it also prevents the rivals from copying or stealing their brand name. Whereas when it comes to consumers, it helps the consumers identify the brand easily and distinguish it from similar products available in the market.

Getting its trademark registered should be a top priority of every start up. By registering a trademark, a start up would be able to protect itself from another producer using its name. It acts as a catalyst for increasing value as the business matures. Thus, it is important to use a trademark for marketing strategies to aid the enhancement of brand recognition and to attract more consumers. 

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Non- registration of a trademark results in the business open to lawsuits from the companies who did get one registered under the same name, symbol, design or logo. If such a situation occurs, the business is forced to deal with altering all that it came up with, such as advertisements, campaign, website material, and to a large extent, the brand identity that it created. Investing your precious time and money to build a particular brand and seeing the same brand name being used by another, just because you did not get your brand registered on time, is not something anyone would ideally want. Therefore, it is always advisable to get one’s trademark registered in order to avoid any future conflicts, so that one’s hard- earned brand reputation does not get robbed by anyone else.

Procedure for registration of a trademark

But how does one get its trademark registered? This article will serve as your perfect guide to the “Step by Step Trademark Prosecution Process”, i.e. the process of right from filing of an application of registration of trademark till the final registration under the Trademark Act, 1999. It is not a difficult task at all. One just needs to follow a few simple steps that are mentioned below and one can have the much needed legal protection of its brand name registered in India.

Before filing a trademark application, it is important to identify the “classes” in which one wishes to seek protection for one’s trademark. An application must be made in the relevant classes of the goods/services where it is intended to use. There are 45 Trademark Classes, each of which specifies its own nature of products/services that the company is intending to provide (wherein Class 1 to Class 34 deals with specifications of goods, and Class 35 to Class 45 deals with specification of services). The application for the registration can either be filed in single class, or a multi-class, which totally depends on the goods and services that the business is pertaining to. After identifying the class, one has to follow the given steps to get its trademark duly registered:

Step 1: Trademark Search

Many entrepreneurs do not realize the importance that a Trademark Search holds. One needs to understand this that having a unique brand name in mind is not a good enough reason to avoid going for a trademark search. Since there are already thousands of trademarks that are there in the market, once a trademark is chosen, it is essential to carry out a public search. Searching ensures that there is no existing registered or unregistered mark that is clashing with the chosen mark. It helps to know if there are similar trademarks that already exist. In a way, it gives one a fair picture as to where one’s trademark stands, and sometimes it also gives a forewarning of the possibility of trademark litigation. So one can avoid money and time consuming trademark litigation by conducting a trademark search in advance. One can conduct a trademark search comfortably sitting at one’s home, simply by visiting at https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx and entering the name of the chosen mark and the relevant class/classes.

Step 2: Filing Trademark Application

After one gets ensured that one’s chosen brand name is not listed in the Trademark Registry of India, one can move forward to the next step, i.e. filing a trademark application for getting it registered. One needs to file a trademark application at the Trademark Registry of India. The registration application is Form TM- A, which can be either filed online through the official IP India website, or physically at any one of the five Trademarks Registrar Offices, depending upon the jurisdiction of the trademark. The application for trademark registration has to be supported with multiple documents with complete details of the trademark for which the registration is sought. Once the application is filed, an official receipt will be immediately issued for further reference, and a trademark application allotment number is provided within one or two working days.

Step 3: Examination of Trademark Application

After a trademark application is filed, a mandatory examination report is issued by the Examiner, in consonance with the guidelines of the Trade Marks Act, 2016. The examiner may either accept the trademark absolutely/ conditionally, or he may raise objections. If the trademark is accepted unconditionally, it gets published in the Trademark Journal. If the trademark is accepted conditionally, or is objected, such conditions that are expected to be fulfilled or the grounds for such objections would be mentioned in the examination report, and a time period of 30 days would be given to fulfill the conditions or response to the objections, wherein one has to put his contentions along with evidences in order to waive off the objections

Once such a response is accepted, the Trademark is published in the Trademark Journal. If the response is not accepted, one can request for a hearing. If in the hearing, the examiner feels that the trademark should be allowed, it proceeds for publication in the Trademark Journal. If any objection still persists, he may reject the said application.

Step 4: Publication of Trademark

Once the application has been accepted, the said trademark is advertised and published in the Trademark Journal for a period of 4 months. The aim behind advertisement and publication is to invite anyone who objects to the registration of the trademark, and to give that person an opportunity to oppose the same. The trademarks journal is available on the official Registry’s website and it gets updated every Monday.

Step 5: Opposition from General Public

Post the publication and advertisement of the trademark in the journal, any aggrieved person can file a notice of opposition against the registration of the published trademark. This notice of opposition has been filed vide Form TM- O within 4 months of the mark’s publication in the Trademark Journal. In case the applied trademark is opposed, then the due process of law has to be followed which includes filing counter-statement application, evidence as well as a fair hearing in order to get the trademark registered, the decision of which will be given by the Registrar. In case there is no opposition within this duration, the trademark proceeds for registration.

Step 6: Registration of the Trademark

The final step towards the entire procedure is registration, where the application proceeds to registration after conquering all the objections and/or the oppositions against the said registration of the trademark. Once the application proceeds for trademark registration, a Registration Certificate under the seal of the Trademark Office is issued. In case there has been no objection against the registration of the trademark during this period of 4 months, then the trademark is issued an auto-generated Registration Certificate within a week’s time.

Once the registration is complete, the trademark is valid for a period of 10 years. It can be renewed perpetually. Hence, one’s brand name registration can be protected perpetually.

As seen from the above mentioned steps, the Prosecution Process of trademark does not require a lot of effort. It is a simple process, but without any doubt, a very crucial one. A trademark, once registered is an untouchable asset of the business that safeguards the company’s investment in the brand. The greatest benefit of having a registered trademark is to be able to safeguard one’s brand as well as the business. In addition to this, having a strong brand can act as a direct link between the consumer and the product by making sure they are reliable and associated to the business for a lasting period of time. Hence, it is strongly advised to every entrepreneur out there, to get their trademark registered, and to renew it from time to time.


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