The registration procedure in India is based on the 'first to file' system. It is therefore important that the rights holder apply for the registration of its mark as soon as possible. The registration of a trademark in India typically takes about 2 to 3 years, subject to the trademark not being opposed by a third party. The Office of the Controller General of Patents, Trade Marks, Industrial Designs and Geographical Indications is the appropriate office for filing of a trademark application in India. This office has branches in Mumbai, Delhi, Chennai, Ahmedabad and Kolkata. A trademark application may be filed in any of these offices based on the territorial jurisdiction. The different steps that are involved in the registration process in India are as follows:
Select a trademark Attorney / Agent in India
The trademark rights holder is required to file an application for trademark registration through a trademark agent/attorney. We act as trademark attorneys and can do a trademark search, prepare, file and prosecute applications.
To determine if the mark is eligible and available for registration
The trademark agent/attorney will determine if the trademark is eligible for registration and also conduct clearance searches to determine if there is any deceptively similar mark that already exists on the Register of Trade Marks as maintained in the office of the Controller General. It is advisable that a common law search should also be conducted in order to ascertain if there are any third parties that might already be using the trademark.
Completing the application form and filing
The trademark agent/attorney can complete and sign the application form, provided that the rights holder has issued a signed Power of Attorney as prescribed in form TM-48, appointing them as the trademark agent. The trademark agent would require information such as the name and description of the proprietor, address of principal place of business, a description of the goods and services associated with the mark, whether the mark has been used in commerce and a copy of the trademark in order to enable them to fill the form.
Review by the Trade Marks Office
After the application has been filed, the Trade Marks Office reviews it to ensure that it is complete in all respects and thereafter allots an application number to the applications. If the trademark is registered, the application number becomes the registration number.
Preliminary Approval and Publication, Show Cause hearing or Rejection of the Application
During the process of examination the Trade Marks Office determines if the trademark is barred for registration either under absolute grounds for refusal and/or relative grounds for refusal as prescribed in The Trade Marks Act, 1999. Accordingly, they issue an examination report and the Applicant must respond to the objections that have been raised in the examination report within a period of one month from the issuance of the examination report. Thereafter and based on the response to the examination report that has been filed by the Applicant, the Registrar of Trade Marks determines if the application should be refused, accepted for advertisement, accepted subject to certain limitations or put up for a "show cause" hearing, during which the application might be accepted, rejected or accepted subject to certain limitations. Should the application be rejected the Applicant can approach the Intellectual Property Appellate Board to appeal the order of the Registrar of Trade Marks.
Within three months of the publication of the trademark in the Trade Marks Journal, should the trademark not be opposed by a third party, it will proceed for registration and the Trade Marks Registry will accordingly issue a registration certificate.
Term of Trademark Registration
Trademark protection in India is perpetual subject to renewal of the registration
after every 10 years. The application for renewal can be filed six months before
the expiry of the validity period of the trademark.
Should the rights holder of a trademark come across a trademark that is deceptively similar to their mark and which has been published in the Trade Marks Journal they can oppose the impugned mark within three months of the publication of the journal. The opposition proceedings in India maybe initiated by a party in order to maintain the purity of the Register of Trade Marks, regardless of whether they have any locus standi. Therefore, any third party who is of the opinion that the advertised mark should not be allowed to register can initiate an opposition proceeding by filing a Notice of Opposition in the appropriate office of the Trade Marks Office. The Notice of Opposition should be sent to the Trade Marks Office in triplicate. It is imperative to note that during the opposition proceedings the Trade Marks Office adheres to strict deadlines and any delay in filing the Notice of Opposition or evidence will adversely affect the opposition proceedings. In case a registered trademark owned by a third party infringes the rights of the rights holder, the rights holder can initiate cancellation/rectification proceedings against the registered owner. Furthermore, any trademark that has not been used for five years and three months from the date of registration in India is open to cancellation on the ground of non-use of the mark.
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