How to Register a Trademark in India?
In case no opposition proceedings against the said trademark has been initiated or where an opposition against the said trademark was filed but was decided in favor of the applicant, thereafter the trademark will be registered for a period of 10 years from the date of filing of the application in India and the certificate of registration will be issued.
The process relating to generation & issuance of registration certificates for applications made for registration of trademarks has been fully automated. Accordingly, from August 1, 2016 the registration certificates will be generated through an automated system in accordance with the relevant provisions of the Trade Marks Act & Rules and made available to the applicants concerned or their authorized agents on record, in respect of all trademark applications-
(a) which have been published in the Trade Marks Journal Number 1720 dated 23.11.2015 and thereafter,
(b) where no request for amendment filed on behalf of the applicant is pending for disposal, (c) where the copy of original application for registration is available in the Trade Marks Registry’s electronic database,
(d) where no requirement (like fee, Power of Attorney, etc.) is pending for compliance on part of the applicant , and
(e) which have not been specifically prohibited for registration by the order of any court, IPAB or any competent authority
Use of Insignia
Pursuant to registration the insignia ® can be used alongwith the registered trademark in respect of those goods and services for which it is registered.
False representation of trademark as Registered
Section 107 of Trade Marks Act, 1999 states that, if a person falsely represents a trade mark as registered he shall be punishable with imprisonment for a term which may extend to three years, or with fine, or with both. The section as stated in the Act is mentioned below:-
107. Penalty for falsely representing a trade mark as registered.—
(1) No person shall make any representation—
(a) with respect to a mark, not being a registered trade mark, to the effect that it is a registered trade mark; or
(b) with respect to a part of a registered trade mark, not being a part separately registered as a trade mark, to the effect that it is separately registered as a trade mark; or
(c) to the effect that a registered trade mark is registered in respect of any goods or services in respect of which it is not in fact registered; or
(d) to the effect that registration of a trade mark gives an exclusive right to the use thereof in any circumstances in which, having regard to limitation entered on the register, the registration does not in fact give that right.
(2) If any person contravenes any of the provisions of sub-section (1), he shall be punishable with imprisonment for a term which may extend to three years, or with fine, or with both.
(3) For the purposes of this section, the use in India in relation to a trade mark of the word “registered”, or of any other expression, symbol or sign referring whether expressly or impliedly to registration, shall be deemed to import a reference to registration in the register, except—
(a) where that word or other expression, symbol or sign is used in direct association with other words delineated in characters at least as large as those in which that word or other expression, symbol or sign is delineated and indicating that the reference is to registration as a trade mark under the law of a country outside India being a country under the law of which the registration referred to is in fact in force; or
(b) where that other expression, symbol or sign is of itself such as to indicate that the reference is to such registration as is mentioned in clause (a); or (c) where that word is used in relation to a mark registered as a trade mark under the law of a country outside India and in relation solely to goods to be exported to that country or in relation to services for use in that country.
Period for registration of a trademark
Section 23 of the Trademark Act, which provides for registration of a mark was amended in the year 2010. Pursuant to the amendment, a clause was added in the provision which provides that once an application has been accepted and not opposed or if opposed and decided in favor of the applicant, then the Registrar shall, unless the Central Government otherwise directs, register the trademark within eighteen months from the date of filing the Application.
Trademark registration is a long process and it takes around 18-24 months to obtain registration in case no opposition is filed by a third party.
Correction of clerical error in the certificate of registration
The Act also makes provision for amendment or correction of any clerical error in the certificate of registration and states that the Registrar may amend the register or certificate of registration for the purpose of correcting a clerical error or an obvious mistake.
Renewal of a Trademark in India
- A trademark can be renewed in India from time to time for an unlimited period on payment of the renewal fees, failing which the mark becomes liable to be removed from the Register of trademarks. Each renewal term is for a period of 10 years.
- The procedure for filing an application for renewal of a trademark in India is as follows:
- Request to renew a trademark in India can be filed within six months BEFORE THE EXPIRY of the registration / renewal term if accompanied by the requisite renewal fees on the prescribed form.
- Request to renew a trademark in India can also be filed within six months AFTER THE EXPIRY of the registration / renewal term if accompanied by the requisite late renewal fees on the prescribed form.
Restoring A Trademark in India
If a trademark has been removed from the Register of trademarks on the grounds of non-renewal then the same can be restored by filing an application in the prescribed form for restoration of the mark after six months and within one year from the date of expiration of the last registration of the mark.