India: How To Ensure A Smooth Trademark Application Process In India

Ensure a Smooth Trademark Application Process

The overall trend of filing applications for protection of various intellectual property rights in India has shown tremendous growth since the past few years. In fact, as per the Intellectual Property Annual Report, 2019-20 released by the Office of the Controller General of Patents, Designs and Trade Marks, the overall filing of trade mark applications alone has shown a jump of 3.39% in the previous year! The increasing trend of filing trademarks applications in India is given below, for ready reference¹

IP Annual Report Data

But the important question is, how many of the trade mark applications filed are successfully registered? Some get stuck in opposition for years, and many are abandoned or withdrawn. The said outline involves further steps to ensure that the process of trade mark registration is hassle-free! Read on to know more.

The overall trend of filing applications for the protection of various intellectual property rights in India has shown tremendous growth since the past few years. In fact, as per the Intellectual Property Annual Report, 2019-20 released by the Office of the Controller General of Patents, Designs and Trade Marks, the overall filing of trade mark applications alone has shown a jump of 3.39% in the previous year². The increasing trend of filing trade marks applications in India is given below, for ready reference³

Amount chart

But the important question is, how many of the trade mark applications filed are successfully registered? Some get stuck in opposition for years, and many are abandoned or withdrawn. The goal is not just to complete the procedural formalities for trade mark registration; it is to make sure that you foresee and avert all possible objections against the same beforehand!

A conservative estimate of "strategy" for a successful trade mark registration would include adoption of a distinctive trade mark; conducting due diligence to ensure that no other proprietor has prior rights in the chosen trade mark; drafting an appropriate application with proper goods and services; and timely responding to any objections initially raised against the same. The said outline involves further steps to ensure that the process of trade mark registration is hassle-free! Read on to know more:

A strong Trademark

Trade mark law gives protection to trade marks that are distinctive. Basically, the inherent distinctiveness of a trade mark refers to how easily customers identify a trade mark with the associated proprietor and its products/services. The more distinctive a trade mark is, easier it is to get it registered. Words in publici juris, such as 'Zinc' for pharmaceutical items, or descriptive words, such as 'Storage' for the production of bags etc. are not entitled to protection under the Trade Marks law. The broad categories of marks which are or are not entitled to protection have been discussed in detail in a connected article titled "Making a mark with your MARK"⁴. For ease of reference, a brief table explaining the category of marks and their eligibility for protection is given below:

Disclaimer: This article features images of brands for informative purposes only, which are protected by the Fair Use guidelines of the Trade Marks Act. All rights reserved to their respective owners. We do not claim any rights over the same.

Not a previously used or registered Trademark

Simply put, conducting "Due diligence" means making sure that the trade mark being applied for has not been already used or applied/registered by another owner for similar goods and services, prior in time. A prudent proprietor must conduct a basic trade mark search in the home country as well as potential export markets and expansion lines to avoid any objections in the future. This will also prevent the new Applicant from himself interfering with any third party's bonafide rights, and save a considerable amount of time, money and effort. This process can be carried out with a simple search on the Internet, followed by a thorough trade mark clearance search on the Trade Marks Registry's website as well as in-house databases.

It is also a good idea to see if the corresponding domain name/internet address is available and whether the same can also be used as a username on social media websites such as Facebook, Instagram etc. Needless to say, be sure that your choice of domain name/username does not conflict with a third party's trade mark. This would help the proprietor connecting with the public at large, and build upon the goodwill and reputation of its brand and associated trade mark.

The Perfect Trademark Application

Any individual or an entity, claiming to be the proprietor of a trade mark used or proposed to be used by them, can file a trade mark application in respect of the desired specification of goods or services. The trade mark application should be filed in the prescribed form, i.e., FORM TM-A, with the Trade Marks Registry of the appropriate jurisdiction, alongwith the prescribed fees and documents. The application must contain the trade mark, proper description of the goods/services, name and address of Applicant and agent (if any) with power of attorney alongwith the period of use of the mark.

It must be kept in mind that in case you have already commenced use of the trade mark before filing an application for the same, then the trade mark application must be filed with an appropriate user claim along-with documents in support of such use by way of a "user affidavit" (and invoices, bills etc. showing commercial use of the trade mark). Noncompliance of the said requirement would most likely attract an objection from the Learned Examiner of the Indian Trade Marks Registry.

Conclusion

Following the above-mentioned steps should ensure that the trade mark application passes the initial phase of screening at the prosecution stage. The Applicant may keep track of its application (via https://ipindiaonline.gov.in/eregister/eregister.aspx) to ensure that preliminary objections, if any, raised by the Learned Examiner are responded to and averted timely.

Footnotes

1. Ibid

2. Annual Report (2019-2020), The Officer of the Controller General of Patents, Designs, Trade Marks and Geographical Indications, Government of India

3. Ibid

4. https://ssrana.in/articles/making-a-mark-with-your-mark/

5. M/s Lakme Ltd. vs M/s Subhash Trading and Others (DLH)- 1996-08-17

6. Sun Pharmaceutical Laboratories Ltd vs Hetero Healthcare Ltd FAO (COMM) 96/2022

For further information please contact at S.S Rana & Co. email: info@ssrana.in or call at (+91- 11 4012 3000). Our website can be accessed at www.ssrana.in

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.