21 November 2017

How To Register A Trade Mark

As part of due diligence, online platforms require vendors on their portal to provide particulars of trade mark registration or application. The Bureau of Indian Standards (BIS) also requires applicants to provide particulars of trade mark registration or application.
India Intellectual Property
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  1. As part of due diligence, online platforms require vendors on their portal to provide particulars of trade mark registration or application.  The Bureau of Indian Standards (BIS) also requires applicants to provide particulars of trade mark registration or application.  In order to register an Intellectual Property Right before the Customs Office to prevent import of unauthorized work, a registered trademark is essential.  As laws and systems evolve, it is possible that a registered trade mark may become mandatory to carry on trade akin to other trade licenses.  In future it cannot be ruled out that a registered trade mark may trump a common law user.  Therefore, it is prudent to apply for trade mark registration prior to commencing business.
  1. The question is what can be registered as a trade mark. Large number of features which are indicates a trade origin can be registered as a trade mark.  Some of them could include:
    1. Word Mark: These are marks which are words per se like TATA, HONDA, PEPSI. The word can be typed in the online application.
    2. Device Mark:  These are marks which have a logo only or have a combination of a word and a logo or any artistic feature.  Eg. The Honda and the H logo.  A .jpg file has to be uploaded for filing online.
    3. Shape of goods:  These are shape of goods which are not functional or arise on account of nature of goods themselves.  Eg. A Toblerone bar. A .jpg file has to be uploaded with the shape.
    4. Packaging:  The packaging of a product is registrable as a trade mark.  Eg. The wrapper of a biscuit packet. A .jpg file has to be uploaded.
    5. Sound Marks:  These are sounds which identify a product like a marketing tune.  Eg. Airtel jingle tune. The notes have to be uploaded in mp3 format
    6. Three Dimensional marks:  These are marks which show a product is a three-dimensional feature. A .jpg file has to be uploaded.
  1. It is important that complete and correct information is filed so that the application is processed faster.  The application requires few information to be filed along with the application:
    1. Name and address of the Applicant;
    2. Legal Status of the Applicant i.e. whether the applicant is natural person, Company etc.  If the Applicant claims to be a start-up (registered with the Government of India as a start-up), the certificate has to be filed.
    3. Description of goods and services to be filled in along with identification of the class as per the Nice Classification. 
    4. The nature of applicant determines the official fee for the application. 
    5. The first date of user of the trade mark in India is to be mentioned. If the mark is not used, it can be filed on a Proposed to be Used basis.  However, if prior use of the mark is claimed, then an affidavit along with supporting documents are to be filed.
  1. The government fees for filing a trade mark application for a natural person and start up is half of that of an artificial person like a Company.  In order to encourage online filing, law provides for a 10 % discount for online filing vis-à-vis paper filing at Trade Mark office.
  1. After filing of the application, it is examined by the Registrar of Trade Marks.  Presently, the Trade mark office appears to be conducting a formal evaluation of the application to verify the formal particulars as well as detailed evaluation of the application.
  1. At the formal evaluation, the formal compliances are checked.  For example:  whether the authorization from the applicant is filed, goods or services fall in the claimed class or not, whether user affidavit has been filed as per the claim, applicant's identification and particulars are correct or nor, any column which ought to have been filed while filing the application has been left out or not. Considering that applications are filed online by applicants directly, it makes sense to have a formal evaluation so that minor defects can be cured at the early stage itself.
  1. At the detailed evaluation, the applied mark is compared with prior filed or prior registered trademark under Section 11.  The application is also evaluated under Section 9 of Trade Marks Act for evaluation on the registrablity of the trade mark for lack of distinctiveness.  It is also verified whether the mark is barred under Section 13 for being an International Non-Proprietary Name (INN) or barred by the Emblems and Names Act (Prevention of Improper Use) Act, 1950.
  1. The applicant is given an opportunity to file a written response to the examination report / office objection.  If the Registrar is satisfied with the written response, the application is accepted for advertisement.  If the Registrar has any objection, generally, an opportunity of hearing is given.  If the Registrar is not convinced that the mark is registrable, it is rejected at the hearing. 
  1. The next stage is advertisement of Trade Mark in the Trade Mark Journal for intimation of general public.  It is open for opposition for a period of 4 months from the date of advertisement.  If there is no opposition, the mark is registered, and registration certificate issued within few weeks thereafter.  If the mark is opposed, then it takes a de tour and the registration depends on the outcome of the opposition proceedings.  Considering the abundance of online data and weekly publication of Trade Mark Journal, it is time to reduce this period.
  1. A registered trade mark is valid for 10 years from the date of application.  It can be renewed anytime within 12 months of due date of renewal.  The Trade Mark office is completing the entire process within 8 to 10 months in some cases which are straight forward cases of registration.

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.

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