Process Of Registration
SEARCH: It is recommended to conduct a Trademark availability search in order to check if any similar Trademark has been filed in India, which may oppose your registration. The cost of the search is generally quite insignificant in comparison to the costs of re-branding if there is difficulty in using the Trademark because it infringes the right of others.
FILING: A Trademark application is filed with Trademark office. Now the Trademark application can be filed for more than one class of goods in one application. An application with priority rights shall be filed within 6 months from the date of initial grant of the registration application of the mark in other country.
EXAMINATION: The Trademark Office will examine the registrability of the application, which includes distinctiveness, existing similarity with prior registrations, and completion of supporting documents, if accepted, the Trademark Office will issue an acceptance order and the Trademark is ordered for publication. Examination generally occurs within 3-4 months of filling of Trademark application, but the request for the expedite examination of an application can also be made, which costs 5 times the govt. fee for filling the Trademark application.
PUBLICATION: Trademark applications accepted by the Registrar are published in Trademark Journal. Any interested party may file a notice of opposition to the registration of the mark within 4 months from the date of last publication.
OPPOSITION: When the Trademark is advertised in the Trademark Journal, then third party can oppose the registration of the Trademark within the 4 months from the date of the Trademark journal made available to the public. Normally the following person opposes the registration of Trademark.
• The owner of an earlier Trademark application or registration covering a similar Trademark for similar goods
• A person who has used the same or a similar Trademark prior to the client, but who has not sought registration of the Trademark.
The Opposition procedure is explained as under: -
• The Opposition Notice is filed on Form No. TM-O within four months from the date of publication of the Trademark.
• The Trademark Registry office sends one copy of the Notice of Opposition Notice on TM – O to the Applicants.
• The Applicants sends his Counter- Statement in triplicate on Form No. TM- O to the Trademark Registry.
• The Trademark Registry then sends one copy of the Counter Statements to the Opponents (who has filed Opposition) .
• On receipt of the Counter Statement, the opponent file their evidence by the use of Affidavit supported by documentary evidence of the use and advertisement of the mark to the Trademark Registry and also sends one set of his evidence to the Applicants simultaneously.
• On receipt of the documents from the opponents, the Applicants file their evidence by way of Affidavit and documentary evidence of the use and advertisement of the mark to the Trademark Registry and one complete set to the opponents.
• On receipt of the documents from the Applicants, the opponents file their rebuttal evidence within one month.
• After completion of these formalities, the Trademark Tribunal fixes a date and time for addressing arguments by both the parties through their attorneys.
REGISTRATION:
In the absences of opposition, a Trademark is registered, and the relative certificate of registration is issued for 10 years from the date of filing of an application. Now it is taking 18-24 months from the filling of the Trademark application to the final registration of the Trademark