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Published by Enhelion, 2020-07-22 04:01:47

Module 2

Module 2

MODULE 2: TRADEMARK REGISTRATION





This meme pretty much defines the reaction to the captioned topic, trademark
registration. But do you know, your uber cool meme world intersects with your
professional world more often than not.

Meet the latest internet sensation, ‘Grumpy Cat’. Grumpy Cat’s real name is
Tardar Sauce. Grumpy Cat has a website, a Facebook Fan page, and a store selling
merchandise. She also appeared on the Today Show and has landed a Friskies cat
food commercial. Now that she is famous, her owners aren’t taking any chances
over Grumpy Cat’s intellectual property rights. They have filed for U.S.
trademark protection for Grumpy Cat and the said application covers mobile
phone cases, videos, greeting cards, coffee mugs and T-shirts. Under the
trademark application, the owners seek protection for the name “Grumpy Cat”
and her image. One trademark document features a picture of her and refers to
the distinctive feature of her mouth being “in a frown.” The trademark
application was filed in January 2013 by trademark attorney Kia Kamran on
behalf of Grumpy Cat Incorporated of Ohio, a company set up by the owners, for a
cat.

Trademark serves as a mark of identification. When anyone sees the swoosh
trademark, the thought of Nike sport shoes comes to mind immediately. This is
brand recognition. The trademark provides brand control and consistency,
enhanced perceived value of services or goods and serves as a life-long support
for business expansion.

Interested in knowing about Trademark Registration now? Let’s get started.

TRADEMARK REGISTRATION IN INDIA

Before starting to fill the registration form, consider the following:

ü Selecting a Mark - Thought and care; Is it registrable; How difficult it
will be to protect your mark based on the strength of the mark
selected.

ü Mark Format - standard character mark; a stylized/design mark; or a
sound mark.

ü Identification of Goods and/or Services- Identify clearly the precise
goods and/or services to which the mark will apply; Choosing a nice
classification is very important

ü Searching - It is important to search the Trademark database to
determine whether anyone is already claiming trademark rights in
wording/design that is similar and used on related goods/services.



Trademarks in India can be registered both online as well as by visiting the
nearest office. Let’s go through the entire process step by step.

FACT :
In India, you could get a ™ within three days, but it takes up to two years for it to be
registered so that you can use the ® symbol.

In India the owner or the proprietor of the trade mark may apply for the
registration of a Trade Mark. For the purpose of making an application of
Trademarks, the owner includes:

1. Natural Person,
2. Body Incorporate,
3. Partnership Firm, HUF, Association of Persons (in case of collective

Trademarks), Joint Proprietor
4. Trust, Society, or Government Authority/Undertaking

The process of registering the trademark is lengthy but not complex. Once you
have understood the entire process, you would not require an agent.



TRADEMARK REGISTARTION APPLICATION

Any process begins with the buying the application. Form no. TM – A is required
for filling the trademark application. We have annexured this from for your
convenience; however, this form is easily available on the trademark website. If
you go through the form, you will see that it is not a complex form and the details
like the following are required in the same:

Ø Name of the proprietor(s)
Ø Valid email id
Ø Principle place of business
Ø Address for service
Ø Type of Mark, i.e. Word, Label, Device etc.
Ø Choose a class-divided into 45 classes
Ø Trademark used since date
Ø Description of services or goods
Ø Power of Attorney if the applicant is not filing
Ø Representation of the Trademark (8cm x 8cm)

NOTE:
Documents must be in English or Hindi and must be neatly handwritten or printed on
paper sized approximately 33 cm X 20 cm. and should have 4 cm of margin on the left
hand side of the paper.



The application also requires representation of the Trade Mark. Representation
means actual drawing. The representation should show clearly all the features of
the trade mark. Additionally, in the case of a trade mark that consists of a 3
dimensional mark or colour combination it is necessary to mention it in the
application. Each trade mark consisting of or containing colours, shape or
packaging must also be accompanied by a concise and accurate description of the
trade mark. The representations must be durable and satisfactory.

The size of the representation of the trade mark should, where practicable, be no
larger than 8cm x 8cm.

A class number must be selected for each group of goods and/or services. Class
number is a number given to service or the goods the trademark represents. In
India, the services and the goods are divided into 45 classes. The application
form requires the class number for which the trademark is proposed to be used.
An application for registration of a single trade mark may be made in respect of
goods and/or services in one or more classes. The applicant should specify the
goods and/or services in relation to which the application is made. A
specification that claims registration for all goods, products or services etc. in a
particular class would be regarded as too wide.

NOTE:
If the details of the application are not filled properly and there are deficiencies in
application, the registrar shall give the applicant one-month time to rectify the same. If
the deficiencies are not rectified in the time allowed, the application will be treated as
abandoned.

In case the application is not filed & signed by the applicant but by any other
person claiming to be the agent of the applicant, a power of attorney duly
executed by the applicant in favour of that person on form TM-M is required to
be filed. The agent can be a legal practitioner (Advocate), a registered trademark
agent or a constituted attorney (a person under sole and regular employment) of
the applicant.



FEE AND THE FILING PROCESS FOR THE TRADEMARK REGISTRATION

After the application is ready, it should be submitted along with the appropriate
fee as per Schedule I. Schedule 1 provides an entire list of fee to be attached with
different forms. Fees can be paid in cash or by a bank draft or a cheque drawn on
a scheduled bank at the place where the appropriate office of the Trade Marks
Registry is situated. The Head Office of the Trade Marks Registry is at Mumbai
and branch offices are at Ahmedabad, Chennai, Delhi and Kolkata. The forms can
be filed and bought at any nearest office. E- filing and online payment can also be
made through payment gateway provided in the official website i.e. ipindia.nic.in.

When the application is filed at any nearest office, all documents are received by
the office superintendent and the fee bearing document are sent to cash counter
and the fee receipt is generated through system. The front office affixes a stamp
with the signature of the official concerned on all the documents received. In the
end, papers/documents are uploaded in the system in the appropriate module
such as Application, Opposition, Post Registration, RU, and Copyrights and
correspondence is made to the appropriate section.

EXAMINATION OF THE APPLICATION

Once the application is filed, it is thoroughly examined by the department. An
officer in the department is assigned with the duty to examine the applications.
The Examiner ordinarily gets a lot of 20 applications in his account. The
Examiner scrutinizes the application as to check:

Ø Whether the application has been filed in the manner as prescribed in the
Trademarks Rules 2017?

Ø Whether the trademark applied for registration comes within the ambit of
relative grounds or absolute grounds of refusal under the Trademarks Act
1999?

Ø Whether any restriction, condition or limitation is required to be imposed,
in case the application is accepted for registration?

After scrutinizing the application, the examiner then checks that the trademark
for which the application is made is not an earlier trademark. The earlier
trademark means and includes:

Ø Identical trademark
Ø Similarity of marks
Ø Marks that would cause confusion

After considering the aforesaid the examiner then prepares his consolidated
examination report containing proposals and objections.

CERTIFICATION TRADE MARK
It is the mark which shows that the goods or services in respect of which the
mark is used have been certified by some competent person in respect of in
characteristics such as Origin, mode of manufacture, quality etc

Once the report is ready, the examiner can either:

Ø Communicate the objections to the applicant which are liable to be refused
on absolute grounds. or

Ø If the examiner considers that the application may be accepted for
registration subject to any condition or limitation, the examiner shall
propose such condition or limitation in clear terms so that this objection
can be cleared by the applicant.

However in all such cases the Registrar communicates an objection or proposal
in writing to the applicant.

The applicant may either agree to the objections made by the Registrar or submit
his observation or apply for a hearing. Failure to do so within the prescribed
period of one month, results in the application being deemed to have been
abandoned. However if it appears to the Examiner that the application can be
accepted for registration by slightly modifying the trademark without any
substantial alteration or by confining the specification of goods or services
/deleting some items in the specification of goods or services, the examiner tells
the applicant for such modification/deletion by filing a request on form TM-M.

DID YOU KNOW?
The Central Government has banned the trademarks on the names like “Lord Buddha”,
“Shree Sai Baba”, “Sri Ramkrishna”, “Swami Vivekananda”.



COMMUNICATION OF EXAMINATION REPORT

The next step is that the Examination Report is then transmitted to the
Supervising Examiner who can either approve the Report or send back to the
Examiner for re-examination of the case, through the system along with his clear
remarks. After this there are 2 scenarios:

Ø In case the examination report is approved by the Supervising Examiner,
he shall move the application for advertisement in the journal through the
system.

Ø In case the examination report is sent back to the Examiner for re-
examination, the Examiner re-examines the application in light of remarks
of the Supervising Examiner and resends to the Supervising Examiner
through the system.

All the Examination reports approved by Supervising Examiner are released on
the date of such approval and shall be made available on office website
www.ipindia.nic.in with the status of the relevant application.



REGISTRATION OF TRADEMARKS

Every application which accepted is then advertised in the trademark journal.
After the advertisement, there is a mandatory four month waiting period.
Objections are generally filed in this period.

OBJECTIONS

Any person can file an objection, whether he has an interest in the trademark or
not. Opposition has to be filed within four months of publication of mark in the
Trademarks Journal, as per prescribed form i.e. TM-O and prescribed fee is Rs.
3000/- (physical filing) or Rs. 2700/- (e-filing). It should be noted that opposition
proceeding can be filed only before the Registrar and cannot be taken direct
either to the Court or the Appellate Board (IPAB).

Like any other civil suit, once the objection is filed, the applicant has to file a
counter reply within two months of receipt of notice of opposition. The form for
the counter reply in TM-O and the prescribed fee is Rs. 3000/- (physical filing) or
Rs. 2700/- (e-filing). A copy of the counter statement along with the system
generated letter shall be served by the office of the trademark registry, to the
opponent.

The Trademark Rules 2017 has inserted certain provisions to expedite the
opposition proceedings. Firstly, if the applicant files the counter statement on the
basis of the notice of opposition uploaded on the Trademark Registry’s website,
the registry dispenses with the requirement of service of a copy of the notice of
opposition on the applicant. Secondly, the provision of filing an extension to file a
counterstatement has been done away with.

After the said pleadings are filed, evidence is taken. Evidence is to be given on
affidavits by both the sides. The Registrar may, in his discretion, allow oral
evidence also. The Registrar may, at any time, give leave to either the applicant or
the opponent to submit any further evidence.

If the applicant fails to file for counter-statement within the specified period (two
months), the trademark application is considered to be abandoned. If the
applicant files counter-statement, process moves towards the evidence stage.

Within 2 months of receiving counter-statement from the applicant, the
opposition is required to furnish evidence. Within 2 months of receiving evidence
from the opponent, the applicant is required to furnish evidence in support of his
trademark application. Within 1 month of receiving evidence from the applicant,
the opponent has a chance to furnish further evidence in support of his
opposition and to rebut the evidence produced by the applicant. This concludes
the evidence stage.

Upon completion of the evidence stage, the Registrar generates the hearing
notice, mentioning the first date of hearing. The hearing notices so generated are
sent to both the parties. The date of hearing is fixed for a date at least one month
after the date of the first notice. A cause list in respect of cases fixed for hearing is
prepared on monthly basis.

NOTE:
An adjournment of hearing can only be sought by filing Form TM-M with fee of
Rs. 900/- at least 3 days prior to the hearing. No party shall be given more than
two adjournments and each adjournment should not be more than 30 days.


On the date fixed for hearing the Hearing officer hears the submissions of the
parties. In case any party desires to file written arguments, the Hearing Officer
shall allow the same to be taken on record. After conclusion of the hearing the
Hearing officer gives the decisions along with facts and materials considered by
him in arriving at such decisions, at the earliest. If the opposition is successful,
the registration of the trade mark will be refused. If it fails, the mark will be
registered

If the decision of the hearing officer is in favour of the applicant or if no
oppositions are filed, the application proceeds for registration. All such
applications are taken up for registration process in order of seniority of their
advertisement or re-advertisement in the trademarks journal.

All applications brought under the registration process are to be approved by the
officer and after such approval a certificate of registration are printed. The
Registrar of Trade Marks has a Register of Trade Marks as mentioned in Section 6
of the Trade Marks Act 1999, which has all details of registered trademarks. Once
a trademark is registered, it is entered in the Register or its entry is made on the
Register.

Congratulations! Your trademark is registered.

A trademark is registered for a period of 10 years.

RENEWAL OF TRADEMARK

Rule 57 states that an application for renewal of registration of trade mark shall
be made in Form TM-R at the appropriate office or the head office of the Trade
Marks Registry, at any time one year before the expiration of last registration of
the trade mark.



REVIEW

Just because your trademark id registered, doesn’t mean that you can sit back. Do
you know section 127 (c) empowers the Registrar on an application made in
prescribed manner, to review his own decision of registration of the trademark?
An application to the Registrar for the review of his decision can be made on
form TM-M within one month from the date of such decision or within such
further period not exceeding one month thereafter as the Registrar may, on
request allow. The review application is to be accompanied by a statement
setting out the grounds on which the review is sought. If the decision sought to
be reviewed concerns any other person, the review application and the
statement should be filed and the Registrar will dispose of the review application
after giving the parties an opportunity of hearing.


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