The application for trademark registration should contain a clear reproduction of the sign, including, but not limited to, any colors, forms, or three-dimensional features. These forms need to be filed with the appropriate office of the Trade Marks Registry. The sign must fulfil certain conditions in order to be protected as a trademark, or as another type of mark, and must indicate the class of goods / services to which it would apply. The Trade Marks Act lays down absolute grounds of refusal, under section 9, and relative grounds of refusal, under section 11, of trademark registration.
The entire trademark registration process under the Trade Marks Act can be understood with the help of the following flowchart:
• Mark should be distinctive and should not be prohibited to use under the Emblems and Names (Prevention of Improper Use) Act, 1950.
• To find out if the same or similar marks are either registered or pending registration, carry out a search at the Trade Marks Registry. Although not compulsory, it is advisable to undertake such a search.
• Under the Trade Marks Act, a single application can be filed with respect to multiple classes.
• The trademark application is dated and numbered, and a copy is returned to the applicant / attorney. This number is deemed to be the Registration Number once the mark is registered. Applicant can start using the ™ mark after this stage.
• In the event of any objection, the Trade Marks Registry would send the “Official Examination Report” asking for clarifications, and also cite identical or deceptively similar marks already registered or pending registration. The applicant would have to overcome the objections set forth.
• The application is thereafter published by the Trade Marks Registry in the “Trade Marks Journal”
• After publication, if the application is not opposed within the four month opposition period, then the registration is granted. Whereas, if it is opposed by a third party, the registration is granted only if the matter is decided in favor of the applicant.
• Once the objections are successfully met and answers are provided to the queries, an official letter intimating the acceptance of the application is issued by the Trade Marks Registry.
• Registration of a trademark normally takes four to five years. However, when the certificate of registration is issued, it stands effective from the filing date of the trademark application. Applicant can start using the ® mark after this stage.