With the start-up market catching up and exponentially increasing with each passing day, it is immensely important to protect one’s intellectual property, especially trademarks.
Registering trademarks is advantageous for a start-up as it provides exclusive rights over the use of a unique mark, helps establish an identity in the market, can also be used to generate revenue by selling the license, gain ownership over the usage of the mark forever (subject to periodic renewal), protect against infringement, as well as help attain these rights in foreign jurisdictions.
The Trademark Law in India, known as the Trademarks Act, 1999, provides for the protection, registration, and protection against the unauthorized usage of a registered trademark.
The trademark registration process begins with a trademark search by a trademark attorney and ends when the trademark registration certificate is issued to the applicant or the owner of the trademark.
The trademark registration process begins with a trademark search by a trademark attorney and ends when the trademark registration certificate is issued to the applicant or the owner of the trademark.
In this blog, we shall discuss in detail the steps and procedures involved in the registration of a trademark, including but not limited to attorney fees, the challenges one might encounter, and how employing a trademark attorney ensures a smooth and timely registration of the trademark.
Step 1 : Conduct a Trademark Search
The foremost step is to confirm, by way of conducting a trademark search, the uniqueness of the owner’s mark. The search may be conducted by the owners themselves or by a trademark attorney. This will help identify if an identical or similar mark has already been registered. The search can be conducted via the website of the Comptroller General of Patent Designs and Trademarks. The search result consists of the registered, disputed, expired, and objected trademarks and provides additional details as to the class, application number, owner, and validity of the trademark.
Understanding the search results is of utmost importance and must be diligently conducted so as to avoid any objection at a later stage.
Step 2 : File a Trademark Application
Once the owner is confident that the mark is unique and not similar or identical to a preexisting trademark, file a trademark application either in the trademark registrar’s office or online. The application must be filed in a prescribed manner and must contain the logo of the trademark, owner details, classification, date on which the trademark was used, and a and a description of the goods and services.
Step 3: Allotment of Trademark application and Vienna codification
Shortly after the application, complete in all respects, is filed, the applicant receives a trademark allotment number. This takes about two to three days, after which the “™” mark can be placed next to the logo or mark applied for.
The trademark registrar then applies the Vienna classification basis to the figurative elements of the trademark applied for.
The trademark class is allotted; there are 45 classes of goods and services recognized by the trademark registry.
Step 4: Examination of Trademark and issue of report
After the Vienna classification is applied, the application is apportioned to a trademark officer, who scrutinizes the application for correctness and produces a report to that effect. On examination, the officer is entitled to either object to or allow for publication in the trademark journal.
In the event of an objection, the applicant can appear before the officer to provide clarification and present his case. On subsequent rejection due to the dissatisfaction of the applicant, the applicant may file an appeal before the Intellectual Property Appellate Board.
Step 5: Publication in Trademark Journal
When accepted by the trademark officer and subsequently by the trademark registrar, the mark becomes eligible for publication in the trademark journal. The mark is posted for public scrutiny, and anyone who believes that the grant of the published trademark damages them may object. The said objection must be made within 90 or 120 (depending on the case) days of the said publication.
The applicant and the opposing party shall then appear before the hearing officer and produce evidence, the result of which shall determine the further processing of the trademark application. The hearing officer’s decision may be contested before the Intellectual Property Appellate Board by an aggrieved party.
If no such objection is made, the trademark will be registered within a period of 12 weeks to 12 months (extendable).
Step 6: Trademark registered!
In the absence of any objection to the trademark application, the trademark is considered to be registered, granting privileged rights of usage to the owner or applicant. The applicant can now affix the “R” symbol next to the logo.
Fee incurred :
The fees for trademark registration are dependent on several factors, such as the type of trademark being applied for, whether collective or not, and the class to which a particular mark belongs. Additionally, the trademark is a perpetual right subject to renewal, so the applicant must also be mindful of paying a renewal fee every 10 years to avoid paying extra at a later stage.
The per mark, per class, trademark application filing fee (online) for startups, MSMEs, and individuals is INR 4,500, and for larger entities such as a limited liability partnership, body corporate, joint firm, trust, or society, it is INR 9,000. The renewal cost to be paid every 10 years amounts to INR 9,000.
In the event of an opposition, the government fee for filing the counter-statement is INR 2,700. All the fees mentioned above are exclusive of the professional cost that the applicant has to pay, which depends on the trademark attorney and IP form employed to carry out the registration process.
In conclusion, despite the tedious nature of the established compliance and application procedures, organizations must strive to get their trademark registration done as soon as possible to avoid any negative repercussions on their business.
A business requires great effort and monetary support to establish itself in the market, and hence its protection becomes necessary, goes a long way in establishing a business’s unique identity and brandname, and builds trust amongst its customer base.
Even though the search and filing can be carried out by the trademark owner, employing a trademark attorney proves beneficial and reduces the chances of the trademark being rejected.
