Ready Recknor on filing Trademarks under the new 2017 Rules

Note prepared by Ms. Mahua Roy Chowdhury, Advocate. She can be contacted at mahua[at]royzz[dot]com. TM Image courtesy: https://www.coopermills.com.au

TRADE MARK FILING READY RECKONER – 2017 RULES

Trademark Registration is a process that takes around 1-2 years to obtain registration in a case, without any objections or oppositions. However, the time period can be longer if an opposition has been filed by a third party.

SEARCH

  • Look for classification of goods and services at the WIPO website (NICE Classification). (Rule 20).
  • In order to avoid a third party opposition, it is pertinent to conduct a ‘public search’ in the online Trade Mark Registry at http://www.ipindia.nic.in/ by providing the trademark name and class to find out if similar marks have already been registered or filed.

WHAT CANNOT BE TRADEMARKED

  • Marks which do not have a distinctive character.
  • Marks which are descriptive. Meaning which describe the goods or service in terms of the quality, quantity, shape or geographic indication.
  • Marks that have become customary in the language or region.
  • Well Known marks. Well known marks are marks which a substantial portion of the population relates to particular goods or services and the use of the mark in relation to any other goods or services would cause confusion in the minds of the people. Ex. ‘BAJAJ’, ‘BATA’, ‘BENZ’, etc.
  • Marks which are deceptive, hurt religious sentiments, Gods/Godesses, surnames, obscene.

SELECTION OF TM OFFICE

  • There are five Trade Mark Offices (TMO) distributed in accordance with Geographical Zones in India viz. New Delhi (North), Mumbai (West), Chennai (South), Kolkata (East), Ahmedabad (States of Gujarat, Rajasthan, and Union Territory of Diu Daman, Dadra & Nagar Haveli).
  • Depending on the location of your office, if any, in India or your authorized agent’s office if there are no offices in India, please select the appropriate Trademark Registrar Office.

FORMS AND FEES

TM-A

  1. For application for registration of a Trade mark other than a collective or a certificate mark. Physical filing: 5,000 (Fees for Individuals, Small Enterprise, Startup) 10,000/- (In all Other Cases)
  • E-filing: 4,500 (Fees for Individuals, Small Enterprise, Startup) 9,000 (In all Other Cases).
  1. For application from any Convention Country other than a collective or a certification mark.
  • Physical filing:  5,000 (Fees for Individuals, Small Enterprise, Startup) 10,000 (In all Other Cases)
  • E-filing: 4,500 (Fees for Individuals, Small Enterprise, Startup) 9,000 (In all Other Cases)
  1. Application for registration of trademark as series for specification of goods or services included in one or more than one classes.
  • Physical filing:  5,000 (Fees for Individuals, Small Enterprise, Startup) 10,000 (In all Other Cases)
  • E-filing: 4,500 (Fees for Individuals, Small Enterprise, Startup) 9,000 (In all Other Cases)

TM-M

  1. On application for expedited process of an application for the registration of a trademark.
  • Physical filing:  Not allowed.
  • E-filing: 20,000 (Fees for Individuals, Small Enterprise, Startup) 40,000 (In all Other Cases)
  1. On application for: Extension of time, or certified copy, or Amendment of trademark application, or inspection of document.
  • Physical filing:  1,000. E-filing: 900.

TM-O

  • On a notice opposition or application for rectification of register.
  • Physical filing:  3,000/-. E-filing: 2,000/-

TM-R

  • Application of Renewal of a Trademarks.
  • Physical filing:  10,000.
  • E-filing: 9,000.

REQUISITES OF TRADEMARK FILING

A trademark registration application must contain the following information:

  • Logo or the Trademark (in colour if the logo has been designed in any specific colour);
  • Name and address of the applicant;
  • If the applicant is a partnership firm, the names of all the partners. Also mention whether any minor is a partner;
  • If the applicant is a company, the country or state of incorporation;
  • If the mark contains or consists of non-English words, a translation of those words into English is required;
  • Address for service of communication;
  • Select Classification or Category of goods or services;
  • Date from which Trademark is proposed to be used or has been in use;
  • Description of the goods or services for which registration is required;
  • Power of attorney in the format as prescribed in Form 48, simply signed by the applicant (no legalization or notarization is required). Indian applicants should execute the same in a Rs.100 stamp paper.

TRADEMARK REGISTRATION PROCESS

Upon filling the application, the TMO will issue an official receipt with the filing date along with a reference number to the application.

The application is then formally examined, that is whether it is inherent registrable and if any similarity, including phonetically and visually with existing marks. Accordingly, an official examination report is issued indicating either “acceptance” or “objection”, as the case maybe.

  1. In the event of objection on the examination report, it is necessary to file a response within a month of receipt of such objection the failure of which will result in instant abandonment but in most cases, a show cause hearing with the examiner is poste.
  2. Pursuant to a hearing if the argument is accepted, below step3 & 4 follows.
  3. In the event the mark is accepted as it, a letter of acceptance is issued, pursuant to which the mark is advertised in the Trade Marks Journal.
  4. If there are no third-party oppositions are received within 4 months from the date of advertisement in the Trade Marks Journal, then the trademark registration certificate is issued.
  5. Once the certificate is issued, the mark needs to be renewed every 10 years.
  6. In the event of any third-party opposition, after due hearing of the applicant and consequential refusal of application, then either a review or the remedy in step 9 is available to the applicant.
  7. Instead if the application is refused, or abandoned by the examiner with reasons, then a right to appeal to the Intellectual Property Appellate Board (IPAB) shall vest with the applicant.

 

2 comments

  • i hv seen status of my Trade mark which display alert message : ready for show cause hearing.
    Plz let me know what would be my action. i did not receive any massage from department.

    • You or your agent (whom you would have appointed should get a letter from the Registry for the date of the hearing.

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