12 Sep 2015 6:55 AM GMT
With Government of India announcing Trademark Agent Examination – 2015, there is a renewed interest among law students and young graduates to know about filing, prosecuting and registering Trademarks in India. Being IPR Faculty to Indian Academy of Law and Management (“IALM”), I explain easy steps on how one can file and protect marks in India.Good news is that you need not be a lawyer...
With Government of India announcing Trademark Agent Examination – 2015, there is a renewed interest among law students and young graduates to know about filing, prosecuting and registering Trademarks in India. Being IPR Faculty to Indian Academy of Law and Management (“IALM”), I explain easy steps on how one can file and protect marks in India.
Good news is that you need not be a lawyer or trademark agent to learn this, and that all the following steps can be done online.
STEP 1: GATHER INFORMATION
A trademark is a word, phrase, logo, symbol, design or combination thereof that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design or combination thereof that identifies and distinguishes the source of a service rather than goods. And the term "trademark" is often used to refer to both trademarks and service marks. Examples of good invented marks are Microsoft, Kodak, Facebook, Google, Coke, etc.
For the purposes of registration of Trademarks, all the goods and services existing in the world are classified into 45 classes. This is in accordance with "The International Nice Classification” established under the Nice Agreement, World Intellectual Property Organization – WIPO in 1957. As per the latest version of Nice Classification, all the goods and services fall into total 45 classes -- classes 1-34 include ‘goods’, and classes 35-45 include ‘services’. This allows Trademark Applicant to choose from these 1-45 classes, as appropriate. You can find out about the Applicant’s class of product or services by visiting WIPO’s link at http://goo.gl/BaWGBW
Given the above concepts, the applicant needs to provide the following information in order to file an application for registration of Indian Trademark:
(Tip: the mark is owned by the named applicant)
(Tip: it can be individual, Proprietorship, Company, LLP, Partnership, Society, Trust or other legal entities).
(Tip: If the applicant entity is not an Individual, we need to provide the ‘Name and Designation’ of the person authorized to sign and file the Trademark Application).
(Tip: As mentioned above, a mark can be a word, phrase, logo, symbol, design or combination thereof. If it is an image, obtain jpeg or png format of the same).
(Tip: get the first date since the mark has been used continuously in India by applicant. In case the mark has not been commercially used, write “Proposed to be used” in the Trademark Application ).
(Tip: get the first date since the mark has been used continuously outside India by applicant. In case the mark has not been commercially used, write “Proposed to be used” in the Trademark Application).
(Tip: Write all the description of goods and services to which the mark is being applied or will be applied in future. For example, the famous Indian mark “Reliance” is applied for several goods and service – Agriculture products, Petroleum, Gas Station, Education, Stationary, Mobile Services, Internet Providers, Software, Retail Chains, Electronics, etc. Write all of them. )
After gathering this information from Applicant, we are now ready to move to next steps in the process to obtain a Trademark in India.
STEP 2: SEARCH THE MARK
Though this is an optional step, but is highly recommended that you Search applicant’s mark before filing a Trademark Application in India. A simple 20-30 minute search will reward you with knowledge about the chances of success of your mark being accepted by the office of Trademark. We recommend the following types of searches to be conducted by an applicant:
An applicant needs to include all the Trademark classes while doing the search. The search can be repeated many times to include different classes for which the applicant’s product is classified.
Any overlapping marks have to be analyzed. Applicants are recommended not-to-proceed in the following two circumstances:
All said and done, there may still be borderline cases and it is difficult to decide whether Trademark infringes a previously available mark. This is where the experience of Trademark Agent or risk taking capacity of the Applicant will play a role in taking decision to invest in the mark.
STEP 3: FILING TRADEMARK APPLICATION
Once you have gathered all the information about the mark (Step1) and done the preliminary search (Step2), it is now time for you to prepare the Trademark Application and file it. Filing of trademark application requires the following forms to be completed:
All the Trademark forms can be downloaded from the link: http://goo.gl/sGbl2M. The forms are mandated under the Indian Trademarks Rules, 2002 and it will seek information that you have already gathered in Step-1 above.
TIP: Trademark office paper filings require official fees of Rs. 4000/- per mark per class, and the Demand Draft/ Cheque needs to be drawn in favor of “Registrar of Trademarks”.
The online filing of the Trademarks can be initiated on the IPR website at the link https://goo.gl/yFeV4g However, one needs to register at the site using digital signatures.
The filing of an application results into allotment of a Trademark Number that is given as an acknowledgement in the form of Trademark Receipt. The generated receipt is emailed to an applicant and the status of application can be accessed online.
STEP 4: RESPONDING TO OFFICE ACTION (OBJECTIONS & HEARING NOTICE)
Once your Trademark Application is on file, the Office of Trademarks in India proceeds to examine trademarks for acceptance through ‘Examiners, Trademarks’. Report on acceptability for registration by Examiners is called, “Examination Report or Office Action”. Current experience shows Examiners to provide Examination Report in 8-10 months of filings of Trademark Application. Nothing happens to your application for 8-10 months. The office action in India can extend to two stages:
In case of no objections, marks proceed straight away for publication in Journal. The Office Actions may involve Examiner seeking clarifications on usage of mark, nature of mark, overlapping of the mark or any other criteria for non-registration of the mark as per the Indian Trademarks Act, 1999. It is a prerogative of Trademark Examiner whether to seek only response to objections and decide or to seek further clarifications though hearing at Trademark Office.
When Objections are issued, an applicant is expected to reply to such Objections. This may be in the form of a simple reply on the letter-head or by way of an affidavit. So far, the Trademark office has not recommended any best format to provide the response. The Examiner looks at the content of the response and decides if it is satisfied with the response. If not, the Examiner may proceed to the next step of issuing a “Hearing Notice”.
The reply to hearing notice is generally in the form of an affidavit and should substantiate Applicant usage and investments in the mark over the years. It should justify the non-overlapping of the cited mark and also justify the originality of Applicant’s mark. Once the affidavit is prepared, the same should be filed with the Examiner before or during the stipulated ‘Hearing’.
Again, the hearing in Trademark cases can be attended by Applicant-in-person or by an authorized Trademark Agent (as per form TM-48 stipulated above). The Trademark hearings are quasi-judicial in nature, and care should be taken to provide genuine and authentic evidence to the Examiner.
The Office-Actions can have two consequences for applicant – acceptance or rejection of mark. If the mark is accepted, the mark is sent for publication in the Trademark Journal and if rejected a detailed order reasoning the same is provided to the applicant. Ofcourse, the applicant has right to appeal such rejection order at the IPR Appellant Board.
STEP 5: REGISTRATION OF THE MARK
After the mark is ‘Accepted’, the process of publication starts for the mark. The application is published in the journal (available online at IP office website) with all the details and left for public to oppose for a period of another 4 months. Anyone in public has a right to oppose a Trademark Application upon payment of fees. The party opposing the mark needs to show some material grounds for such opposition and also provide a notice of the same to the Applicant. The opposition proceedings are quasi-judicial in nature, and like any court case in India, may take number of years to be settled between the parties.
In case of NO opposition being filed after publication (happens in 98 % of cases), the mark is automatically send for issuance of Registration Certification. An applicant does not have to take any step after the successful completion of publication period, and the office of Trademarks sends the Registration Certificate to the applicant by a registered post.
In a nutshell, the steps 1 to 4 described above are usually for straightforward trademark applications sought to be protected in India. However, an application may take unexpected twist and turns during the prosecution and our steps do not (and cannot) reflect such unanticipated paths. For example, applicant (being individual) dies, or applicant (being legal entity) gets acquired, or that there is an opposition to a mark by a third party. All these factors require separate processes before an application is put back to track for registration.
IALM wishes good luck to candidates appearing for Trademark Examination and also professionals wanting to make career in prosecuting Trademark applications in India.