A Business that you create becomes so much more important than just being a source of income. It is next to impossible to match the efforts that go into building a brand. So, how will you feel if your brand name is registered as a trademark by someone else, forcing you to give up the name that became so close to your heart? Or if someone starts using your brand name to generate profit for themselves? The best possible way to avoid these situations is by getting a trademark registration. A registered trademark provides you with the perfect legal backup, in case of unauthorised use.
PROCESS OF TRADEMARK REGISTRATION
Trademark Registration is a drawn-out process and takes 18 – 24 months to complete. Hence, it becomes important to understand the steps leading up to logo or brand name registration. The steps below will help you understand how trademark registration takes place.
I. CHOOSE POTENTIAL TRADEMARKS
The first step involved in registering a trademark is making the right choice of potential Trademarks. Thus, you need to have clarity on what can and cannot be a trademark.
List of things that can get Trademark Registration:
Names, Surnames, Brand names, Logo, taglines, Abbreviations, Shapes, Sound marks, Scent Marks, Motion Marks, and Packaging.
However, the Government prohibits certain marks from trademark registration. These prohibited marks are provided in the list below:
- Words possessing characteristics of goods and services;
- Customary or Religious Symbols/Words;
- Words identical to existing trademarks for similar products;
- Any Obscene/Scandalous mark; and
- Terms prohibited under THE EMBLEMS AND NAMES (PREVENTION OF IMPROPER USE) ACT, 1950.
II) CONDUCTING TRADEMARK SEARCH
Conducting a Trademark Search of your potential trademarks will give you clarity as to whether your chosen mark is available or not. Applying without search often leads to expensive legal disputes when the registry objects or any third party opposes to the mark. Further, based on the search report you can make alterations to your mark before filing it.
III) FILING TRADEMARK APPLICATION
The next step is filing an Application to the Trademark Registry. You can file a trademark application in a single class or multiple classes using form TM-A. Along with this form, you also need to provide certain documents, such as:
- Copy of the Logo/Word mark;
- TM-48 Form or GPA (General Power of Attorney); this form gives your Trademark Agent the Power to apply on your behalf;
- Your ID Proof and Address Proof;
- MSME or DPIIT Certificate in case any LLP , Partnership Firm, or Company owns it to claim the 50% rebate in government fees;
- In the case of an LLP and Company, a Board Resolution authorising the Signatory;
- If you are using the brand name or logo before applying, you need to provide proof of the usage of the same. Proofs can be in the form of Invoices, Bills, Advertisement extracts, brochures, Newspaper cutting, etc.
IV) STAGE OF EXAMINATION
Once you submit the trademark application, the officers at Trademark Registry examine the application thoroughly. After examination, they issue a Trademark Examination Report on the website of the Trademark Registry. (You can keep a track of the status online!)
At this stage, the Registry might raise any of the below objections:
- Procedural Objection: In case there has been any discrepancies in the filing of the Application, like missing out on important information in the form or any necessary document, they raise a procedural objection.
- Substantive Objection: According to the governing law there are Relative and Absolute Grounds due to which the officer can object your mark.
When the officer objects to your mark, you need to file a reply within one month, to protect your mark from abandonment.
The Registrar may feel the need to conduct a show cause hearing to grant you trademark registration. This whole process takes up to 3-4 months.
V) PUBLICATION IN TRADEMARK JOURNAL
Once the Registrar is satisfied with your Application/reply, they publish an advertisement of your Trademark in the TM Journal.
The mark can be published with any of these two statuses:
- Accepted and advertised: this means that the registry is satisfied that your mark is distinctive.
- Advertised before accepted: this means that the registry is still unsure of your mark’s distinctiveness, and hence has not accepted it completely.
You should understand that getting your mark published does not mean that it is registered. The trademark is open to opposition from the general public for four months. The opposition doesn’t need to be made by a stakeholder, any person with a personal interest in your mark can file an opposition. The notice of said opposition is given by the registry to the Trademark Applicant (you). You have 2 months to provide a counter-statement to the opposition, failing which, your mark will be abandoned. You will get the certificate of registration only upon clearance of the opposition proceeding.
CONCLUSION
Once you receive the certificate of registration, your mark becomes a registered trademark for 10 years. The process of trademark registration can be understood through this article itself. Brand name registration is one of the core requirements of your business, to protect its name.