Trade Marks- Search, Registration/Opposition/Renewal
Search
The website of the Trade Marks Registry provides free online search facility.
On-line public search
This process is useful to ascertain similarity of the proposed mark with the prior existing marks, which helps in understanding whether the mark should be adopted for use/ may be registered, and then, steps for registration may be taken accordingly.
Application for registration of a trade mark
The next step, after `Search’ is of filing Application for Registration of the mark with the Trade Marks Registry along with filing fees. The date and time of filing the application is recorded and the Registry informs of the Application Number allotted to the respective application which subsequently, become the trade mark registration number, on registration.
The Application for Registration of the mark is examined by the Registrar of Trade Marks and any query raised by their office has to be replied to their satisfaction. In case, the Registrar is not satisfied with the reply, notice is issued for personal hearing. The mark, if approved on hearing, proceeds to Advertisement in the Trade Marks Journal. If no Opposition is filed within four months of the advertisement of the mark in the TM journal/or applicant succeed the Opposition proceedings (if any), the trade mark proceeds to registration and the Registrar issues a Certificate of Registration.
This long process of registration, however, does not affect on the use of the mark or the rights of the applicant, since the priority of filing application/use is also considered by the Registrar at the time of acceptance of the mark for registration.
The Trade Mark Act/Rules provides for filing application for declaration of trade mark as a `well known` trade mark, if the mark meets the prescribed requirements.
Time: Filing application/obtaining registration of mark takes about 6-15 months (at present). Application may be filed anytime for expedited process of registration with payment of additional fee.
Requirements for trade mark registration:
For filing application for registration of the trade mark, we require the following:
- Exact name of the mark, if the mark is to be applied for registration as word per se. In case, the mark is to be applied for registration in a stylized form/ label/carton, 10 copies of such representation/label/carton (such representation may also be sent in a soft copy)
- Detail of the goods/services in relation to which the mark is in use or proposed to be used.
- Date of first use of the mark, if the mark is already in use.
- Power of Attorney to act on behalf of the Applicant, format to be provided by us; and
- Payment of Fees (quotes may be obtained by contacting us).
Opposition of trade mark
In case, the trade mark is opposed by a third party, the Opponent files a Notice of Opposition with the respective branch of TMR. A copy of such Notice is served on the Applicant by the TMR and the Applicant is required to file Counter Statement with TMR within the prescribed time. A copy of such Counter Statemenet as filed by the Applicant is served by TMR on the Opponent, with instructions to file evidence in support of the oppostion within prescribed time, with a copy to the Applicant. The Applicant, upon receipt of evidence from the Opponent, is also required to file evidence in support of its Application within the prescribed time. The Opponent may file a rebutal to the Applicant’s document and thereafter, the evidence stage is closed. The Registrar then set the matter for hearing and issues notices to the Applicant and the Opponent and, upon completion of hearing, issues the order. In case, the Registrar allows the Opposition, the mark is refused and if the Opposition is not allowed, the mark proceeds to registration. The Applicant/Opponent may file application for review of the Order or may file Appeal against such order.
The registration is valid for a period of ten years w.e.f. the date of Application.
Renewal of registration
On registration, the mark is valid for a period of ten years w.e.f. the date of application and may be renewed every after ten years. The application for renewal may be filed anytime before 12 months from the due date of renewal.