Browse By

How To Register A Trademark

WHY?

Even for small businesses, trade marks can be highly valuable. Trade marks establish a connection between a product or service and the individual or entity having the right to use that mark in the course of trade. This can help a proprietor distinguish his products or services from those offered by an imitator or competitor. Whether it is the name, logo, slogan, shape, packaging, colours or branding, trade marks can serve to authenticate the source of a product or service and help the commercial enterprise gain a competitive advantage.

Moreover, a registered proprietor has some distinct legal privileges. Not only does he/she have the exclusive right to use the mark in the course of trade, but can also institute a suit for infringement in the case of unauthorised use. If infringement is proved, the court can grant an injunction (restraining the unauthorised use) and damages, along with and order for destruction of the infringing articles.

That is not to say that unregistered names, logos, slogans etc. are not legally protected. But the burden of proof is significantly higher in this case since the rights flow from the common law doctrine of ‘passing off’ and not statutory law. Therefore, on balance, it is prudent to register a trade mark.

HOW?

Registering a trademark is fairly simple, but could end up being an unusually protracted affair. So it is best to engage the services of an agent to obtain the registration, including filing the application, responding to notices, objections and other miscellaneous matters. When narrowing down on an agent, make sure he/she is either a legal practitioner, a registered trade marks agent or an individual who is in your sole and regular employment. Assuming no objections are raised, you will receive a certificate of registration in a couple of years.

Step 1: Search the Database

One of the grounds for refusal of registration is that the proposed trade mark is similar to an earlier trade mark in respect of the same or similar goods or services. Even if there is a likelihood of confusion in the minds of the public as to the source of the product or service, the registration can be denied. Therefore, one should ideally search the database for previous registrations of similar sounding/looking trademarks before making the application.

Step 2: Make an Application

The three aspects to consider while making the application are as follows – (i) the type of mark (whether a name, logo, slogan, colour combination etc.); (ii) the class to which the good or service belongs; and (iii) the relevant office of the Registry, depending on your location.

Step 3: Respond to Objections

The Registrar may object to the application on several grounds, classified as either absolute or relative grounds. Relative grounds, as the name suggests, depends on the relationship between a proposed trade mark and any existing marks. So, if there is a likelihood of confusion with a previously registered trade mark, the application may be rejected.

The proposed trade mark can also be rejected if it lacks distinctiveness (it is a generic term), if it is customary in the current language and established practices of the trade, scandalous, obscene, hurtful to religious sentiments or is otherwise prohibited under Indian laws. These are some of the absolute grounds for refusal.

After reviewing the application, the Registrar will communicate the grounds for objection, if any, in the form of a written examination report. You will have to respond to the objections within one month. After scrutinising the responses, the Registrar will either accept or reject the application.

Step 4: Advertisement in the Trade Marks Journal

Once the application has been accepted, whether absolutely or with caveats, the application for registration is advertised in the Trade Marks Journal published by the Registry, which is also available on its website.

Any member of the public may oppose the application within four months of it being published in the journal. The Registry will serve a copy of the opposition and you will have to respond to it within two months. Both, you and the individual opposing the proposed trade mark, will be granted an opportunity to be heard, after which the Registry will finally decide whether to accept or reject the proposed trade mark.

Step 5: Registration

If no objections have been received from the public, or the Registry rejects the oppositions that have been received, the trade mark registration will be granted. You will be issued a certificate of registration as well. This is particularly useful in the case of any suit for infringement as it serves as prima facie proof that the trade mark is valid.

Additional Pointers

Domain names are an integral part of businesses in the digital age. Courts in India have ruled that domain names are to be protected under the Trade Marks Act, despite not being explicitly mentioned. So you can rest assured that your website will be protected if the need so arises.

Hope this was useful. If you have any questions or comments, please use the contact page.

(This primer is licensed under a Creative Commons 4.0 license. You are free to copy, use, share, modify and translate this primer without permission, so long as it is strictly for a non-commercial purpose and you attribute Techlawtopia and the author as the original source. For other permissions, use the contact page)