WHAT IS THE STEP-BY-STEP PROCESS FOR FILING A TRADEMARK APPLICATION?

INTRODUCTION

A trademark refers to a sign, symbol, or expression which distinguishes an entity's goods or services from those of another entity. An application to the Trade Marks Registry in India to charge the trademark provides a degree of legal protection from unauthorized use of that trademark and adds value to the brand. This article provides a thorough and step-by-step guide to the trademark filing process in India, as well as case law interpretations and statutory provisions.

STEP-BY-STEP PROCESS FOR FILING A TRADEMARK APPLICATION IN INDIA

STEP 1: Perform a Comprehensive Search for Trademarks Before submitting an application

An applicant must make sure that their trademark is a unique mark and ensure that it is neither identical nor deceptively similar to previously registered trademarks. A thorough search of the Trade Marks Registry's online portal (IP India) should be completed for registered or pending trademarks. Additionally, a search for common law trademarks in business directories, web-based marketplaces, and websites will help applicants avoid conflicts.

Legal Reference: Section 11(1) of the Trade Marks Act, 1999 prohibits the registration of a trade mark that is likely to confuse or deceive the public.

Case Law: The Supreme Court in Amritdhara Pharmacy v. Satya Deo Gupta, [AIR 1963 SC 449] held, in deciding whether the use of a mark is likely to confuse the public the courts will consider a number of factors such as the similarities between the marks and the nature of the goods; which is important for an applicant to consider in their search.

STEP 2: Decide the Basis for Filing

Applicants must state if the mark is in use or intended to be used:

Used Mark: The mark is already in use in commerce, therefore must submit evidence like invoices or advertisements.

Proposed to be Used: The mark is not yet in use but the applicant intends to use it, thereby permitting filing prior to commercial activity.

Legal Reference: Legislation governing the application filing for used or proposed marks is found in Section 18 of the Trade Marks Act, 1999.

STEP 3: Identify the Goods and Services Trademarks are registered for

certain specified goods and/or services, classified underneath the Nice Classification system adopted by India. Applicants will need to clearly describe the goods/services and choose the correct class in the maximum of 45 international classes (e.g. Class 25 for clothing; Class 35 for business services).

STEP 4: Submit the Application

Submit the application electronically via the IP India portal (ipindiaonline.gov.in) using Form TM-A for a new application. A Class III digital signature is required for electronic filing. The application includes:

· Name, address, and nationality of the applicant.

· Drawing and description of the mark.

· Class(es) of goods/services.

· Date of first use (if applicable) supported by evidence.

· Declaration of ownership.

Fees: ₹4,500 per class for individuals/startups/MSMEs; ₹9,000 for others (document filed electronically). Following submission, an application number is generated within 1-2 days, allowing use of the ™ mark. If an applicant files without providing responses for deficiencies, the application may be abandoned under Rule 26.

STEP 5: Examination and Vienna Codification

Once a filer submits their application, the Registry will Vienna Code the figurative parts of the mark (if there is one) based on Vienna Agreement. Thereafter, an examiner will examine the application for compliance with Sections 9 and 11 of the Act, and provide an Examination Report either between 30 - 90 days. Sections 9 and 11 often include common objections: descriptiveness or similar. An applicant will have 30 days to respond with material evidence to the examiner's objections; extensions are possible. If the material objection is not resolved, the Registry will hold a Show Cause Hearing on the objection that needs to be resolved. In Mohan Lal v. Sona Paint & Hardwares (2013), the Supreme Court was able to clarify Segments 26 and 34 on priority rights and ownership for users prior to any pending application and reregistering an application. Monitoring your application status is available on the portal.

STEP 6: Publication for Opposition If approved

The trademark will be published in the weekly Trade Marks Journal (ipindia.gov.in). An opponent may apply for opposition (Form TM-O) under Section 21 within 4 months. The opponent will file a notice of opposition and the applicant will respond by filing a counter statement (2 months in total). Evidence, including witness statements, is submitted and hearings take place before the Registrar. If there is an opposition, the proceeding changes to an adversarial nature, but if there is no opposition or the opposition is resolved in favor, it proceeds to the next stage, registration. In the case of Imperial Tobacco Co. of India Ltd. v. Registrar of Trade Marks, it was held (in a case examined under the 1999 Act) that an application can be refused because the trademark is merely descriptive, and therefore inadequate distinctiveness.

STEP 7: Registration If there is no opposition or the opposition is resolved in favor of the applicant

A digital Registration Certificate will be issued under Section 23. The Registration Certificate is valid for 10 years from the date of the application and can be downloaded from the portal. After registration, people can use the ® symbol after the mark, which indicates the registration status. Registration is deemed prima facie evidence of validity of the trademark as per Section 31.

STEP 8: Maintenance of Registration

Registrations need to be renewed every 10 years via Form TM-R. The renewal application must be filed 12 months prior to expiry (or the application can be made 6 months after the expiry date with payment of the late fee requirements). If the renewal is not filed, the mark will be removed from the database under Section 25. Rights can be enforced via an infringement action (Section 29) in District Court or High Court (Section 134). Patrollers with customs can be arranged to stop counterfeit products entering the Indian market. In Tata Sons Ltd. v. Manoj Dodia (2011) the Delhi High Court protected well-known trademarks from being diluted.

CONCLUSION

In India, securing trademark protection under the Trade Marks Act 1999 follows a structured process, which is beneficial in a growing economy. From searching to renewing a trademark, the process is structured so that if one follows the steps, the risks are minimized, which is clear from the confusion that arises from the Cadila and Toyota cases. Generally, the time frames for obtaining trademarks vary from 12-24 months, in any case, proactive monitoring of the trademark is critical. Professional Consultations, as well as checking for updates on IP India, are also options for making sense of the process.