How to Register for Trademark in India? What are the procedures for filing a Trademark in India?
The Trademark Attorney’s at Singhwal have a vast experience of filing trademark since 2010 and have filed huge number of applications both nationally and internationally Trademark is one of the most important intellectual property which is an asset to a business, therefore we need to ensure its safeguard. It is common knowledge how much brands are worth, when they are successful. The first step in protecting the same in by obtaining a Trademark. Therefore, we suggest our clients to go for a trademark registration. But what about the trademarks which are not registered, are they not protected under law? This is a fair question one should ask with respect to Trademarks and brands.
The answer is an yes, an unregistered trademark is protected under the law of passing off but not infringement. It is a common law principle. This in turn, leads to the next question as to why we need to register it, if it already happens to have some sort of legal protection The answer is two fold. Firstly in order to come under the umbrella of passing off, the mark needs to have been used extensively which is difficult and tedious work to prove in the court of law as against a Trademark which is prima facie valid. Secondly, while instituting a suit for Trademark infringement, there is no bar on instituting a cause of action under passing off as well. Thus allowing more rights to be protected under which is easily established as against that of passing off. Trademark law is based on the concept of use and not just acquiring the right.
The first and initial step in an infringement suit is to obtain an preliminary injunction against the infringer in which the infringer is barred by a court order from using the trademark. In this case if your trademark is registered then it is a prior proof of ownership but in case where you have just used the mark and not got it registered then for prima facie case establishment purposes a trademark claimant has to show extensive usage in initial phase itself, which is generally difficult to make up due to limited opportunity available while filing the suit to delve deep into documents for establishing the prima facie evidence.
In case of passing off the mark in question has to be well known as well as extensively used for getting protection under law of passing off. In case of an infringement, the preliminary action taken is a temporary injunction against the unauthorized user for which you need to prove that you are a prior user. This is the scenario in which the registration of trademark or an application for trademark shall act in the favor of plaintiff or person whose trademark has been infringed. To bring up a case a prior application or registration of trademark would speed up the trial and a temporary injunction can be used as an immediate remedy. Hence we suggest our client to go for filing and thereby add value to their asset.
Preliminary injunctions in the form of Ex-parte injunctions are also very common, where the person instituting the trademark infringement suit is able to get a favorable order if they have a valid registration, use and establish and satisfy the condition for the preliminary injunction to be granted. This means that the injunction is mostly immediately granted and thereby, the infringer can be stopped immediately as against a long drawn battle in the court. Thus making the importance of the Trademark registration paramount.
The Principle of Use
Principle of Use can be explained by taking an example of Burger King, the US fast-food chain which has about 13,000 outlets across the world and had the trademark registered since 1979.However, they were a victim of “non-use” of mark, they were sued and therefore the the mark was allowed to be struck from trademark register by a company much smaller named Burger King restaurant.
Only because the company was no using the mark . Such an old company and having the trademark registered, still due to non-use the company is being refrained to have an advantage of earlier registration. Therefore if a trademark protection is acquired but not used then the owner’s right is diluted or he loses the right as trademark owner.
Consideration of Filing the Trademark
Before filing a trademark/service mark application, we consider the following:
- Whether the mark to be registered is register-able federally as well as legally protect-able?
- How difficult it will be to protect the mark based on the strength of the mark selected?
The mark should be legally allowed by the law of the land that means, it should not be objectionable on the ground envisaged by the law. For instance, the mark that is not allowable is The strength of the mark is decided by checking whether the mark is similar or causing a likelihood of confusion in the minds of the customer. This is the preliminary step that we take by conducting a trademark search in the database looking for identical or similar mark in the same or different class of goods or services. Once a search report is generated which also includes an analysis whether the client needs to proceed with the trademark or not.
The filing procedure
Once the trademark search is done and the wordmark or logo is finalized then the next step is filing of the mark. Generally, what we follow is we send a trademark information sheet to our client which includes details required for filing like name of party, address, mark to be filed, and business for which mark need to be used so that we can classify the mark according to the NICE Classification.
We send our client the Power of Attorney which we request the client to sign and send to complete the filing. Once all documents are received we file the trademark and within two working days an acknowledgement receipt is generated which we send to our client for updates. Once, the application is filed with the Registrar the client can start using the TM symbol. Then we keep updating the client regarding the status of the trademark application.
It is important to continue to use the marks. Especially if the application is filed on a proposed to be used basis. If the mark is very distinctive and does not warrant an Examination report, in that case the mark goes through to registration without any glitch. However, if there is an objection based on the distinctiveness raised, the best way to overcome the said objection is to show the evidence of use. Therefore, it is of utmost importance that the mark is continuously and extensively used.
We at Singhwal, assist our clients in the filing of the User affidavit at various stages of the prosecution as well. In the cases, where the mark is already in use, then the best practice is to file the user affidavit at the time of filing the application. IN the event, the application is filed on the proposed to be used basis, it is best to file it at the first instance when an opportunity raises. This is given at the stage of filing the response to the Examination report. In certain cases, over and above this a user affidavit may be required in the hearing stage as well.
The next step in the registration process is a formalities check. When an application is filed with the Trademark office, it is first checked for formalities. If the application is filled in or made correctly, the Application moves to the Marked for exam state. IN the event, there are any errors, or any clarifications that the Office may seek, they will issue a correspondence to the concerned Attorney to rectify the same. In certain cases, at this stage there may be a requirement for the filing of a TM-M, which may help correct an inadvertent error that may be made by the Applicant or the Attorney. It may also be a simple reply to the correspondence which will help the Application move from the Formalities check fail status to the marked for Exam status.
EXAMINATION REPORT ISSUANCE
The next step in the prosecution of the Trademark Application is in India is the Examination stage. The Application once is marked for the Exam goes to an Examiner for an Examination. Upon Examination, the Examiner may accept the Application directly, if they deem the Application and the mark fit to proceed further in the prosecution. If however, the Examiner does find objections with the mark, with respect to lack of distinctiveness or with respect to certain identical or similar marks in the register, then the Examiner issues an Examination report. We have now started to receive the Examination report as quickly as one month from the date of filing the Application. The notification is received through email and within one month from the receipt of the Examination report the response for the same has to be filed.
We at Singhwal, file responses which are not boilerplate and are drafted specifically with respect to the Examination report that has been issued. We work closely with our clients to obtain the documents to support the evidence of use, draft an user affidavit if need be, in order to overcome the objections and file the response with the office.
The next step in the prosecution is the stage of the hearing. In the event, the Examiner is not satisfied with the response filed then he may ask the Attorney of the Applicant to appear in front of him for a show cause hearing. We at Singhwal, proceed cautiously with respect to hearings and understand and analyze the prosecution dockets and prepare with all necessary documentation in advance and also file the same before the date of the hearing with the cooperation of our clients. Once this is in place, our Attorneys appear before the Examiner to show cause. In certain instances, post the hearing there may be certain instances of corrections that may be required which is suggested by the Examiner and a TM – M form may have to filed to rectify the same.
ACCEPTANCE AND ADVERTISEMENT AND GRANT
The last and final step in the prosecution process is the acceptance and advertisement stage. Once the mark is advertised in the journal, it forms a part of notice to the third parties. The advertisement in the journal happens on every Friday with the Indian Trademark Office. Once the mark is advertised, there is a period of 4 months for which the mark is open for Opposition. If the mark goes unopposed, the mark is granted and eventually a Registration certificate will be issued.
It is also at this stage that a third party may issue an opposition. We also assist our clients in the event there is any opposition notice issued and handhold our clients in such instances.
We at Singhwal have experienced Trademark attorneys, who perform due diligence right from the beginning of the Trademark Registration process, from the stage of search, to filing to examination report response and finally the stage of the hearing up until the end at each stage. We offer the best services keeping the business needs of our clients in our mind and provide the strategy based on the same.