Trademark Registration 2023

What is a trademark?

A trademark is a sign, symbol, or word that distinguishes the goods or services of one business from those of another.

A trademark, according to Section 2(1)(ZB) of India's Trademark Act, 1999, is a mark capable of being represented graphically and capable of distinguishing one person's goods or services from those of another; this may include the shape of goods, packaging, and color combination.

Thus, a trademark is any mark that gives a business its distinct identity and allows consumers to identify the source of specific goods or services.

Why is trademark registration important?

A trademark allows customers to identify the source of a specific product or service. It reflects a company's identity. The trademark typically represents a company's goodwill and reputation.

Trademark registration is important because it prevents unauthorized third-party use. Upon registration, the exclusive right to use a trademark is granted to the trademark owner. If a third party attempts to misappropriate the mark, the owner of the mark may file a trademark infringement lawsuit.

McDonald's golden arch symbol, for example, is the best example of a symbol trademark. Consumers will recognize the source of their food simply by looking at the golden arch. They associate the symbol with excellence. If a third party uses the symbol without Mcdonald's permission, the latter can sue for trademark infringement and seek damages for the harm done to its goodwill.

What are the various types of marks?

Fanciful - The strongest trademarks are made from arbitrary and fanciful terms. The mark does not describe the product or service to which it is attributed. A fanciful trademark is an entirely invented word. An arbitrary made, however, is a common term that is not specific to the goods or services it refers to. The best option for a trademark is a fanciful or arbitrarily chosen mark. An example of an arbitrarily registered trademark is APPLE for computers. PEPSI is a good example of a fanciful mark.

Suggestion- These suggestive marks describe indirectly the product or service they are referring to. The mark doesn't directly describe or refer to the product or the service. It only indirectly points towards some attributes of that product or service. NETFLIX is a good example of a suggestive trademark.

Descriptive - A descriptive mark refers directly to the product or service that it describes. Statutorily, descriptive words cannot be registered as trademarks. If the mark is distinctive or has a secondary meaning, it can be registered as a trademark. SUGARFREE, a sugar substitute is an example of a descriptive mark.

Generic- A generic mark is a term that can be used to identify products and services. A generic mark is, for example, the term PENCIL to describe a brand name of pencils. A trademark cannot be registered for a generic term. Some brands are household names because of years of consistent use. The word XEROX, which stands for photocopying, has become a common term.

A fanciful, arbitrary, or abstract word is the best choice for strong protection. A generic mark, on the other hand, cannot be registered as a trademark.

What's the process for trademark registration?

Trademark Search:

Before you can begin the process of registering a trademark it is necessary to do a trademark search. You can use a trademark search to determine if a similar or identical mark has been registered. The trademark search online is possible. To reduce opposition, no matter how unique your trademark may sound, it is better to do a trademark search prior to filing for registration. A trademark search can give you an idea of any marks that might be similar to your trademark.

You might register your new clothing line under the name "CHRYSALIS", for example. Although it may be an arbitrary mark, it is a good idea to check the trademark registry to see if any similar or identical marks have been registered. This will save you both time and money.

Trademark Application:

Next is filing for trademark registration after you have completed the trademark search. The application to register your trademark online or in person can be submitted via form TM-A.

When you file the trademark registration form, it is essential to include the following information:

- Information about the applicant (or you) - The mark to be registered

- The list of services or goods that the mark will apply to

- The statement or use - The date you've used the mark, or, if you don't have it yet, the date you propose to use it.

Trademark Examination:

An examiner will review the application for discrepancies after the trademark application is filed. It can take up to four months for the examination report to be completed from the time the application was filed. The examiner can raise two objections after examining the application.

Absolute grounds - A mark that is not distinctive or unable to distinguish one business's products or services from another. This is usually the case if you choose a descriptive or generic word for your trademark. If you choose to LOSE to be your trademark for a product that aids with weight loss, it will likely be rejected because the trademark is descriptive. As such, it is better to choose an arbitrary, fanciful, or descriptive mark for your trademark.

Relative reasons - Where the mark is identical to an earlier trademark registered on the Trademarks Register. The examiner may object if your pattern is identical to a registered trademark.

If there are no objections, your mark will be published in the Trademarks Journal.

Response to Examination Report:

You have one month to reply to the objections from the date you received them. You are deemed to have abandoned the application if you don't respond within one month.

If you reply within one month and the Examiner accepts your response, then the mark will be published in the Trademarks Journal. If the Examiner raises any objections, a show-cause hearing will be held. A show cause hearing is when you appear before the Hearing Officer/Registrar of Trademarks with all the documents and evidence necessary to convince him to register the mark. The hearing notice is typically sent 15 days prior to the hearing date. The mark may be published in the Trademarks Journal if the Hearing Officer/Registrar of Trademarks is convinced. The mark may be withdrawn if the Hearing Officer/Registrar of Trademarks is not convinced.

Opposition to registration of mark:

Any third party can oppose the trademark within four months of the publication date in the Trademarks Journal. To file the trademark opposition, you must use the form TM-O. The Registry will serve the notice if it is satisfied that you have met all requirements. You must counter-state within two months of receiving the opposition notice on Form TM -O

If you don't file a counter-statement within the two-month deadline, your application will be deemed abandoned. The opposition will be filed and you will submit the evidence.

The opposition must first file the evidence in an affidavit within a period of two months of receiving the counter-statement. An opposition may choose to waive the need for an affidavit and instead rely on the information in the notice. Your evidence must be submitted within two months of receiving the evidence or intimation of waiver.

You also have the option of not producing any evidence and can choose to rely only on the facts in your counter-statement. The opposition can again produce additional evidence within one month after receiving your evidence or an intimation of waiver.

After the evidence submission stage is completed, the Registry will set a hearing date and notify both parties. After hearing both sides, the Registry will determine whether or not the trademark is eligible for registration.

If no opposition is filed within the time limit, the mark will be registered.

Registration:

The trademark application is now at the final stage. The trademark registration is valid for 10 years starting from the date of the application. It can be renewed at any time after that period. You can file the renewal form