PROCEDURE FOR TRADEMARK REGISTRATION

Procedure of Registering and Maintaining the Trademark in India

Trademarks, patents, copyrights, domain names, and business name registrations all differ, so it is important to learn whether a trademark is appropriate for you.

A trademark typically protects brand names and logos used on goods and services. A patent protects an invention. A copyright protects an original artistic or literary work. For example, if you invent a new kind of vacuum cleaner, you would apply for a patent to protect the invention itself. You would apply to register a trademark to protect the brand name of the vacuum cleaner. And you might register a copyright for the TV commercial that you use to market the product.

Registration of a business name as a Company or LLP does not necessarily qualify as trademark

Selecting a Mark

Once you determine that the type of protection you need is, in fact, trademark protection, then selecting a mark is the very first step in the overall application/registration process. This must be done with thought and care, because not every mark is registrable with the Indian Trademark Registry. Nor is every mark legally protectable, that is, some marks may not be capable of serving as the basis for a legal claim by the owner seeking to stop others from using a similar mark on related goods or services. Businesses and individuals new to trademarks and the application/registration process often choose a mark for their product or service that may be difficult or even impossible to register and/or protect for various reasons. Before filing a trademark/service mark application, you should consider:

1) Whether the mark you want to register is registrable, and

2) How difficult it will be to protect your mark based on the strength of the mark selected.

Mark Format

You must identify your mark format: a standard character mark, a stylized/design mark, or a sound mark etc

Identification of Goods and/or Services

It is critical you identify clearly the precise goods and/or services to which the mark will apply.

Searching

Always search the CGPDT Public search Trademark database to determine whether anyone is already claiming trademark rights in wording/design that is similar and used on related goods/services through a registration.

Trademark Attorney

Because all of the above are very important, you should consider whether to hire a trademark attorney to help you with these steps, as well as the overall application process.

Prepare the application and submit before the trademark registry

NOTE: The application fee is a processing fee. Not all applications result in registrations. Your fee will not be refunded, even if ultimately no registration issues. All information you submit to the USPTO at any point in the application and/or registration process will become public record, including your name, phone number, e-mail address, and street address.

Monitoring Application Status

Throughout the entire process, you should monitor the progress of your application through the Trademark Status Information system. It is important to check the status of your application every 3-4 months after the initial filing of the application, because otherwise you may miss a filing deadline. Please review the additional information on checking status to ensure you understand this important step in the overall registration process.

Trademark Registry Reviews Application

After the Trademark Registry determines that you have met the minimum filing requirements, an application serial number is assigned and the application is forwarded to an examining officer . This may take a number of months. The examining office reviews the application to determine whether it complies with all applicable rules and statutes, and includes all required fees. Filing fees will not be refunded, even if the application is later refused registration on legal grounds. A complete review includes a search for conflicting marks and an examination the written application, the drawing, and any specimen.

Trademark Registry Issues Letter (Examination report)

If the examining officer decides that a mark should not be registered, the examining officer will issue a letter (Examination report ) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If only minor corrections are required, the examining attorney may contact the applicant or his attorney by telephone or email

Applicant Timely Responds to Examination report

If the examining attorney sends an Examination report , the applicant must respond to the Examination report within one (1) months of the mailing date of the Examination report, or the application will be declared abandoned.

Trademark Registry Publishes Mark

If the examining officer raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the "Official Gazette," a weekly publication of the Trademark Registry. After the mark is published in the "Official Gazette," any party who believes it may be damaged by registration of the mark has four (4) Months from the publication date to file either an opposition to registration. An opposition is similar to a proceeding in a Tribunal court, but is held before the Trademark Registry Tribunal Section or Trademark Appellate Board .If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process .During this time, you should continue to monitor the status of your application through the system as explained above in Step 3.

Registration Certificate Issues for Applications Based on Use

If the mark is based on use in commerce, a foreign registration, or an extension of protection of an international registration to the Indian Trademark Registry U/s 154 of Trademark Act and no party files an opposition or request to extend the time to oppose, the Trademark Registry will register the mark and send the owner a certificate of registration. After the mark registers, the owner of the mark must file specific maintenance documents to keep the registration live.

Maintain your registration

You have to renew the registration after 10 years by paying the renewal fee