In India, The Registration of Trade mark is registered by the Controller General of Patents Designs and Trademarks. The registration of the trademark and remedies regarding the infringement of trademark are provided under the Trademarks Act 1999.
The ministry has now become more pro-active and made the process of registering a trademark much faster. However, earlier, the timeline for trademark registration process would take 15-18 months to register a trademark, but now the registering a trademark would take 6-8 months (without any objections).
Timeline for Trademark Registration
There are some definite processes that are to be followed for the timeline for trademark registration. The first and foremost step requires conducting a trademark search before filing an application for trademark registration. It is to make sure that there are no similar or identical trademark exists or has been registered earlier. According to Section 18 of the Act, application for trade mark registry can be made in specified forms.
A single application can be made for trademarks for different classes of goods and services. The prescribed fees must be paid for each class of goods and services. Drafting an application, the collection of documents and filing of trademark application will take 2-3 working days. As one has applied for trademark he/she can start using “TM” sign with the brand name or logo as per an application made.
Read our article:Process of Trademark Registration: Step by Step Guide
After completing the initial formalities, a trademark application can be accepted by the Registrar. Then the registrar publishes an application in the trademark journal within 6 months of such acceptance. When an application is published the same can be opposed or objected by the other person if their marks are similar or identical with the pending application.
In the process of trademark registration, an advertisement is made so that general public has an opportunity to raise any trademark objection against the pending application of the trademark. The opponents get a chance to defend their marks against pending marks which may be similar or identical to theirs.
At this stage, the Ministry examine the brand name or logo applied under various sections of the Trademark Act. Accordingly, the ministry must issue an examination report either objecting or accepting the trademark. If none objections are raised, the mark will directly be allowed to be advertised. Otherwise, the trademark application is examined by the Trade Marks Office in about 2 to 4 months time, from the filing date of objections raised. These objections can either be raised on:
- Absolute Grounds: Devoid of distinctive character, Distinctiveness, not capable of distinguishing goods or services, etc.
- Relative Grounds: Similarity with any earlier trademark already existing on the Trademarks Register
If an examination report is issued, a response has to be filed within 1 month from a receipt of an examination report failing which an application is “deemed to have been abandoned” by an Applicant. If Trade Marks Office is convinced with the response filed, an application is further advertised in the Trademarks Journal. Alternatively, in case an Examiner has further objections, the show cause hearing will be offered to an Applicant.
The application must be proceeded to registration if a trademark application is not opposed within 4 months from a date of advertisement in the Trademarks Journal. Any party can raise opposition against the registration of the trademark within 4 months of publication of trademark in a journal.
Any person can oppose a trademark registration application by submitting the written notice as well as by paying prescribed fees within 4 months from the advertisement of the trademark application to the registrar. If any person opposes the trademark then, after a receipt of the notice of opposition, Registrar serves the same to an applicant of the opposed mark within 2 months. However, if no opposition is made, the trademark will be processed further for registration.
If an applicant receives a third party opposition within the time period of 4 months then he has to file a reply. The reply has to be filed within 2 months from the receipt of notice of opposition. In case if reply is not filed then a ministry will abandon the trademark. The opponent will get one more chance for filing a reply against an applicant. An applicant will also get 2 months period to file the second counter statement. Therefore, within 2 months of the receipt of such notice by an applicant, a counter statement is to be filed to the registrar.
The counter-statement is served to an opponent by the registrar as well. Based on the oppositions and counter statements, registrar will make a decision whether a trademark is to be accepted or not. Both the parties have a liberty to appeal against any decision made by the Registrar. An appeal can be filed before Intellectual Property Appellate Board.
The last stage of the opposition is the hearing, where both parties argue and put their forth statements. After hearing both sides, the presiding officer will pass necessary order. If an order is in the favour of an applicant then the trademark will get registered otherwise it will get abandoned by the officer.
Under the following circumstances, an applicant will receive the trademark certificate:-
- If no opposition is raised: After the completion of 4 months of publishing a trademark in the journal.
- In case opposition: When an officer passed an order of hearing in favour of an applicant.
In both cases, an applicant shall be granted with the trademark registration certificate that ends the timeline for trademark registration process. An applicant is allowed to use the “R” sign with its brand name or logo after receiving a registration certificate. The certificate can be downloaded online from the trademark portal when an application number entered.
The Registrar accepts the trademark, and eventually the trademark entry is made in the register. On the registration of the Trademark, the Registrar issues a Trademark Registration Certificate in favour of an applicant. The whole timeline for trademark registration process must not exceed a period of 12 months from a date of application. And after every 10 years the Trademark Renewal can be done.
An application goes through a timeline for trademark registration. But if the brand name is unique then one can get the trademark registration certificate in around six to eight months. An application is processed through the Trademark ministry so the processing time completely depends on government processing time. Hence one must choose the unique brand name to avoid a longer registration period.
Read our article:An Overview on Document Required for Trademark Registration