Trademark Application Filing Procedure & Prosecution in India

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Trademark Application Filing Procedure & Prosecution in India

The application for the trademark and prosecution has various stages in it. In India, normally the process starts off with the filing for the application followed by examination of the documents and verification, then publication and advertisement are done and then registration, opposition and renewal follow.

Application for the Trademark requires detail understanding of the process:

Filling: The application for the trademark can be filed for one asset class as well as for multiple classes of assets depending on the nature and wideness of your business. If you want to file an application where you claim priority for being in a convention country, then you need to file the same within six months in India from the date on which the convention application was filed.
Examination or verification: According to the provisions and the rules of the Trademark Act of India, the registrar needs to verify the application on the basis of the documents and other facts by duly examining them. If there is any issues crop up related to the application and registration, then a report of the examination will be submitted by the registrar within three months to one year of the filing of the application.

There are two choices in front of the registrar if he refuses the application, either it is on relative ground or it is on absolute grounds.
- Relative Grounds for Refusal of the Application of the trademark: The application can be refused on the relative grounds (Section 11, Trademark Act, 1999) and they are
  - The causes of refusal of the application for the registration of the trademark can be –
    - There is a trademark which is already registered and it is identical to the trademark you want to register and the services or the goods you are going to provide have similar features.
    - If your applied trademark is similar to an earlier one, then also confusion may arise and that is why your trademark application might be denied. It is also because of the identical and similar nature of the products and services you are offering.
  - If already there is a trademark which is famous and known by most of the people across India, then even if your services and goods are not identical or similar in nature and you are another entrepreneur but the trademark you want to have is identical or similar in nature with the well established trademark, then you can get a refusal on the application for the same.
  - If the trademark is prohibited due to some legal reasons in India, then you can’t have the approval on your application for the trademark.
- Absolute Grounds for Refusal of the Application of the trademark:
  - If the trademark which you applied for is not able to differentiate your services and products from others, then it is probable that you won’t get the approval for the same.
  - If the trademark is consisting of any kind of characteristics of the product which can serve in trade, then it will be refused.
  - If the trademark is having signs or mark that is bona fide or customary in terms of present language, then also it won’t get registered.
  - If the trademark is of such sort that can create confusion then it won’t be approved.
  - If there are any such signs or marks on the trademark which might hurt the religious sentiment of certain section of community in India, then it cannot be approved.
  - Presence of any scandal related mark or signs in the trademark or something is prohibited.
  - If it falls under the Emblems and Names Act, 1950.
  - If the mark contains any shape which can define nature, value of the good and also which needs technical results cannot be approved.
  But, if the applicant can remove the absolute grounds for which his or her trademark application was refused, then it can get registered. The applicant needs to provide such evidence that proves the removal of the absolute grounds on which earlier the registration failed. The reply from the applicant must be filed within a month from the date of receiving the refusal of the Trademark application from the Registrar office on the particular address provided.
Hearing: If the reply to the office action is found to be appropriate on the grounds of the evidence and other facts by the registrar, then the examiner will advertise the trademark in the Journal of the Trademarks. But if not satisfied with the reply, then he or she will call for a hearing on a particular date and time.
Advertisement: If the examiner found the application to be proper and approves it then it will get published on the Trademark Journal as an advertisement. It is advertised to invite any opposition from any other party if they have similar or identical trademarks. The approved mark will be available on the website of the Registry’s office on Monday, every week.
Opposition: When the trademark is approved and published on the Trademark Journal and if any person opposes it within the prescribed time period of 4 months, then the opposition will be considered and worked upon.
Registration and Renewal: If after the publishing of the Trademark on the journal, no opposition has been made within the stipulated time period, then the applicant’s trademark will be registered for the upcoming ten years from the date of issue of the certificate of registration. After ten years, the trademark needs to get renewed by paying fees which is prescribed and if not renewed duly, then it is liable for cancellation of the same.