Steps Involved to File a Trademark Application in India

A trademark is a recognizable word, phrase, symbol, design, or a combination of these which helps identify and differentiate your goods or services. Apart from these indicators, trademarks can also include colours, scents or aromas, slogans and so on. In simple words, a trademark can be anything that differentiates a specific product or service from another. A trademark is a form of intellectual property and is used for a commercial purpose. Thus, it is legally protected from fraud, unauthorized usage and counterfeiting. Registration of trademarks is thus, a crucial step in establishing the brand’s identity and grants exclusive rights to the owner.

Trademarks are regulated by the Trademarks Act, 1999. Section 18 of the Trademarks Act,1999 provides for the application to be made to the registrar. There are several steps followed by agents and attorneys while filing applications for trademarks in India. They are as follows:

• Step 1: Classification: The first step in filing a trademark application is to determine the appropriate class(es) under the NICE classification their trademark falls into. The NICE classification has 45 classes where 1-34 represent goods and 35-45 represent services.

• Step 2: Pre-Filing Search: A trademark search must be conducted to verify that the trademark does not conflict with other existing trademarks. A proper trademark search minimises the risks of objection during the examination process and in registering the desired trademark.

• Step 3: Filing of Application: Once it is ensured that the trademark does not conflict with existing trademarks, the trademark application can be filed through offline or online portal via https://ipindiaonline.gov.in/trademarkefiling/user/frmloginNew.aspx along with the application fee of Rs. 4,500/- for Individual/startup/ small enterprise and Rs. 9,000/- in all other cases (online), with description of applicant, and goods/services under relevant class. When the said mark has already been in use, a User Affidavit for the same is to be submitted along with the application and necessary documents.

• Step 4: Examination of Application: Once the application is filed, the Registrar then checks if the trademark is consistent with the rules and regulations laid down in the Trademarks Act. If any objections are found, it is communicated with the applicant, who must respond and rectify within the specified time limit. The applicant needs to reply to the objection within 30 days from when the objection was raised.

There exist certain grounds for refusal of trademarks as per Sections 9 and 11 of the Trademarks Act. Section 9 of the Trademark Act, 1999, specifies grounds for refusal of trademark registration: marks devoid of any distinctive character; marks indicating quantity, quality, type, value, purpose, or geographical origin; marks customary in language or trade practices; marks that deceive or cause confusion; marks likely to hurt religious susceptibilities; marks containing scandalous or obscene matter; marks prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950; marks resulting from the nature of goods; marks adding significant value to goods; and marks whose shape adds significant value to goods. Section 11 of the Trademark Act, 1999, provides They bar registration of identical or similar marks.

• Step 5: Publication in Trademark Journal: The trademark is then published in the trademark journal inviting third-party objections. A four-month time period is given for inviting objections.

• Step 6: Opposition Proceedings and Correction of the Application: Once the application is published, opposition proceedings are entertained, if any. Once an objection is raised, the applicant needs to file a counter statement within 30 days from the receipt of the objection. Both the parties present their evidence, post which the registrar decides whether the trademark can be registered or not. If there is no opposition or if it is resolved in favour of the applicant, the application will proceed for certification.

• Step 7: Registration and Certificate Issuance: After completing the above steps, the trademark is registered, and online Certificate is issued evidencing the registration. For obtaining hard copy of the certificate, separate application must be filed with the prescribed fee.

Once a certificate for registration under the relevant class is issued, the trademark is valid for a period of 10 years from the date of first usage as recognised by the Registry or the date of application.