How to File and Prosecute Trademark Applications:

An application for a trademark can be made on Form TM-1 with a prescribed charge of 4500/- or 9000/- at one of the 5 workplaces of the Trade Marks Registry placed at Mumbai, Delhi, Kolkata, Chennai and Ahmedabad relying on the vicinity in which the applicant is living or has his essential vicinity of enterprise Or this can be filed through the online portal of the government. If its miles determined be ideal then its miles marketed with inside the Trade Marks Journal to permit others to oppose the registration. If there may be no competition or if the competition is determined in favour of the applicant then the mark is registered and a certificate of registration is issued. If the applicant’s reaction does now no longer conquer all objections, the Registrar will problem a very last refusal. The applicant can also additionally then enchantment to the Intellectual Property Appellate Board, an administrative tribunal.

Territorial Jurisdiction:

Mumbai Office:

Maharashtra, Madhya Pradesh and Goa

Ahmedabad Office:

Gujarat, Rajasthan, Daman, Diu, Dadra and Nagar Haveli

Kolkata Office:

Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Nagaland, Sikkim, Tripura, Andaman & Nicobar Islands

Delhi Office:

Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Delhi and Chandigarh

Chennai Office:

Andhra Pradesh, Kerala, Tamil Nadu, Karnataka, Pondicherry & Lakshadweep

Stages required for acquiring registration of an indicator:

1. Allotment of application range

Upon receipt of an application for registration, a serial range is allocated to the identical, that’s used as a reference range for the application. The same range is used as Trademark Registration online Delhi Number if the mark is registered.

2. Preliminary Examination Report

The Registry examines the application and sends a Preliminary Examination Report (“PER”) collectively with Formalities Check Report (“FCR”) to the applicant in which the Registrar could name upon the applicant to treatment the deficiencies and departmental objections. The applicant has to answer to the PER and FCR inside a duration of 1 month.

3. Hearing

If the Registrar isn’t pleased with the application and responds to PER, he can also additionally name the applicant for the listening to if the applicant in his respond asked for the identical. If the Registrar is happy with inside the listening to he could order commercial.

4. Advertisement in Trademark Journal

Upon recognition of the application, the Registrar ought to reason the application with the situations and limitations, if any, to be marketed with inside the trademark magazine as accepted.

5. Objections, listening to and registration

Any man or woman inside three months from the date of commercial or re-commercial can also add in the prescribed manner (Form TM 5) oppose the registration via way of means of paying prescribed fees; i.e.,2,500/-. The applicant shall record counter announcement in a prescribed manner (Form TM 6) via way of means of paying prescribed fees; i.e.,1,000/-. Any celebration desirous of listening to need to record application in the prescribed manner (Form TM 7) via way of means of submitting prescribed fees; i.e.,500/-. The Registrar after thinking about the written averments and after listening to, if any, comes to a decision as to the claims of the applicant and the opponent and thereafter if the selection is in favour of the applicant, registers the trademark. Upon registration of the trademark, the Registrar shall problem registration certificates in the prescribed form. Registration of the trademark will be powerful from the date of the application and will be in pressure for ten years from such date. In case any celebration to the competition court cases is aggrieved via way of means of the order of the Registrar, it could record an enchantment towards the identical with the Tribunal.

Grounds of refusal:

Section nine offers absolutely the grounds for refusal of registration of any mark and segment eleven offers for the relative grounds for refusal of registration. The rejection order is commonly for the motive of attracting provisions of both segment nine or segment eleven.

Conditions for being eligible for registration as an indicator:

• Mark need to be able to distinguish items or offerings of 1 man or woman from the ones of some other.
• Mark ought to now no longer consist completely of commonplace marks or warning signs with inside the cutting-edge language or with inside the bona fide or installed practices of the change;
• Mark ought to now no longer consist completely of the form of the products as a result of the character of the products themselves
• Mark ought to now no longer consist completely of marks or warning signs utilized in widespread for relating to the traits of products or offerings like kind, quality, quantity, supposed purpose, values, geographical starting place etc.
• Phonetic equal of registrable phrases could additionally be registrable. For example, “XTRA” can’t be registered, because the identical is the phonetic equal of “extra”.
• It ought to now no longer consist completely of form that offers considerable price to the products; a fashion dressmaker watch having a specific form that offers it considerable price, as a result, won’t get registration. Such a form can be registered beneath Neath the Designs Act, 1911 as a layout and now no longer as an indicator.
• It ought to now no longer comprise or incorporate of any remember possibly to harm the non-secular susceptibilities of any magnificence or segment of the residents of India;
• It ought to now no longer incorporate or comprise scandalous or obscene remember;
• It ought to now no longer be of the character as to mislead the general public or reason confusion;
• Its use ought to now no longer be prohibited beneath Neath Emblems and Names (Prohibition of Improper Use) Act, 1950;
• Registration of a mark can also be refused if there may be a chance of bewilderment at the part of the general public which include the chance of affiliation with:

(a)  Any trademark much like in advance trademark used for comparable items or offerings

(b)  Any trademark much like famous trademark used for any items or offerings

• Registration of a mark can also be refused if its use in India is vulnerable to be averted beneath the regulation of copyright or beneath the not unusual place regulation of passing off shielding an unregistered trademark.

Duration of a Trademark:

The time period of an indicator registration is for a duration of 10 years. The renewal is feasible for similar duration of 10 years ever. Unlike patents, copyrights or business layout trademark rights can final indefinitely if the proprietor maintains to apply the mark.

Remedies for Infringement and Passing-Off:

Two styles of treatments are to be had to the proprietor of an indicator for unauthorized use of his/her mark or its imitation via way of means of a 3rd celebration. These treatments are: — ‘a motion for infringement’ in case of a registered trademark and ‘a motion for passing off’ with inside the case of an unregistered trademark.

The fundamental distinction among an infringement motion and a motion for passing off is that the previous is a statutory treatment and the latter is a not unusual place regulation treatment. Accordingly, to be able to set up infringement with reference to a registered trademark, it’s miles essential best to set up that the infringing mark is same or deceptively much like the registered mark and no similar evidence is required. In the case of a passing off motion, proving that the marks are same or deceptively comparable by myself isn’t enough. The use of the mark ought to be possible to mislead or reason confusion.

Safeguards to be taken via way of means of the owner of a registered Trademark:

The owner ought to use and renew the trademark often and in time. If the trademark is misused via way of means of others he ought to record an in shape for infringement and passing off and additionally take crook motion.

The owner ought to hold an eye in admire of logos posted with inside the Trade Marks Journal and institute competition court cases if same or deceptively comparable logos are marketed. He ought to provoke rectification court cases if a same or deceptively comparable trademark is registered..

International Trademark Protection:

There isn’t any machine as but in which an unmarried trademark application is enough to shield the trademark proper internationally.

It is likewise feasible to make use of multinational submitting structures in sure areas to be able to achieve trademark safety. For example, Belgium, the Netherlands and Luxembourg have an unmarried trademark registry, generally known as the Benelux Trademark Register.

Important paperwork beneath Neath the Trade and Merchandise Act, 1958:

Form TM – 01:

Application for Registration of a Trademark

Form TM – 05:

Notice of Opposition to Application for Registration of a Trademark

Form TM – 06:

Form of Counter-Statement

Form TM – 12:

Renewal of Registration of a Trademark

Form TM – 13:

Restoration of Trademarks eliminated from the sign in for Non-price of renewal fees

Form TM – 16:

Request for Correction of Clerical mistakes or for Amendment

Form TM – 24:

Request to sign in a Subsequent Proprietor of a Trademark

Form TM – 26:

Application for Removal of Trademark from the sign in

Form TM – 38:

Application via way of means of a registered owner for a further or alteration of a regd. Trademark

Form TM – 46:

Request for a Legal Proceeding Certificate

Form TM – 48:

Form of Authorization of Agent in a remember of proceeding

Form TM – 54: