TRADEMARK APPLICATION PROCESS

Trademarks are rights that are specific to a particular jurisdiction. Like any other tangible asset, they can be licensed, sold, and used as collateral for obtaining loans. Therefore, it is crucial to protect this type of tangible asset to continue enjoying the economic benefits associated with it.

Registering a trademark provides exclusive identity to a business and safeguards its brand reputation. Once registered, a trademark can be used for 10 years before its renewal, and as long as the owner renews it on time, it can be used for the entire life of the business.

Only a registered trademark can file an infringement suit against a third party who attempts to infringe on or pass off their goods and services by using the reputation and goodwill of another person's registered trademark. The cost and time required for trademark registration have been reduced, and it is a one-time expense. The registration process now takes between 6 and 12 months, and once registered, the trademark remains valid for the next 10 years.

There are various steps for filing the trademark:

1. Trademark Registration

Trademark registration is a crucial process that involves two major steps. The first step is conducting a trademark search to ensure that the proposed trademark is unique and distinct. This step is vital in determining whether any similar or identical mark already exists. By conducting a comprehensive search, the trademark owner can determine whether they have any competition in the same trade. The Trademark Registry has a record of all existing trademarks, and searching will provide a warning about the risks associated with using a particular trademark.

2. Filing an Application

The second step involves applying for registration. The application must be filed in Form TM-A, either online or physically at the Trademark Registry Office, depending on one's jurisdiction. The application must be filed for the registration of a single mark only, either in a single class of goods and/or services or in multiple classes. The fees will be calculated for each class included in the application. The application must be accompanied by the required documents and complete details of the trademark.

If the trademark is already in use before applying, the owner must attach a user affidavit indicating the usage of the mark and evidence of its prior use in the trade if they want to claim prior use. These two steps are essential in ensuring a smooth and successful trademark registration process.

3. Examination Process

After submitting a Trademark application, it undergoes examination by a Trade Mark Examiner who ensures that the application complies with the Trade Marks Act of 1999. The examiner may either approve the application or raise objections - which could be substantive under Sections 9 and/or 11 of the Trade Marks Act, 1999 - or procedural objections, such as a lack of necessary documents. If the application is accepted without any conditions, the Trademark is then published in the Trademark Journal. However, if the examiner raises objections, the applicant has 30 days to either fulfil the conditions or respond to the objections.

Section 9 of the Trademark Act 1999

Section 9 of the Trade Marks Act deals with trademarks that are not distinctive, descriptive or generic. A trade mark is considered distinctive if it can differentiate the goods or services of one person from another.

Section 9(1)(a) states that if someone applies for a trade mark that is not unique or different, then the trade mark examiner can refuse it. This means that if the trade mark does not help to identify one person's goods or services from another's, it cannot be accepted.

Section 9(1)(b) says that trademarks that only describe the kind, quality, quantity and geographical origin of the goods or services cannot be registered. This is because these kinds of marks can be used by everyone in the same business, so no one can claim exclusive rights over them.

For instance, the word "apple" cannot be registered as a trade mark for apples, but it can be registered for computers and mobile phones since it is a distinctive mark for these goods.

To avoid Section 9 objections, one could file a unique mark or if the mark is a common, descriptive or generic one, it could be filed with a user affidavit to establish the acquired distinctiveness of the mark.

Section 11 of the Trademark Act 1999

Section 11 of the trademark law states that a trademark cannot be registered if it is identical or similar to an earlier trademark that is already registered or awaiting registration for the same or similar goods or services. If your trademark looks too similar to one that's already registered or awaiting approval, then your application might get refused.

For instance, if someone wants to register a trademark for "Coca-Cola" for a beverage, the application will be refused since it's identical to the prior mark that's already registered.

To avoid Section 11 objection, it's best to steer clear of filing identical or deceptively similar marks.

Step 4: Post Examination Procedures

Once an applicant files a reply to an examination report, the Examiner has the option to arrange a hearing if they are not satisfied with the reply or if it fails to address the objections stated in the report. After the hearing process, if the Examiner is satisfied, they can accept the trademark and forward it for publication in the Trademark Journal. However, if objections remain, the Examiner may refuse the application.

Step 5: Publication of the Trademark Application

Once the examiner approves the trademark application, it will be published in the Trademark Journal for 4 months. The purpose of publishing the application is to make it available for any third party to view and file an opposition if they wish to do so. The Journal is updated every Monday with newly accepted trademark applications.

Step 6: Notice of Opposition

After the application is published, any person who feels that their existing trademark has been infringed or the application is made in bad faith can file a notice of opposition in Form TM-O within four months. This opposition will stop the registration process. The applicant will have to go through various legal procedures, including filing a counter-statement and submitting evidence about it. In some cases, the applicant may also have to attend a hearing. The registration process will resume only after the opposition is cleared.

7. Registration

The last step in the registration procedure is to receive a certificate of registration. If there is no opposition or any false opposition filed, an auto-generated registration certificate will be issued by the trademark registry office within seven days after the 4-month publication period is over. The certificate needs to be renewed every 10 years to keep the trademark valid.

CONCLUSION

To register a trademark and undergo the examination process, there are several important steps that must be followed. It is essential to carefully adhere to all rules and procedures outlined in the relevant act when registering a trademark.