Trademark Filing in India – Trademark Registration Process

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Advantage of Trademark Filing

Trademark Process in India

Trademark registration procedure in India includes filing of TM-A form and user affidavit. Trademark office completes the process in six to eight months.

Trademark laws and regulations in India are a combination of domestic laws and international treaties, including Madrid Protocol and Agreement. Brand owners can register their trademarks in India by filing trademark applications after conducting brand clearance searches in the relevant classes of goods and services. International brand owners can also obtain trademark protection in India by using international treaty governed by WIPO under Madrid Protocol.

 

trademark lawyer in India for madrid filings

 

 

 

Trademark Searching

 

Conducting a trademark search is important to know if the mark is already in use by a third party. The mark which you wish to protect may already have been registered or the rights to use that mark may already have been assigned. Furthermore, if the search results reveal that the mark is already registered, the investment in trademark search would save various costs, including the trademark filing fees. The search conducted by our team is an exact match search for the mark or logo in the particular class of goods.

 

Trademark Filing

 

On behalf of our clients, we prepare and file trademark applications in India. With our established network of trademark attorneys across the world, we assist our clients in international registration of their marks in multiple jurisdictions.

 

 

Trademark Prosecution

 

Trademark prosecution in India includes filing a trademark application with the Indian Trademark Office (“IPO”) and arguing against any Examination Report (Office Action) received from the Registrar of Trademarks. The trademark prosecution process begins when an application for a trademark registration is filed either claiming prior usage (to be filed with affidavit of use with evidence), or, a proposed to be used trademark application.

We believe registering a trademark serves as a launch pad for a business. Our team provides all prosecution services necessary for registration of a mark, including filing applications, responding to office actions, recording assignments and maintaining registration. Our team prepares and analyses Trademark Licensing Documentation considering the quality control needs of our clients.

 

Trademark Law Case Study

 

It is well known that the acronym “WWF” was coined in 1980 when Vince MacMohan Jr. established the company Titan Sports. Since then, WWF, or “World Wrestling Federation” became a leading brand name in the field of wrestling worldwide.

 

international trademark filing in india

 

In 2001, WWF officially got rebranded as WWE, or “World Wrestling Entertainment”, primarily due to legal reasons. The legal battle was fought between WWF (World Wide Fund) and WWF (World Wrestling Federation), and a London court ruled against the wrestling brand. Even after challenging the ruling, wrestling body could not succeed and subsequently, WWF was rebranded as WWE.

 

As a PR move, WWE even used “Get The ‘F’ Out” as marketing slogan.

 

This case study highlights the importance of trademark laws for business growth and appropriate steps must be taken by the brand owners to protect their brand, without infringing upon third party rights. Henceforth, trademark due diligence is extremely crucial for brand owners.

 

Trademark Due Diligence

 

Our team of specialized trademark attorneys is capable of performing extensive Due Diligence for the purposes of Trademark Litigation in various jurisdictions, or for the purposes of Mergers and Acquisitions, and the like.

Get Trademark Registered in India by hiring professional trademark lawyer in India. Currently, pendency in trademark examination of brand application filed for the registration of a trademark has been brought to less than a month. Trademark filed in late December, 2016 and trademark application filed in January 2017 are already in process of trademark examination. Recently, our client’s trademark has been Advertised before Acceptance in less than 3 weeks from trademark filing date.

 

So, by following the ten step process get Trademark Registered in India in 30 days.

 

  1. Coin a brand name for trademark registration
  2. Select the appropriate Trademark class for your brand
  3. Avoid filing multi class trademark application in class 99
  4. Conduct a trademark search online at Indian Trademark website
  5. Expedite the digitation process by filing online trademark
  6. Get digital signature for signing online trademark forms
  7. Get proprietor code for filing trademark in India
  8. File TM-A Form for Trademark Registration in India
  9. Attach Stamped Power of Attorney (POA) while filing the trademark in India
  10. Wait for formal response from trademark office and reply trademark objection within one month of receiving the formal response

Trademark Applications in India

According to trademark notice issued by Trade Marks Registry in India, it has identified many trademark applications filed before December 2016 failed at 1st stage of formality check pass. Therefore, those trademark applications have not been examined in India due to compliance issues.

 

The list of filed Trademark applications has been published as follows:

  • Annexure I: Incomplete digitization of the filed Trademark
  • Annexure II: Trademark applications failed in formality check during examination and have been pending for compliance with the office direction.

The Trade Marks Registry in India has directed the trademark attorneys and brand agents to comply with the pending issues for the trademark applications that have failed in Formality check. As a trademark owner you should check if your brand is in this list. Refer the details of trademark filing deficiency and requirement raised by the trademark office. The trademark applicants should email at pendingexam.tmr@nic.in, with brief details of such brand applications to remove existing objection and comply with the same.

 

Example of Trademark Compliance  

While taking up the above application for examination under the provisions of Trade Mark Act, 1999 and Trade Marks Rules 2002, it is observed that trademark application could not proceed to examination because of the following reason/s:
* Power of Attorney (TM-48) is not found enclosed along with the trademark application.
* You are required to provide TM-48 with necessary stamp duty..

Therefore, trademark applicants and their trademark agents should include the following details while mailing at pendingexam.tmr@nic.in and and send the hard copy to the concerned office of Trade Marks Registry:

  • Full and complete Reference Letter No. and date,
  • Trademark application number and the class to which it relates.

Advocate Rahul Dev is a Patent Attorney and International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter

 

Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech)

 

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management

 

Working closely with patent attorneys along with international law firmswith significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filingspatent services in India and global patent consulting services.

 

We represent our clients as leading patent lawyer in Gurgaon and patent attorney in Gurgaon for providing various patent services in India.

 

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