September 10, 2019
5 min read
Read our guide on important concepts relating to Trademark registration, renewal, objection, opposition, Trademark licensing, assignment, etc.
Globalisation and the culture of startup businesses has led to an increase in the value of a business’s name, brand and identity. A business is not only known by its name but also the mark that it uses to represent itself, which must be given essential protection from unauthorised use or infringement by others. This protection is provided to creators/business owners in the form of Trademark, which is one of the types of Intellectual Property. To protect brand owners, the Trade Marks Act, 1999 was enacted that lays down provisions for Trademark registration in India.
Section 2 (zb) of the Trade Marks Act, 1999 defines Trademark as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours”
Additionally, Section 2(m) lays down that a Trademark can be obtained for a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.
Any of the above-mentioned marks can be applied for to get Trademark Registration in India, a process by which, the business enters its mark in the directory of the Trademark Registrar to claim as its own. Trademark registration in India provides Intellectual Property Rights to the owner and allows the business to prevent others from using, manufacturing, distributing, copying or selling the mark without a license.
The process of Trademark registration in India can be complicated as it involves numerous formalities and documents to support the business’s claim. It makes it necessary for the company to consult Trademark lawyers or Trademark consultants in India to know about the forms and fees applicable to file a Trademark registration application.
A Trademark consultant or lawyer can guide the startup about performing a Trademark name search before beginning the registration process and the documents and details required to file an application for trademark registration with the Trademark Registrar. The Trademark consultant can also guide the startup on the right Trademark Class under which the application must be filed.
In addition to this, a Trademark lawyer in India can also assist the business in knowing whether its trademark registration may get rejected under Section 9 of the Act. The provision provides for the marks for which a Trademark registration application may be rejected:
Marks that do not have any distinctive character.
Marks that directly define the kind, quality, intended purpose, values, geographical origin or the time of production of the goods or services they represent.
Marks that are customary in the current language or in the established practices of trade.
Marks that are deceptive or confusing to public.
Marks that hurt religious sentiments of any class of people.
Marks that comprise of anything scandalous or obscene.
Marks which are prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
After the Trademark registration application is filed, it is scrutinised by the Registrar before it is advertised in the Trademarks Journal. During this process, the Registrar checks the mark for any of the above-mentioned features, and if any of these elements are present, the Registrar objects to the mark and sends it back to the applicant. At this stage, the applicant needs to send a Trademark Objection Reply to explain why the trademark must be accepted. This is another stage at which the business requires the guidance of an experienced Trademark consultant to send a reply to the objection against its mark.
The challenges faced by a Trademark registration application does not end at the objection stage. After the mark crosses the objection stage and it published in the Trademarks Journal, the mark is kept open for the public to raise oppositions against the application as to why the mark must not be given Trademark registration. During this 3 months period, the mark may be again challenged, and the business needs to defend the mark in the court to prove why the opposition is not filed on a valid ground. A Trademark lawyer in India can be consulted to understand the complete process and formalities that are involved in a Trademark opposition process.
When a Trademark application is filed with any mistake, error or omission, the business has the option to file a Trademark rectification application with the Registrar to get the wrong information or defect corrected. A trademark advisor can help the business in spotting any mistakes or omissions in the Trademark entry and provide the right approach to get it resolved.
Under the Indian Trademark laws, a Trademark registration is granted for a period of 10 years, after which, it must be renewed, or the Trademark is considered to be abandoned by the owner. When the 10-year period is over, the business is required to file an application for Trademark renewal within six months from the date on which the mark will be expired to extend the validity of the Trademark registration for ten more years.
When a startup wishes to license its brand and expand its business, it can enter into a Trademark License Agreement with the licensee to share its Intellectual Property Rights and allow them to use, sell, produce or advertise the business’s mark. However, the rights under Trademark licensing are shared in a limited capacity and does not transfer the ownership of the mark.
However, when a business wishes to transfer the ownership of a mark to or from another party, it can draft a Trademark Assignment Agreement. Under this agreement, the ownership, as well as all the IPRs associated with it, are transferred from the Trademark owner to the assignee. A Trademark advocate in India can guide the business in drafting and vetting the Trademark licensing or assignment agreements.
SeekWiser connects you with the best Trademark consultants in India and around the world who can provide you with the right approach and guidance for the protection, renewal, or rectification of your business’s Trademark. SeekWiser’s Trademark Lawyers can also guide you on the Trademark registration process in India and the Trademark classes. Call SeekWiser at +91-8010880066 or send us an email at [email protected] to speak with expert for applying for your Trademark.
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