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What is Trademark Prosecution in India?

prosecutionimgA trademark is a crucial asset for every business and makes its products unique and different from others. Let’s find out what is it and how to register one.

Intellectual Property is a very crucial stake in modern types of business. Intellectual Property, a combination of copyright, trademark, design, geographical location, copyright, integrated circuit, and industrial design, is an essential asset of any company.

Intellectual Property can create healthy competition in the market; as a result, the manufacturer and retailers can successfully develop their products might be more effective.

The trademark is a prerequisite for product branding, and the journey from Trade Mark to Brand and Brand Equity is tedious and requires the proper mixing of resources. Therefore, companies must get extremely careful when transforming from Trade Mark to Brand Equity.

Brands such as Trade Marks are selected to represent specific goods/services, related product relationships, differences in competing products/services, and promotional campaigns and placement, among other set parameters, play a crucial role.

Trademark prosecution is the legal process of registering a trademark of a service or product. A trademark is a distinctive mark representing a company and can take the form of anything from a clear construction to a fragrant one. The process involves filling out several different documents related to the trademark’s strength, type, and branding. Registering this sign offers many legal benefits and rights to the trademark holder.

Trademark prosecution

Each country has different rules and regulations regarding branding, so trademark prosecution varies in some ways from one authority to another.

Usually, however, the prosecution is the first application of a trademark and then a review of an application made by a government inspector trained in trademark law and research. Depending on the number of trademark applications, the trademark registration process may take months or years.

During trademark prosecution, the examiner looks primarily at three factors: power, type, and authorization. The strength of a trademark means that it is different because if the mark is very different, a minor breach of the law may occur. The trademark type does not refer to its physical features but focuses on the trademark-based trademarks and how they resemble other trademark words and slogans.

Having clearance is another step intended to ensure that the trademark is unique or distinct enough from the existing brand to stand alone. The Trademark prosecution process requires a lot of staff because trademarks from different industries and eras must be compared to a new brand to determine its unique characteristics.

Once officially accepted through a trademark prosecution, the trademark holder gets protected from violating the trademark law. If another company uses a trademark, registered or unregistered, similar to the original, it may damage the business, dilute the trademark, or cause consumer confusion.

Trademark owners use a unique mark, such as ®, to emphasize the mark. The trademark only applies to the country in which it is registered and must usually be registered individually in other countries where the company is doing business.

Trademark prosecution in India

After the trademark application gets filed, they are assessed by the examiner to determine if there are any conflicts. The examiner may accept the trademark entirely, conditionally, or oppose the trademark. If the application is accepted unconditionally, the trademark is published in the trademark journal.

In conditional approval or objection, the application is notified accordingly and given one month to satisfy the objection. If such a response is accepted, a trademark is published. If the answer is not accepted, the requester may request a hearing. At the hearing, the examiner, feeling that a trademark must get approved for registration, continues to be published in the Trademark Journal.

Once the application is approved, it gets published in the trademark journal. After publication, the opposition is open for three months. Therefore, any person who thinks that a token lacks one or more of the essential elements required to register a trademark may file a file against the opponents.

This period may be extended by one month, in the registrar’s opinion, provided that the opponent’s files request an extension. The law also provides that opposition to a trademark registration may get lodged by any person with a personal interest.

Step by step procedure for prosecution of trademark

One only needs to follow a few simple steps outlined below to gain the necessary legal protection of a registered trademark in India.

Before applying for a trademark, it is essential to identify the “classes” in which one wishes to seek the protection of the trademark. The application must get made to the appropriate classes of goods/services for which it is intended to be used.

There are 45 Trademark classes, each of which specifies the type of products/services the company wants to offer (Class 1 to Class 34 deals with product specification, and Class 35 to Class 45 deals with the specification of services).

An application for registration may be made in one category or several categories, depending entirely on the goods and services to which the business relates. After identifying the class, one must follow the steps provided for the trademark to be registered appropriately:

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Step 1: Search for a trademark

Many entrepreneurs do not know the real value held by Trademark Search. One needs to understand that having a unique brand name in mind is not a sufficient reason to avoid looking for a trademark. Since there are already thousands of trademarks available in the market, it is crucial to conduct a public search once a trademark gets selected. Search confirms that no existing registered or unregistered mark collides with the selected tag.

It helps to know if there are any similar brands already in existence. Somehow, it gives a person an accurate picture of where a person’s mark stands and sometimes gives an early warning about the possibility of a lawsuit claiming a trademark. So one can save money and time in claiming a trademark by doing a trademark search in advance.

Step 2: Applying for a trademark

Once a person has been confirmed that the brand name they have chosen is not on the Trademarks Registry of India list, one can proceed to the next step, namely applying for a trademark to register. One needs to apply for a trademark with the Trademark Registry of India.

The application for registration is a Form TM-A, which can be submitted online through the official IP India website or in person at any of the five Trademark Office, depending on where the jurisdiction of a trademark is.

An application for registration of a trademark must be supported by several documents with full details of the trademark required.

After applying, a valid receipt will be issued immediately for further reference, and the trademark application request number gets issued within one or two working days.

Step 3: Trademark Application Examination

Upon registration of the trademark application, a compulsory examination report is issued by the Examiner, according to the Trademarks Act, 1999. The Examiner may accept the trademark completely / conditionally or may object.

If a trademark is accepted unconditionally, it gets published in the Trademark Journal. If the trademark is accepted on condition or is contested, those conditions that are expected to get fulfilled or the reasons for those appeals will get stated in the examination report and will have 30 days to complete the requirements or response to the objection.

If such a response is accepted, the Trademark gets published in the Trademark Journal. If the response is not received, the person may request a hearing. If the examiner feels that a trademark should be approved at the hearing, it continues to get published in the Trademark Journal. If any objection gets lodged, he may refuse the said application.

Step 4: Trademark publication

Once the application is approved, the said trademark gets advertised and published in the Trademark Journal for four months. The purpose of advertising and publishing is to invite anyone who opposes a trademark registration to give that person the opportunity to challenge the same. The Trademark journal is available on the official Registry website and is updated every Monday.

Step 5: Opposition from the general public

By posting a publication and advertising a trademark, any aggrieved person may file a notice opposing the registration of a trademark published. The notice of opposition gets filed in Form TM-O within four months of the Mark getting published in the Trademark Journal.

If the trademark used gets disputed, the relevant legal process must be followed, which includes an application to challenge the statement, evidence, and proper hearing for the trademark to be registered, the decision of which will be issued by the Registrar. In that particular condition that there is no objection during this period, the trademark continues to register.

Step 6: Trademark registration

The final step towards the whole process of trademark prosecution is registration, where the application proceeds to the registration after overcoming all objections and objections against the registration indicated by the trademark. If the application is for the registration of trademarks, a Registration Certificate is issued under the Trademark Office, which seal has been issued.

If an objection is absent against trademark registration during these four months, the trademark will automatically issue a Registration Certificate Within a week.

Once the registration gets completed, the trademark is valid for ten years. Perpetually, It can get renewed. Therefore, the registration of a personal product name can get exclusively protected.

As seen from the steps outlined above, the Trademark Prosecution Process does not require much effort. It is a simple process, but it has great importance.

Choose us for your trademark filing and prosecution needs

A trademark, if registered, is an intangible asset of a business that protects a company’s investment in a brand or product. The great advantage of having a registered trademark is protecting the type of brand and business.

In addition, having a strong brand can serve as a direct link between the consumer and the product by ensuring that they are reliable and associated with the business over time. So, all existing entrepreneurs should register their trademark, go for the Trademark prosecution and renew it from time to time.

Hence, it is highly recommended to choose a trademark attorney for this job. You can get this whole process done smoothly and with utmost care under the guidance of a trademark attorney.

An experienced lawyer with knowledge of trademarks law can help you with everything from figuring out if the mark of your business qualifies for trademark protection to registering a trademark under the Trademark Registration Act to representing you in your trademark prosecution case.

A trademark lawyer can provide you with all the assistance and guidance you require to register your trademark. To get in touch with top trademark lawyers in Mumbai, contact us and get the assistance of a skilled lawyer in trademark prosecution.

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