Trademark (Brand) Registration

1. Application Filing

The trademark registration process begins when you submit the application along with the necessary details like the logo, brand name, and class under which you’re seeking protection. The filing date is important because it establishes priority for the trademark.

2. Formality Check

The first step after filing is the formality check by the Trademark Registry. The authorities verify if the application is complete and whether all essential documents, such as the applicant’s details, trademark specimen, and the fee, have been provided.

• Possible Outcomes:
  • Passed: The application moves forward.
  • Failed: If there are errors (e.g., missing documents), the Registry issues a notice to correct the defects.

• Option 1: Passes – The application meets all formal requirements and moves to the examination stage.
• Option 2: Fails – The application is incomplete or has errors. A formality check fail notice is issued, and corrections must be made. If not addressed, the application may be abandoned.

3. Vienna Codification (If Applicable)

For trademarks that include figurative elements, a classification known as Vienna Codification is applied. This categorizes the figurative elements in the logo for easy searching and classification.

• No further action is needed from the applicant at this stage.

4. Examination

The trademark is examined by a Trademark Examiner to check for compliance with the Trademarks Act, 1999. The Examiner considers:

• Whether the mark is distinctive.
• Whether it conflicts with existing trademarks.
• Whether it violates any rules under the Act.
• Possible Outcomes:
  • Accepted: If the trademark is found to comply with the legal requirements, it is accepted and proceeds to publication.
  • Examiner’s Objection: If the examiner raises concerns (similar marks, lack of distinctiveness, etc.), an Examination Report is issued, and the applicant has 30 days to respond. Failure to respond or satisfy the objections can lead to the application being abandoned.

5. Examination Report/Objection

If objections are raised in the Examination Report, the applicant is given an opportunity to respond within 30 days.

• Applicant’s Response: The applicant can either submit a written reply or request a hearing to clarify the objections.
• Possible Outcomes:
  • Accepted: If the objections are successfully cleared, the trademark moves forward.
  • Rejected: If objections are not cleared, the application is rejected.

6. Hearing (if required)

• Option 1: Cleared – If the objections are addressed successfully, the mark proceeds to the next stage.
• Option 2: Rejected – If the applicant fails to clear the objections in the hearing, the application is rejected.

7. Accepted & Advertised in the Trademark Journal

If the application is accepted after examination (either directly or after objections are cleared), the trademark is advertised in the Trademark Journal. This allows the public to see the trademark and raise any objections.

8. Opposition Period

Once the trademark is advertised, a 4-month opposition period begins. During this time, any third party who believes the trademark infringes on their rights can file an opposition.

• Possible Outcomes:
  • No Opposition: If no opposition is filed, the trademark proceeds to registration.
  • Opposition Filed: The applicant and the opposing party enter a legal process to resolve the matter. The trademark is registered only if the opposition is successfully cleared.
    • Steps After Opposition is Received:1. Notice of Opposition
      • A third party (the opponent) files a Notice of Opposition within the 4-month opposition period after the trademark is published in the Trademark Journal. This opposition is usually based on grounds like similarity with an existing mark, lack of distinctiveness, or bad faith registration.

      2. Counter-Statement

      • The trademark applicant must file a Counter-Statement within 2 months of receiving the notice of opposition. The counter-statement is the applicant’s defense, explaining why the trademark should be registered despite the opposition.
      • If the applicant fails to file a counter-statement, the application may be marked as abandoned.

      3. Evidence Submission

      • After the counter-statement is filed:
        • Opponent’s Evidence: The opponent must provide evidence supporting their opposition within 2 months.
        • Applicant’s Evidence: The applicant then submits evidence to defend the application within 2 months.
        • Rebuttal Evidence: The opponent may file additional rebuttal evidence within 1 month, countering the applicant’s defense.

      4. Hearing

      • After all evidence is submitted, the Registrar may call both parties for an oral hearing.
      • Both the opponent and the applicant present their arguments before the Registrar of Trademarks.

      5. Decision

      • After hearing both parties, the Registrar will make a decision to either:
        • Reject the Opposition: The trademark proceeds to registration, and the applicant is granted a Trademark Registration Certificate.
        • Uphold the Opposition: The trademark application is rejected, and the mark will not be registered.

      6. Appeal

      • If either party is dissatisfied with the Registrar’s decision, they can appeal to the Intellectual Property Appellate Board (IPAB) or the High Court.

9. Registration

If there is no opposition or if the opposition is resolved in favor of the applicant, the trademark is registered. A Trademark Registration Certificate is issued, granting the applicant exclusive rights to the mark for 10 years.

10. Abandoned (Specific Cases)

• A trademark application can be marked as abandoned at various stages, including:
  • Failure to respond to an Examination Report or Opposition within the prescribed time.
  • Inaction during a hearing or formal requirements.
  • Failure to renew after registration (though this applies only after the 10-year period).

11. Renewal

After registration, the trademark is valid for 10 years, and the owner can renew it indefinitely for successive 10-year periods.