Trademark registration is being regulated according to the Trademarks Act of 1999 and the Trademark Rules of 2017. This process confers exclusive rights on applicants for the use of a trademark in connection with particular goods and/or services therein.
Process of Trademark Registration
Submission of Application: The first step for registration of a trademark is to submits a trademark application before the Trade Marks Registry with the help of a trademark lawyer, the application should contains a representation of the trademark and a detailed list of goods and/or services with which it shall be associated.
Formal Examination: The Trade Marks Registry does an initial study of the trademark to see if it complies with the formal requirements. If certain conditions remain, the applicant is notified and may be given an opportunity to respond and rectify.
Substantive Examination: Then a detailed examination is carried out regarding the distinctiveness of the trademark after the formal examination, and any collision with an existing mark is done.
Publication: After the completion of substantive examination with a positive outcome, the trademark is published in the Trademarks Journal giving one-third parties an opportunity to raise objections and concerns of different forms within a specified period.
Registration: If no objections were made during the time specified for opposition, the mark is registered and a registration certificate provided to the applicant. The registration will be valid for 10 years and it is extendable.
Reasons for Rejection of Trademark Applications
In essence, a trademark application may be rejected on any ground: absolute and relative.
Absolute Grounds for Rejection under Section 9 of the Trade Marks Act, 1999
Non-Distinctiveness: Trademark applications are refused because the trademark does not possess any distinctive character.
Descriptive Marks: Trademark applications are refused if it describes the goods and services in question (quality, quantity, or geographical origin).
Customary Signs: Trademark applications are not accepted if they had become commonplace in name or trade practices.
Misleading and Confusive: Trademark applications are rejected if it can mislead or confuse the public generally.
Offensive Marks: Trademark applications that cause religious offense or contain obscene content are not registrable.
Legal Restrictions: Marks restricted under the Emblems and Names (Prevention of Improper Use) Act, 1950 are denied.
Generic Characteristics: Trademarks derived from the inherent characteristics of the goods or services are refused.
Grounds for Denial (Section 11 of the Trademarks Act, 1999)
Similarity to Existing Trademarks: If a trademark resembles an already registered mark, particularly in the same class of goods or services, it can be denied (Section 11(1)).
Conflict with Well-Known Trademarks: Marks that could diminish the distinctiveness of a well-known trademark are rejected (Section 11(2)).
Legal Conflicts: Trademarks that infringe on existing rights under laws such as passing off or copyright may be denied (Section 11(3)).
When and How to File an Appeal for Trademark Denial in India
Filing an appeal is a crucial step in protecting your trademark rights in India, especially after a denial.
Who Can File an Appeal?
Only the party directly affected by the registrar’s decision—namely, the applicant whose trademark application has been denied—can submit an appeal. This must be done within three months of receiving the registrar’s order. If valid reasons are provided, the appellate board may permit an appeal even after this time frame.
Legal Basis for Appeal
According to Section 91 of the Trademarks Act of 1999, the Intellectual Property Appellate Board (IPAB) is the designated authority for handling appeals against trademark decisions.
To file an appeal, quite a number of steps have to be taken:
Before filing the appeal, ensure you get a copy of the decision which prompted the trademark rejection. The following document will assist you to enable you know the grounds for rejection and build strong argument for your appeal.
Write your petition and select such documents that are related to the grounds for your appeal. This should include the registrar’s order, affidavits and counter statements, and where there is, vakalatnama. Make sure you pay the necessary charges. However when filing an appeal on goods or services that fall within one class you should use Form 2 and if the goods or services are in multiple classes then you should file using Form 3. Every annexure and document should be produced in three sets, while Form 2 should be accompanied by a fee of Rs 5000.
After the preparation of the appeal, you should file the same before the IPAB with endorsements and documents and fees where necessary.
Begin by identifying the correct authority for your appeal, which is the Intellectual Property Appellate Board (IPAB). This independent body handles appeals regarding decisions made by the registrar.
When you file the appeal Intellectual Property Appellate Board will schedule a hearing. It is important to attend the hearing in person or via a representative.
After the hearing, the IPAB will render its decision. If the appeal is upheld, the trademark application will be approved. If the appeal rejected by authority applicant may further appeal to the High Court.
By following these steps, you can effectively navigate the appeal process and work towards securing your trademark rights in India.
How LawChef can help you in trademark registration?
Navigating the complex legal landscape of trademark registration requires knowledge, attention to detail, and professional guidance. Consulting a Lawchef ensures that all due diligence is performed, documentation is in place, and your rights are fully protected.
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