Trade Marks

01

Trademarks

“Properly used and promoted, a Trademark, if properly used and promoted, may become the most valuable asset of a business.”

  • A Trademark generally refers to a “brand” or “logo”.
  • Trademark registration can also be obtained for a business name, distinctive catch phrases, taglines or captions.

02

Trade Mark Search

It is advisable to conduct a pre-registration search at the Trade Mark Registry to find out about the preexistence of deceptively similar and confusing marks. The search is conducted so that the Applicant is aware of the probable objections or oppositions that may be initiated against the prospective trademark.

03

Trade mark filing

Trade Mark Filing:
An application is to be filed under the Trademarks Act and the Trademarks Rules. The following documents are required for the filing of an Application:

  • Application for Registration- Full description of the Applicants to be provided.
  • User detail – The user date should denote the month and date of first use in India. Conversely it can be on “proposed to be used” basis.
  • Priority Claim – Priority claim in relation to foreign applications is to be filed within 6 months from the date of filing of the trade mark in the parent country.
  • Additional Representations- Refers to the document which contains further information about the Applicant.
  • Power of Attorney- To be filed along with the application duly executed by the Applicant in favour of the trademark attorney.

04

Trade Mark Prosecution

Examination Report and reply to Examination Report:
Upon Application, the Registrar shall cause the application to be examined and shall issue an Examination Report to the Applicant stating his objections, if any; and, the reply must be submitted within a month from the date of issuing of the Examination Report.

Advertisement in Trade Mark Journal:
As and when the objections are waived after receiving the reply followed by hearing, the application will be accepted for advertisement in the Trademarks Journal.

05

Trade Mark Opposition

  • Opponent can file Notice of Opposition within 4 months from the date of advertisement or re- advertisement of the Trade mark in the Trade mark journal.
  • Applicant should file a Counter Statement within 2 months from the date the Notice of Opposition is served.
  • Opponent on receiving the Counter Statement ought to file Evidence in support of Opposition under Rule 50 of the Trade Mark Rules, 2002 within 2 months from the date of receiving the Counter Statement.
  • Applicant must file Evidence in Support of Application under Rule 51 of the Trade Mark Rules, 2002 within 2 months from the date the Evidence in Support of Opposition is served.
  • Opponent gets the opportunity of filing Evidence in Reply under Rule 52 of the Trade Mark Rules, 2002 within 2 months from the date Evidence in Support of Application is served.
  • The matter is posted for hearing and the decision can either lead to registration for a period of 10 years or the opposition may be allowed and the application for registration is refused.

06

Trade Mark Infringement

If you don’t protect your marks against infringement, who will? Trademark infringement on the Internet is a serious problem. Sometimes, it takes more than an infringement threat letter to stop third parties from infringing your mark.

The normal remedy for a trademark infringement claim is an injunction barring the other company from using the trademark. In some cases such as reverse confusion, the infringing company may seek a financial settlement with the trademark owner because it fears an injunction.

We assist you as our lawyers represent plaintiffs and defendants in high stakes trademark infringement claims.

07

Assignment and Transmission

Trademarks like any asset can be transferred from one owner to another. The transfers could be temporary through licensing or permanent through an assignment. Assignment of a trademarks is a process in which the owner of the trademark transfers the ownership of the mark either with or without the goodwill of the business. In other words, it is transferring of proprietary rights in the property of the proprietor.

The manner in which an assignment can be made are as follows:

  • Complete Assignment to another company
  • Assignment with goodwill
  • Assignment without goodwill
  • 08

    Renewal of Trade Marks

    Trade Mark can be renewed in every 10 years. Renewal application can be filed 6 months prior to the due date of the next renewal date.