Trademark Prosecution

Suppose person ‘A’ develops a company through hard work and dedication and creates a name for himself in the market. He is engaged in selling products under a trademark adopted by him which soon became very popular among the general public. Now, if another person begins to sell the same or similar products under an identical or deceptively similar trademark without the prior consent of person ‘A’, then it would be harmful to the interest of person ‘A’ and his hard-earned goodwill under the business for the concerned trademark. 

To protect ‘A’ from such types of unwanted situations, it becomes important to acquire registration for the trademark. Trademark registration allows the proprietor to keep the right foot forward when it comes to legal battles. The trademark registration allows the person to provide documentary evidence to strengthen their case. 

Registration of trademarks has now become the backbone of Businesses and companies around the world and is regulated by various statutes. The entire process of getting the trademark registered and all the steps involved in acquiring the registration can be collectively called trademark prosecution. Trademark prosecution is regulated by the Trade Marks Act, 1999 and Trade Marks Rules, 2017. 

Trademark prosecution generally involves the following steps: -

• Trademark Search-It is very important for individuals and companies to understand the fact that before filing for trademark registration, a thorough trademark search is the most important to find out whether the trademark chosen already exists, identically or deceptively similar and if the same is registered or removed from the Register due to different reasons. If this happens then it would amount to a loss of time and money for the person as his trademark would eventually be rejected by the Trade Marks Registry.
• Filing the trademark- Once the proprietor of the trademark is thorough with the above step then he can begin with the second step of trademark filing which can be done both online or offline in any of the five offices of Trade Mark in India. The filing is to be made in Form TM-A and should be supported by required documents giving complete details about the particulars of the trademark and the proprietary concern. Once this is done, an official receipt with the allotment number is given to the trademark applicant within 1-2 working days.
• Formality Check: After filing an application, it goes through the Formality Check stage. At this stage, the Trademark Office verifies that all the data submitted in the application is accurate, including the Applicant’s information, the class of goods/services for which the trademark is applied, and the trademark itself. It is an essential stage before the application can proceed to the next stage of Examination. If all the details are correctly put under the trademark application, then the application is treated as ‘Formalities Chk Pass’, however, if any discrepancies are found then it is treated as ‘Formalities Chk Fail’. Upon failure of the Formalities Check, the Applicant is required to provide a response and fulfill all the requirements for the application to move to the next stage.
• Examination of Trademark Application- The Trademark Application further proceeds towards the stage of examination. At this stage, the examiner checks whether the trademark filed is in accordance with the Trade Marks Act, 1999. After examination either the trademark is accepted and advertised in the Trade Marks Journal or advertised in the Journal before acceptance or is objected. If the application is objected then a Reply to the Examination Report must be filed within one month from the date of the Examination Report. Based on the Reply, the application is either ‘accepted and advertised’ or ‘accepted with some conditions’ or ‘refused’ or ‘adjourned’.
• Publication And Opposition Of Trademark- Once the trademark is published in the Trade Marks Journal, the application is open to the general public to oppose its registration upon being aggrieved by its existence. A Notice of Opposition to the application must be filed within four months of its publication in the Journal. An Opposition proceeding includes filing of opposition notice by the Opponent, countering the notice by the Applicant, and submitting of Affidavit as Evidence by both parties respectively. The Learned Registrar then passes an order based on the facts and provisions of the Trade Marks Act, 1999.
• Registration- During the period of four months after the publication of the trademark application, if no opposition notice is being filed by any individual/company then the trademark application proceeds further towards the Registration. The Trademark Application upon being registered is granted a Certificate of Registration, and the trademark application is treated as Registered from the date of its application.
• Rectification of Application- If a trademark is registered but an individual/company comes forth with the claim of using it earlier than the registered trademark owner, then the aggrieved party can file a Rectification Application either to remove/rectify/amend the trademark application. This stage prevents people from taking undue advantage of well-established businesses under unregistered trademarks/ brands.

• Trademark Prosecution is a comprehensive process that requires utmost care and proper knowledge of facts and laws, hence, consulting a Trademark Attorney is highly recommended for smooth and speedy trademark registration.