Trademarks Services in Sector 22, Gurugram (2 service providers available)

Trademark Law In India A trademark is a visual symbol which may be a word, signature, name, device, label, numerals or combination of colors, three dimensional image, domain name of website, shape of goods used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking.Trademark Service Advisory Trademark Search & Opinion Trademark Application Filling Drafting of User Affidavit by way of Evidence International Registration under Madrid Agreement Convention Trademark Filing in other countries International Registrations (IR) designating to India Provisional Refusals response and handling Responding to Office Actions Trademark Hearing Renewal & Maintenance Recordal services: assignments, change of name/address Handling rectification of clerical error by TMR Expedited Legal Certificate Drafting Assignment Deed & Licensing Agreement Filing and responding to Oppositions/Rectification Watch service for conflicting marks with recommendation on oppositions Filing Oppositions and Rectifications/Cancellation Handles infringement and passing off proceeding before courts Filling of Application for enlisting in “Well-Known Mark” category Portfolio Management Important Key Points/FAQs About Trademarks What is trademark & type of trademark?If it is a word it should be easy to speak, spell and remember and which are invented words or coined words or unique geometrical designs.Please avoid selection of a geographical name, common personal name or surname. No one can have monopoly right on it. Avoid adopting laudatory/admiring word or words that describe the quality of goods (such as best, perfect, super etc.). It is advisable to conduct a market survey to ascertain if same/similar mark is used in market. Who can apply for a trademark and how?Any person (natural/artificial-legal entity) claiming to be the proprietor of a trademark used or proposed to be used by him, may apply in writing in prescribed manner for registration. The application should contain the trademark, the goods/services, name and address of applicant and agent (if any) with power of attorney, the period of use of the mark. The application should be in English or Hindi. It should be filed at the appropriate office. The applications can be submitted personally at the Front Office Counter of the respective office or can be sent by post. These can also be filed on line through the e-filing gateway available at the official website. Process of Registration of Trademark in IndiaIn India, once someone files online/off line application for registration of a trademark in a particular jurisdiction of his choice, the usual time taken by the Trademarks Registry from filing to registration is between 18-24 months for a straight forward application.The Indian Trade Mark Office securitize all applications with respect to the(a) Filing requirements(b) Absolute Grounds (Under Section 9 of Trademark Act, 1999) or(c) Relative Grounds (Under Section11 of Trademark Act, 1999) over the earlier identical or confusingly similar trademark applications/registrations for the goods or services concerned for refusal.If it is found to be registrable, the examiner will accept the same and forward it for advertisement in the Journal. In case of any objections, the Examiner issues an Examination report and the applicant has to prepare and file a response in 30 days. If the Registrar’s decision is again against the registration of the mark, the Trademark Registry fixes a date of personal hearing. The Applicant is then required to represent his case before the Registrar and satisfy the Registrar regarding acceptability of the proposed mark for registration. In the affirmative, it will be published for the opposition of third parties for 4 months in Official Trademark Journal. Application will be registered within 2-3 months after expiry of period of filing notice of opposition, provided that no opposition is received. Filing Requirement (sent to resident agent for filing of application)1. Name & address of the applicant2. State of incorporation (Individual/Corporate Entity)3. Trade description of the application4. Representation of the mark (word, signature, name, device, label, numerals or combination of colors, three dimensional image, domain name of website, shape of goods )5. Class(es) of goods/services [NICE Classification of Goods & Services from Class 1 to 45]6. Authorization of agent (no legalization or notarization required)7. Date of first use in India [required to file user affidavit of claiming prior usage] or whether the mark is proposed to be used8. In case priority is being claimed, a certified copy of the priority document along with its certified English translation. Well – Known TrademarkThe Trade Marks Rules, 2017 (‘New Rules’) and the public notice dated May 22, 2017 issued by the Trade Marks Registry inter alia provide for a mechanism whereby brand owners can file an application with the Registrar of Trademarks (‘Registrar’) for determination of a trademark as ‘well known’. The key provisions in connection with this mechanism have been briefly summarized below:(i) The application to the Registrar for determination of a trademark as ‘well-known’ will have to be based on, inter alia, the following criteria:a. knowledge or recognition in the relevant section of the public;b. duration, extent, geographical area of use and promotion / advertisement;c. duration and geographical area of any registration of or any application for registration reflecting use orrecognition of the trade mark;d. record of successful enforcement of the rights by any court or the Registrar; ande. number of actual or potential consumers / person involved in the distribution of the goods or services.The application will have to be accompanied by documentary evidence for each fact that is sought to be claimed including evidence as to use of the trademark, including publicity and advertisement, applications for registration made or obtained in India and outside, annual sale turnover based on the trademark etc.(ii) If the Registrar determines that the trademark is well-known and after deciding on the objections received (if any), the Registrar will publish the mark in the Trademark Journal and include it in the list of well-known trademarks. An appeal lies to the Intellectual Property Appellate Board (‘IPAB’) within three months from the date of any decision of the Registrar.The New Rules do not provide for a specific time frame within which the Registrar will determine if the mark is well-known. One of the main advantages of the ‘well known’ mark status in India, if the mark is registered, is the availability of a remedy of dilution under Section 29(4) of the Trade Marks Act, 1999. IRDI Provisional Refusal of Trademark in IndiaEvery international registration designating India received from the International Bureau of WIPO will be examined by the TMR under the provisions of the Trade Marks Act 1999 & Rules made there under. If there is any objection for protection of such registration, a provisional refusal will be notified to the International Bureau of WIPO latest within the period of 18 months from the date the international registration was notified to India. The International Bureau records the provisional refusal in the international register and communicates such provisional refusal to the holder (applicant) of the international registration. The holder may respond to the provisional refusal. The TMR then considers the response of the holder of the international registration and may either confirm the refusal or move for publication of the international registration in the Trade Marks Journal.Receipt of Advice under Section 36E of the Trademark Act, 1999 provides that the Registrar shall on receipt of an advice from the International Bureau about any IRDI (International Registration Designating India) keep a record of the particulars of that international registration in the prescribed manner. Where, the Registrar find that the trademark which is the subject of an international registration designating India, cannot be protected, he shall before the expiry of refusal period as applicable under Article 5 of the Madrid Protocol, shall in the prescribed manner notify to the International Bureau a provisional refusal against trademark protection. The reasons trademark rejections are provided in the provisional refusal examination report. Responding to IRDI Provisional Refusal of TrademarkWhile responding to IRDI provisional refusal of trademark, the applicant will file response to provisional refusal in the same manner to filing reply to office action against a trademark application filed in India. In general, the Attorney draft the reply to provisional refusal, information/documents will be sought from the applicant so that the same can be mentioned in the response to Provisional Refusal.In view of the Trademark Registry advice in respect of Madrid applications, the Registry now requires the address from service in India has to be recorded in respect of trademark application, hence a request is to be filed with the Registry to appear as to Attorney on record in respect of an international application with the Trademark Registry for submitting response to the provisional refusal for an IRDI application. . Deadline for filing the response to Provisional RefusalThe International bureau (WIPO) notifies the agent by email and the date for notification will be considered as date of receipt of provisional refusal by the holder. Therefore, the Reply to provisional refusal is to be filed within 30 days from the date of receipt of the notification.   You could call us on 9654711011 OR on 0124-4075701 write to us or e-mail us on p4legalip@gmail.com for immediate needed assistance, steps, and legal advisory. Prior to fixing up the meeting/ conference, you may call on 09654711011 or on 0124-4075701 or write to us on p4legalip@gmail.com  for necessary fee structure and quote and/or to know about the consultation & professional charges for needed legal representations.