Trade mark registration in India: traps and challenges
Trade mark registration process in India
- Two essential requirements: trade mark must be capable of graphical representation and it must be capable of distinguishing the goods or services of the trade mark holder from those of its competitors.
- No similarity to an already registered trade mark, or to a trade mark for which an application is already pending with the registrar
- Applications are examined in two stages:
- formality check: performed immediately after the filing of the application to ensure that all formal requirements are met (i.e. all the paperwork has been filled in properly and all necessary documents have been presented as part of the application)
- Thereafter, the application is subjected to extensive scrutiny on absolute and relative grounds on basis of which the Examination Report is issued by the Registry. The applicant is required to submit a response to the Examination Report within 1 month of its issuance. If the applicant fails to address objections in the Examination Report, the Examiner schedules a hearing to submit oral arguments in support of the application.
- If the Examiner is satisfied with the response, the mark is published in the Trade Marks Journal for public scrutiny.
- Following this publication, any third party which would like to oppose the mark can file an opposition within four months of the date of publication.
- If no opposition is filed by a third party, the mark the proceeds for registration.
Challenges and improvements in the trade mark registration process
There is still space for improvement when it comes to examination, hearing proceedings and oppositions which lead to procedural delays in registration of trade marks and resulting higher costs for applicants. In 2020, the Trade Mark Registry reported around 450 000 pending applications in various stages of registration. The average time from filing to examination for new registrations is only 40 days, showing notable improvements.
There is close to 200 000 pending oppositions which the Trade Mark Registry will have to deal with in near future. The extent of the problem has been recognised by the Delhi High Court which has ordered the Trade Mark Registry to come up with a strategy to address this backlog of pending applications.
On the brighter side, the online servicing of notice of oppositions and counter statements and filing of evidence in support of opposition/application via e-mail has brought significant efficiency to the entire process. In the instance that the opposition on the mark is not defended by the applicant, the Registry is issuing abandonment orders electronically.
In effect, the Registry has come a long way to make the registration of a trade mark as fast and simple a process, especially with the adoption of online services. However, it has still a long way to go to match pace with the international standard.