How a trademark is searched, filed and protected, and what to do when a mark is opposed or copied. General legal information only.
The usual steps
- Search: check the Registry’s records for identical or similar marks in your class.
- Filing: apply in the class or classes covering your goods or services, stating the date of first use if the mark is already in use.
- Examination: the Registry may raise objections, which need a reply within the prescribed period.
- Publication and opposition: an accepted mark is advertised in the Trade Marks Journal, and a third party may oppose within the prescribed period.
- Registration and renewal: registration is valid for ten years and can be renewed for further ten-year periods.
Common problems
- An earlier similar mark in the same class
- A descriptive or generic name that is hard to register
- Using a brand for years without registration, which leaves only passing-off remedies
- Receiving a notice alleging infringement
Registered and unregistered marks
Registration gives statutory rights and makes enforcement simpler. An unregistered mark may be protected through an action for passing off, but this is generally harder to prove.
Related
See the IP and trademark practice page. The Registry has published a revised draft Manual for comment, which is not yet the operative practice.
How can Wise & Partners help?
The firm advises on search, filing, replies, oppositions, renewals and infringement notices. No outcome can be promised.
Important disclaimer: This article is general legal information, not legal advice. It does not create a lawyer-client relationship and is not an advertisement or solicitation under Bar Council of India rules. Verify current statutes, rules and judgments before relying on it.
