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Trademark Prosecution


Trademark is a prerequisite to Brand Building, and the journey from Trade Mark to Brand, and from Brand to Brand Equity is tedious and needs proper blending of resources. A mere advertisement doesn’t help! Therefore, corporates need to be very cautious while going through the journey from Trade Mark to Brand Equity, wherein attributes such as Trade Mark selected to represent certain goods/services, relevance to products they represent, their respective distinctiveness from competing products/services, and promotion and positioning campaigns among numerous other parameters play a crucial role. A trademark is essential for distinguishing yourself from your competition.

Trademark prosecution is a sequence of transactions between a trademark lawyer and authorities from a trademark office in order to complete the prescribed task. Trademark prosecution can be done before or after registering a trademark/service mark, and it can be done both at the domestic and international level. As a result, this is an unavoidable trademark-related process.

Trademarks can usually be rejected on the following two grounds:

  • Relative grounds for rejection include a trademark’s resemblance to a previously registered trademark or product or service, referred to as the possibility of confusion owing to similarity with a prior existing brand name/graphical representation. Trademarks whose use is forbidden by law also result in relative grounds for trademark objection.
  • Absolute grounds of rejection include situations in which the trademark cannot discriminate between products and services or might generate misunderstanding.

Procedure for Registration of Trademarks

The procedure for registration of Trademark in complex with time restraint at every step of it. We at IIPRD help you comply through it with utmost diligence. The procedure is as follows-

  • After choosing a trademark, it is crucial to do a public search of the database accessible through the Trade Marks Registry to make sure the trademark is original and that there are no trademarks that are identical to his or her trademark.
  • In order to submit a trademark application, Form TM-A must be used. Varying on the jurisdiction of the trademark, this form may be submitted directly at the Trade Marks Office or digitally through the official IP India website. While the instant process is being explained wrt the Indian jurisdiction, the broader procedure and principles are aligned for most of the leading jurisdictions such as the US, Canada, EP, China, Japan, and Korea where trademark protection is usually sought.
  • In accordance with the requirements of the Trade Marks Act of 2016, the Examiner must produce a compulsory examination report within 30 days of the trademark application’s submission following a thorough review of the application. Within 30 days of obtaining the examination report, a response must be sent, expressing the reasons and supporting documentation against any objections in order to set them aside.
  • If the Trademark Examiner is not convinced with the reply or if the issues are not answered, he or she may schedule a hearing. After the hearing, the Examiner may approve the mark and submit the application to the journal, or reject it if objections prevail.
  • The trademark is marketed and published in the Trade Marks Journal for 4 months after the registration application is accepted. Publication and advertising encourage the public to challenge the mark’s registration. Trade Marks Journal is updated every Monday on the Registry’s website.
  • Any individual can file a notice to challenge the trademark’s registration after its promotion and publication in the journal. Form TM-O must be filed within 4 months after the mark’s publishing in the Trademark Journal. If the trademark is disputed, the due court process must be observed, which involves filing a counter-statement application, proof, and a hearing.
  • The last stage is registration, which occurs once the application overcomes objections and/or resistance to trademark registration.

If there is no opposition to the trademark’s registration within the 4-month advertising/publication period, an auto-generated registration certificate is given within 1 week. Registration is valid for 10 years, after which it must be renewed.

Importance of Trademark Prosecution

The trademark prosecution stage is essential. Once registered, a trademark becomes a sacrosanct, intangible asset of the firm, protecting the corporation’s investment in the brand. The most significant advantage of having a registered trademark is the ability to protect one’s brand as well as the business. Furthermore, having a strong brand may operate as a direct connection between the consumer and the product by ensuring they are dependable and linked with the company for a long time. As a result, it is strongly urged that every business register their trademark and renew it on a regular basis.

In general, the primary goal of any pre-registration or post-registration trademark prosecution is to persuade the appropriate authority (trademark examiner/registrar) to consent to and carry out the duty requested by the applicant/trademark owner.

For instance, trademark prosecution for registration seeks to persuade the registrar that the submitted trademark/service mark is properly and immediately registrable in the country in question. As a result, trademark prosecution needs recent data, in-depth and strategic understanding of the work at hand, inventiveness and articulateness, as well as necessary practical knowledge and leadership skills.

Obtaining a trademark is nothing short of a launch pad for your company, and you should do it correctly. Our team of skilled and competent intellectual property professionals handles the whole trademark application and prosecution procedure in India. Trademark searching, trademark strategy, trademark registration, and trademark renewal are all part of our extensive menu of trademark management services.

Our Approach

Trade Mark Attorneys at IIPRD have years of expertise dealing with trademark prosecution. Our Trade Mark specialists can assist clients with prosecution methods and build a strong defence. Our experienced attorneys evaluate each trademark application and recommend the best course of action based on the facts of the case.

For over 15 years, our Trademark Attorneys of national and worldwide repute have assisted several entrepreneurs, corporations, firms, and organizations from India and other nations across the world .Our seasoned and dynamic trademark lawyers in India provide prosecution services for local and international trademark prosecutions of Indian citizens and businesses, as well as trademark prosecutions on behalf of global corporations across India. Domestically, trademark prosecutions for various purposes intended by Indian and international businesses are carried out expertly in accordance with the Trade Marks Act, 1999 (including any changes made thereto to date) and the new Trade Marks Rules, 2017.

International trademark prosecutions for Indian corporations are actively involved in various economic fields, on the contrary, are delivered in accordance with the laws and rules outlined in the following international trademark treaties or conventions, which become relevant to our Indian clients based on their business needs and strategies- the WTO TRIPS Agreement; the WIPO Madrid Protocol; the Paris or Berne Convention; and the European Union Trade (EUTM).

We at IIPRD perceive trademark application submission and registration as the beginning of a brand protection strategy. We ensure that your company has a stable foundation and thus, offer strategic advice on trademark registration, including mark selection, approval, and strategic filing.

We have expertise in drafting the finest, most relevant specifications of your company’s products and services, as well as reacting to office actions and examiner reports in order to update applications and overcome objections. We also have expertise in tracking trademark applications and competitors’ filings, and we can advise you on how to keep your exclusive brand identity unique and marketable. Most importantly, our straightforward, practical guidance can assist you in making educated decisions about attaining your targets while efficiently handling your expenditures.

Our Services

IIPRD along with its highly-ranked and leading full service IP, Commercial/Corporate, and Tax/Banking Law Firm, Khurana & Khurana, Advocates and IP Attorneys, has been assisting over 25000 Indian and International Corporates on multifarious Trade Mark Legal and Branding Issues comprising:

  • Formation of Strategy from Trade Mark to Brand Building
  • Analysis of Existing Brand Strategies and their impact on creating Brand Equity
  • Selling, Buying, Franchising, and Licensing Trade Marks for larger networking
  • Providing assistance in Trade Mark Protection, Prosecution and Infringement Watch
  • Providing complete administrative and docketing support
  • Undertaking Trade Mark/Brand Valuation Mandates
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