| Intellectual Property is one of the fastest growing legal | | | | supporting documents, if accepted, the Trademark |
| fields in India specially after the signing of GATT. With | | | | Office will issue an acceptance order and the |
| the revolution of information technology, a multitude of | | | | Trademark is ordered for publication. We shall need |
| problems has cropped up that demand immediate legal | | | | additional evidence at the time of examination of the |
| assistance. Agarwal & Co. is involved in all kinds | | | | mark and prior to its publication in the Trade Mark |
| of Intellectual Property Rights matters including Trade | | | | Journal to prove distinctiveness of the mark. |
| Marks, Patents, Copyright and Designs. Agarwal & | | | | Examination generally occurs within 3-4 months of filling |
| Co. provide advice on the creation and protection of | | | | of Trademark application, but the request for the |
| intellectual property rights connected with information | | | | expedite examination of an application can also be |
| technology especially pertaining to telecommunications, | | | | made, which costs 5 times the govt. fee for filling the |
| software etc. Agarwal & Co. advise clients on | | | | Trademark application. |
| issues including: | | | | DOCUMENTS/INFORMATION MAY BE REQUIRED |
| • Interacting with various | | | | TO PROVE DISTINCTIVENESS: |
| government departments on intellectual property | | | | » The extent of advertisement with a few sample |
| matters and for obtaining various permissions | | | | copies of advertising material and brochures; |
| • Agreements for the use, supply, | | | | » The quantum of usage with a few invoices and |
| licensing and maintenance of software and hardware | | | | the last gross annual sale of the goods under the |
| • Registration of Trade Marks | | | | Trade name; |
| • Registration of Copyrights | | | | » The extent of use of the mark in respect of time |
| • Registration of Patents & | | | | and area; |
| Designs | | | | » A brief write-up on the importance attached to the |
| • Licensing of Intellectual Property | | | | trade mark in particular; |
| Rights and agreements | | | | » The class of costumers and their standard of |
| • Infringement and Passing-off | | | | intelligence and education; |
| actions | | | | » The date of commencement of the use of the |
| TRADEMARK APPLICATION PROCESS | | | | mark; |
| Process of filing a Trade Mark Application in India and | | | | » If the trade mark has been registered in several |
| Grant of Trademark Registration Certificate involves | | | | countries and the law of Trademark is similar to that |
| the following steps as shown below herein: | | | | of India, certified copies of the registration of the marks |
| NAME SEARCH: | | | | in such countries may also be provided to us. |
| It is recommended to conduct a Trademark name | | | | OPPOSITION OF MARK: |
| availability search in order to check if any similar | | | | When the Trademark is advertised in the Trademark |
| Trademark has been filed in India, which may oppose | | | | Journal, then third party can oppose the registration of |
| your registration. The cost of the search is generally | | | | the Trademark within the 3 months from the date of |
| quite insignificant in comparison to the costs of | | | | the Trademark journal made available to the public. |
| re-branding if there is difficulty in using the Trademark | | | | IF OPPOSED BY GENERAL PUBLIC |
| because it infringes the right of others. | | | | If the Trademark application is opposed, then the |
| FILING OF APPLICATION BEFORE THE TRADE | | | | Trademark office will request evidence in writing from |
| MARKS OFFICE: | | | | both parties. If the dispute is not settled by the parties, |
| The next step in getting a trademark registration is the | | | | then matter is determined at a hearing. Registration of |
| filing of Trade Mark Application in Form 1, with the logo | | | | an opposed Trademark application will be delayed |
| or word mark (as may be applicable), along with the | | | | pending till the determination of the opposition. |
| applicants' particulars, including his address (incase of a | | | | REGISTRATION: |
| company, the registered address of the company). A | | | | In the absences of opposition, a Trademark is |
| duly notarized Power of attorney, on stamp paper has | | | | registered, and the relative certificate of registration is |
| also to be submitted. | | | | issued for 10 years from the date of filing of an |
| EXAMINATION: | | | | application. It took tentatively 24-30 months from the |
| The Trademark Office will examine the registrability of | | | | date of filling of the Trademark application upto the |
| the application, which includes distinctiveness, existing | | | | final registration of the Trademark. |
| similarity with prior registrations, and completion of | | | | Agarwal & Co. |