Trademark

Trademark Searches

Protecting Your Brand Identity: The Value of Thorough Trademark Searches

In today’s competitive marketplace, establishing a distinct brand identity is paramount. A well-chosen and registrable trademark serves as the cornerstone of this identity, fostering consumer recognition, market differentiation, and ultimately, brand value. However, navigating the intricate world of trademark law can be challenging, particularly when it comes to ensuring the uniqueness and distinctiveness of your chosen mark.

At AGREYA LEGAL, we recognize the critical role of comprehensive trademark searches in mitigating risk and maximizing the likelihood of successful registration. Our team of experienced intellectual property attorneys delves deep into a spectrum of databases, encompassing not only registered trademarks but also pending applications, abandoned marks, and common law uses. This meticulous approach allows us to identify potential conflicts early on, enabling our clients to make informed decisions about their trademark strategy.

Beyond mere clearance, we understand the strategic value of trademark searches. By analyzing the competitive landscape, we can identify emerging trends and anticipate potential objections from the Trademark Registry. This proactive approach empowers us to develop tailored strategies that optimize your chances of securing a robust and enforceable trademark.

We are more than just searchers; we are your trusted advocates. Throughout the registration process, we remain actively engaged, providing expert guidance and tenacious representation. Our goal is to secure for you the unfettered use of your chosen mark, safeguarding your brand investment and propelling your business forward.

Don’t let uncertainty cloud your brand’s future. Contact AGREYA LEGAL today for a confidential consultation and let us navigate the path to successful trademark registration for you.

This revised text adopts a more professional tone by:

• Employing industry-specific terminology such as “spectrum of databases,” “competitive landscape,” and “tailored strategies.”
• Highlighting the strategic value of trademark searches beyond mere clearance.
• Positioning AGREYA LEGAL as trusted advisors and advocates.
• Concluding with a clear call to action.

By incorporating these elements, you can effectively communicate the value proposition of your services to a professional audience seeking expert guidance in the realm of trademark protection.

Trademark Filing

Navigating the Indian Trademark Landscape: Fees, Filing Options, and Expert Support

Securing a trademark in India is a crucial step for any business seeking to establish brand recognition and protect its intellectual property. The process, while crucial, can seem daunting, with its jurisdictional nuances and filing requirements. Worry not, for AGREYA LEGAL is here to guide you through the process seamlessly, ensuring your valuable brand receives the protection it deserves.

Understanding Jurisdiction and Government Fees:

India boasts five dedicated trademark offices, each catering to specific geographical regions. Determining the appropriate office depends on where your business operates or intends to operate. Here’s a quick breakdown:

• New Delhi: Handles applications from North and Central India.
• Mumbai: Covers Western India and Maharashtra.
• Chennai: Oversees South Indian states like Tamil Nadu, Kerala, and Andhra Pradesh.
• Kolkata: Manages trademark filings from Eastern India and the Northeast.
• Ahmedabad: Takes care of applications from Gujarat and Rajasthan.

The good news is that filing fees are standardized across these offices, with variations based on the applicant category:

• Individual: Rs. 4500
• Micro, Small & Medium Enterprises (MSMEs): Rs. 4500
• Start-ups: Rs. 4500
• Other Entities (including Pvt Ltd companies, LLPs, trusts, educational institutions): Rs. 9000

Online or Offline Filing: Your Choice

The Indian Trademark Registry offers both online and offline filing options, each with its advantages:

Online Filing:

• Convenience: File from anywhere with internet access.
• Efficiency: Enjoy faster processing times.
• Transparency: Track application status in real-time.
• Cost-effectiveness: Potentially lower fees.

Offline Filing:

• Personal Touch: Ideal for those seeking individual guidance.
• Flexibility: Easier to submit additional documents or clarifications.
• Comfort: Preferred by those unfamiliar with online platforms.

AGREYA LEGAL: Your Trusted Trademark Partner

With nearly a decade of experience, AGREYA LEGAL is your one-stop solution for all your trademark filing needs. Our team of experts can assist you with:

• Jurisdiction determination: Identifying the right office for your application.
• Application preparation: Drafting a strong and compliant application.
• Filing: Guiding you through the chosen filing method (online or offline).
• Prosecution and status updates: Monitoring your application’s progress and keeping you informed.
• Objection handling: Addressing any concerns raised by the trademark office.

We understand that intellectual property filings are time-sensitive, and at AGREYA LEGAL, we ensure smooth and efficient filing to avoid unnecessary delays and maximize your chances of securing a valuable trademark registration.

Reply to Provisional Objection

After an application is filed and the trademark is applied, the same is examined by the Trademark Registry to check the integrity of the mark. The Trademark Registry, if find no objection while examining the application, further accepts it and advertises it in the trademark journal where a duration of 4 months is provided to the public to file for an opposition. If the trademark application while examining reveals any objection, the Trademark registry further shares the examination report to the applicant and the applicant is required to file a reply to the report providing their arguments as to why the application is distinctive in nature and should be allowed registration.

Under The Trademarks Act, 1999, Objections are usually raised either on Section 9 or Section 11 of the Act.

Section 9 (Absolute grounds for refusal of registration)

(1) The trademarks—

(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;

(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;

(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.

(2) A mark shall not be registered as a trade mark if—

(a) it is of such nature as to deceive the public or cause confusion;

(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;

(c) it comprises or contains scandalous or obscene matter;

(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).

(3) A mark shall not be registered as a trade mark if it consists exclusively of—

(a) the shape of goods which results from the nature of the goods themselves; or

(b) the shape of goods which is necessary to obtain a technical result; or

(c) the shape which gives substantial value to the goods. Explanation—For the purposes of this section, the nature of goods or services in relation to which the trade mark is used or proposed to be used shall not be a ground for refusal of registration.

Section 11 (Relative Grounds for refusal of registration)

 (1) Save as provided in section 12, a trade mark shall not be registered if, because of—

(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or

(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

(2) A trade mark which—

(a) is identical with or similar to an earlier trade mark; and

(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered, if or to the extent, the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.

(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented—

(a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade; or

(b) by virtue of law of copyright.

(4) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration, and in such case the Registrar may register the mark under special circumstances under section 12. Explanation.—For the purposes of this section, earlier trade mark means—

(a) a registered trade mark or convention application referred to in section 154 which has a date of application earlier than that of the trade mark in question, taking account, where appropriate, of the priorities claimed in respect of the trade marks;

(b) a trade mark which, on the date of the application for registration of the trade mark in question, or where appropriate, of the priority claimed in respect of the application, was entitled to protection as a well-known trade mark.

(5) A trade mark shall not be refused registration on the grounds specified in sub-sections (2) and (3), unless objection on any one or more of those grounds is raised in opposition proceedings by the proprietor of the earlier trade mark.

(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including—

(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;

(ii) the duration, extent and geographical area of any use of that trade mark;

(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;

(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;

(v) the record of successful enforcement of the rights in that trade mark; in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.

(7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account—

(i) the number of actual or potential consumers of the goods or services;

(ii) the number of persons involved in the channels of distribution of the goods or services;

(iii) the business circles dealing with the goods or services, to which that trade mark applies.

(8) Where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.

(9) The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely:—

(i) that the trade mark has been used in India;

(ii) that the trade mark has been registered;

(iii) that the application for registration of the trade mark has been filed in India;

(iv) that the trade mark—

(a) is well known in; or

(b) has been registered in; or

(c) in respect of which an application for registration has been filed in, any jurisdiction other than India; or

(v) that the trade mark is well-known to the public at large in India.

(10) While considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall—

(i) protect a well-known trade mark against the identical or similar trade marks;

(ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.

(11) Where a trade mark has been registered in good faith disclosing the material informations to the Registrar or where right to a trade mark has been acquired through use in good faith before the commencement of this Act, then, nothing in this Act shall prejudice the validity of the registration of that trade mark or right to use that trade mark on the ground that such trade mark is identical with or similar to a well-known trade mark.                                        

Reply to provisional objection is to be drafted and filed within 1 month of the examination report being issued, if the applicant fails to submit the reply, the application will be deemed abandoned by the Registrar.

Counter Statements & Notice of Opposition

Counter statements and Notice of Opposition takes place when a third party has opposed the registration of a trademarks after the trademark is advertised in the Trade Marks Journal. As the information is public, anyone can see all the trademarks mentioned in a journal and can file an opposition to a trademark.

The Notice of Opposition is served by the Opponent to the Applicant stating that their trademark is similar and hence the opponent seeks to remove the trademark from the Trademark Register.

Counter Statement is the reply filed by the Applicant to the notice of opposition, here the Applicant is responsible for protecting its trademark.

In the later stage of this, both the parties file evidence to support their claims which further is deduced by the Registrar when the case reaches the hearing stage.

At AGREYA LEGAL, with experienced Trademark attorneys, we form strategies to tackle opposition raised by third party in hampering our clients’ trademarks as well as drafting of notice of opposition to restrict the registration if the mark is similar to our client’s. With securing over _____ Trademarks from opposition and quashing more than _____ trademarks likely to infringe our client’s already registered marks, we assist in various stages throughout this legal battle in protecting your Intellectual property.

Rectification of Trademarks

An Act of removing a trademark from the Trade Marks Register is called Rectification of Trademarks. Rectification can be filed by any third party once the trademark has received registration from the Trademark’s Registry. According to the Act, Section 57 gives the Registrar authority to rectify a trademark and remove it from the records.

Rectification of trademarks can be done on several grounds. To avoid such case, it is important to renew their trademark(s) when the renewal period is in motion. To consistently use the mark and to keep it a distinctive appearing mark for brand recognition.

Our firm plays a vital role to renew applications and assist in how our clients can use their Trademark in such a manner that the mark is continuously being used for a long period of time. It is always a fine choice to license your trademark to someone so as to keep the products and services on going in the marketplace.

Trademark Hearings

Trademark Hearing are conducted by the Registrar of trademarks. Trademark Hearing is the stage that comes post filing of the reply to the examination report of a trademark application. Here the Applicant presents its arguments in front of the Trademark registrar to showcase as to why the trademark should be accepted & advertised in the trademarks journal and the record should be updated in the Trademark Register. The Registrar may imply some conditions or restrictions to the usage of the Trademark as he/she deems fit.

With our experienced attorneys, our firm has successfully kept a standard of 90% acceptance rate of trademarks in the first hearing. Trademark hearing is a crucial step in attaining trademark acceptance as it is important to form strategies and tackle all the objections raised by the registrar of trademarks.

Trademark Infringement

Trademark Infringement takes place when there is an un-authorized usage of a trademark by any third party. Trademark infringement results in disrupting brand image and goodwill of the applicant. As trademarks represents a whole organization it is important to take precautionary steps in making sure that the trademarks are not being used in an un-authorized manner.

Our firm acts as a trademark watchdog to make sure there is not any un-authorized third-party usage of your trademark by anyone else. With resources in place, our firm takes legal action against the infringers and sees to it that the aggrieved party is compensated for the monetary loss.

Intellectual Property is an important asset in the 21^st Century, an asset protected by law. It is vital to make sure that these assets are not being used by third party which will result in disrupting the goodwill and facing monetary damages.