A registered trademark under the Trade Marks Act, 1999 gives the owner the exclusive right to use the mark for the registered goods or services, and a statutory right to sue for infringement.
The stages
- Search. Search the Trade Marks Registry for identical or similar marks in the relevant classes. A good search prevents most objections and oppositions.
- Application. File Form TM-A online, choosing the correct class (there are 45 classes) and describing the goods or services accurately. The ™ symbol may be used from filing.
- Examination. The Registry examines the application and may raise objections on absolute grounds (Section 9, for example descriptiveness) or relative grounds (Section 11, conflict with earlier marks). A reply is generally due within 30 days.
- Hearing. If the reply is not accepted, a show-cause hearing is held.
- Publication. The accepted mark is advertised in the Trade Marks Journal.
- Opposition. Any person may oppose within four months of advertisement (Section 21). The applicant must file a counter-statement.
- Registration. If there is no opposition, or it fails, the mark is registered and the ® symbol may be used.
Validity and renewal
Registration is valid for 10 years and can be renewed every 10 years indefinitely.
Choosing a strong mark
- Invented or arbitrary words are the strongest marks. Descriptive words are the weakest.
- Avoid geographical names and common surnames used alone.
- Check domain names and social media handles at the same time.
This article is general information and is not legal advice. Facts matter, so please consult an advocate about your situation.