The workshop session on Trade Marks (Applications and Oppositions): practice and procedures started at 4:45 pm IST on the 31st October, 2020. The meeting was started by the moderator, Manya Jain (the event manager of the IP Press). She first introduced the speaker of the session, Ms. Shumi Wasandi. Ms. Shumi Wasandi is a lawyer and an associate at a leading IPR firm based out of New Delhi. She has an experience of more than three years in managing and handling trademarks prosecution and oppositions- for a distinguished clientele.
Ms. Shumi started the plenary by sharing a power point presentation on Trade Marks (Applications and Oppositions). This presentation contained the following:
- What is a trade mark? Not only the points were displayed in written but also had a number of logos/ trademarks of various companies like yahoo, adidas, BBC, google, IBM, Honda, Toyota, Pepsi and several others to make understanding better.
- A great stress was laid on the word HOPPIPOLA which is the mark of the day. By using the said mark the practical aspects of filing of trademark application and oppositions were demonstrated.
- Steps for obtaining trade mark registration: pre-filling steps, e-filling of the trade marks, examination of application, post filling of the reply, registration, requirements from the applicant, post filling of the trade mark application, reply to the examination report, publication and registration.
- Pre-filling steps of a trade mark: classification of the goods and services; search in the online portal of the Trade Marks registry; common law search.
- Requirements of the applicant: name of the applicant, address of the applicant, mark: word or device, description of goods and/or services, date of use, power of attorney in your favour.
- E-filling of the Trade Marks: steps to register for e-filling with the Trade Marks registry.
- Benefits of e-filling over physical filing: reduction in government fee, comfort of your home/office.
- Filling of the trade mark application: forms, fee, place of filing, requisite documents, affidavit of use.
- Post-filling of the trade mark application: formality check pass (word mark), send to Vienna codification (device mark).
- Examination of application: the Trade Marks registry scrutinises the application as to issue an examination report, whether the application has been filed in the manner as prescribed in the trade marks rules, 2017, whether the Trade Marks applied can be refused, registration under the trade marks act, 1999, whether any restriction proposed in the examination report, in case the application is accepted for registration.
- Reply to the examination report: timeline, filing, government fee, response to section 9 objection, response to section 11 objection, response to any condition imposed in the examination report according to your client.
- Post-filling of the reply: issue of notice of hearing, oral submissions, evidence adduced.
- Registration of the trade mark: registration certificate issued, renewal of the registration.
- Opposition pleadings and procedure:
- Step 1: notice of opposition by the opponent
- Step 2: counter statement by the applicant
- Step 3: evidence by the way of affidavit in support of the opposition under rule 45, Trade Marks rule, 2017
- Step 4: evidence by the way of affidavit in support of the application under rule 46, Trade Marks rule, 2017
- Step 5: evidence in reply by way of affidavit by the opponent under rule 47, Trade Marks rule, 2017
- Step 6: decision in the matter
- Aspirants on which she replied that she has kept a record of the various previous competitions conducted by the IP Press and how the participants of same competitions performed so well and that the legal acumen of the students was very high. The key word is always to work hard and stay healthy a process flow chart to explain the life cycle of trademark registration and opposition
Then a series of questions were asked by the attendees from Ms. Shumi regarding the topic like
- What about the companies which use registered mark of other companies for example slippers with the brand name apple and clothes brand such as Abibas which are fairly deceptive and still they are in the market. Why is it so?
- Are knock offs allowed in India?
- Can we file reply to examination report even if we are not attorneys on record for that applicant?
- What is the scope of doing specialisation as a trade mark advocate?
All these queries were answered one to one satisfactorily by Ms. Shumi.
Ms. Shumi, then shared her experience as to how she landed on being an IPR advocate; how she found IPR the right field to make in a career and that she found IPR so interesting and vast; and called IP laws the moving area of law.
She was then asked by the moderator of the session, Manya Jain about any message if she wants to give to the IP aspirants.
Ms. Shumi Wasandi was flooded with various feedback comments by the attendees like, “very valuable training”, “very useful session”, etc.
The session was ended after the thankyou speech by Manya Jain where she thanked the IP Press for the wonderful opportunity for a number of students, Ms. Shumi Wasandi for taking out time to be the speaker and guide for the session and Airmeet for giving a platform to hold this session without any technical glitches.
The presentation is available here: