Trademark attorney in India

Application for Trademark Registration in India

An application for Trademark Registration in India consists of details of the applicant, list of goods and services for which the mark is to be used, and a clear image of the mark.

An affidavit is also needed if an earlier usage of the mark is to be claimed.

A POA from the applicant accompanies the application.

All these documents need to be in ENGLISH.

To file an application for Trademark Registration in India we require:

1. The name, address, and nationality as well as the type of applicant. Different fee applies if the applicant is an individual, group of individuals, a partnership firm or a company.
2. A list of goods and/or services for which the mark is to be used.
3. The image of the mark in PDF/JPG format.
4. If the mark contains or consists of non-English words, a translation of those words into English is required.
5. If the application is to claim priority then all priority details need to be mentioned.
6. Affidavit mentioning the date of first use of the trademark in India, if an earlier usage is claimed.
7. Power of attorney is to be simply signed by a foreign applicant (no legalization or notarization is required). For Indian applicants, power of attorney is to be executed on 100 Rupees stamp paper.

Do note that:
A claim of earlier usage must be filed along with the application, failure to do so would result in the claim deemed to be fresh.

Trademark registration in India is intellectual property protection over a name, symbol, figure, letter, word, logo, number, phrase, picture, packaging, slogan, or any combination of these.

A Trademark is a distinctive sign capable of distinguishing the goods and services of one business from that of another. The business adopts trademarks not only to identify and distinguish their goods and services from others but also to imply their source of origin as being from that business.

A trademark/logo is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise.

Trademark registration in India is mostly on a first come-first-serve basis. Hence, registering your trademark at the earliest is always considered prudent so that no one can register your trademark and claim use besides you.

Trademark Registration in India provides:

• Prima-facie evidence of ownership of the trademark.
• An important asset for your business or company and contributes to the goodwill generated.
• Gives you stronger enforceable rights to prevent others from using the trademark in connection with the goods or services for which it is registered.
• Trademarks can be sold, licensed, or assigned.
• Registration usually covers the whole of India.

Trademark rights may be acquired for both registered and unregistered trademarks. A trademark does not need to be registered to benefit from the protection and rights afforded under the Act and the common law.

Notwithstanding the foregoing, trademark registration provides several additional benefits over and above those attached to unregistered trademarks, including providing:

1. Exclusivity to the trademark across all of India rather than to the geographical scope of a trademark’s reputation.
2. The basis for filing a trademark in another Convention country.
3. The basis for the ground of opposition against a third party in opposition proceedings to prevent a third-party trade-mark application from proceeding to registration.
4. The basis for a trade-mark infringement action in India.
5. The basis for alerting others of your rights in the context of trademark availability searches, as all trade-mark applications and registrations are entered on the Trademark Registry.
6. The basis for determining rights in a licensing regime; and
7. The basis for the valuation of trademarks.

Registering a trademark has its own advantages of gaining exclusive legal rights on your trademark and accords better protection of your mark. It is the first step in establishing your own brand.

Attorney fee for trademark in India

Official fee for trademark registration in India

Applicant Type	Indian Rupees	US Dollars
Individual/Start-Up Firm	4500	75
Large Firm/Foreign Firm	9000	150

The process of getting your trademark registered begins by filing your application. After applying, the registry will issue us with an official receipt with the filing date and number allotted to the application.

The application is then formally examined by the Indian Trademarks Office, as to its inherent registrability and/or any similarity with existing marks.

If an objection to registration is raised, an official examination report will be issued.

To overcome the objection, it is necessary to file a written response or present evidence of acquired distinctiveness and in most cases, an interview/hearing with the examiner is posted. The Registrar may require the applicant to file a statement of facts testifying to such a user with exhibits showing the mark as used.

On examination, if the trademark application is considered allowable, a Letter of Acceptance (TLA order) will be issued, after which the trademark will be published in the Trademarks Journal.

If there are no oppositions within 4 months from the date of advertisement in the Trademarks Journal, then the trademark registration certificate will be issued.

Trademark Registration is a tedious process, and it takes around 18-24 months to obtain registration in a straightforward case, without any objections or oppositions. However, once the trademark application is filed, an application number is allotted immediately, and the priority starts from the date of application.

Once the trademark is registered, it is valid for a period of 10 years from the date of application. The registration can then be renewed indefinitely if the renewal fees are paid every 10 years.

To file an application for Trademark Registration in India we would require:

1. The name, address, and nationality of the applicant. If the applicant is a partnership firm, the names of all the partners, and if the applicant is a company, then the home country and the state of incorporation is to be mentioned.
2. A list of goods and/or services for which registration is required.
3. The image of the mark in PDF/JPG format.
4. If the mark contains or consists of non-English words, a translation of those words into English is required.
5. If the application is to claim priority from an earlier filed convention application, details of that application are also required (application number, filing date, country, and goods/services). A certified priority document or its duly notarized copy is to be submitted. If the certificate is not in English, then a certified/notarized English translation is also required. If it is not readily available, the application can be filed based on the basic application number, date of the application, and country of the application.
6. A copy of the priority document can be submitted within 1 month from the filing date of the application.
7. Affidavit mentioning the date of first use of the trademark in India, if an earlier usage is claimed.
8. Power of attorney simply signed by the applicant (no legalization or notarization is required). For Indian clients, power of attorney to be executed in 100 Rupees stamp paper and signed by the applicant. The power of attorney is not required at the time of lodging the application and can be submitted later with no additional cost.

Trademarks may be one or a combination of words, letters, and numerals. They may consist of drawings, symbols, three- dimensional signs such as the shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or colors used as distinguishing features.

In addition to trademarks identifying the commercial source of goods or services, several other categories of marks exist. Collective marks are owned by an association whose members use them to identify themselves with a level of quality and other requirements set by the association.

Examples of such associations would be those representing accountants, engineers, or architects.

Certification marks are given for compliance with defined standards but are not confined to any membership. They may be granted to anyone who can certify that the products involved meet certain established standards.

The internationally accepted ‘ISO 9000’ quality standards are an example of such widely recognized certifications.

Trademark registration is territorial in nature. Separate applications need to be filed in each country where you wish to register your trademark.

If you plan to sell and market internationally, it is essential to register your trademarks in those countries. Usually, the party who first registers a mark owns it. Therefore, it is significant to register your trademarks in each country your company considers to be a potential and key market.

A national trademark registration stops at the border and does not afford rights to the owner of the trademark outside the country in which it is registered.

Most companies expanding into other countries often realize the value of registering their trademarks abroad once it is too late, that is, once they are faced with counterfeiters/imitators or once they are accused of infringing the rights of others. The risks of doing so are extremely high and the consequences may be extremely costly and detrimental to a company’s entire business and export strategy. It can be a severe financial liability to invest in a brand, promote it in the local market, then find that the brand cannot be registered and used internationally and must finally abandon that investment.

1. Registering a trademark abroad gives the applicant an exclusive right to commercialize its products in those markets.
2. This not only provides a solid foundation to stop counterfeiters but also ensures that the company enjoys exclusive rights over what may be one of its most valuable business assets.
3. Registering a trademark internationally also provides an opportunity to license the trademark to others or the basis for a company’s franchising or merchandising strategy.

Thus, the benefits of international registration and protection of one’s trademark clearly outweigh the costs of such registration.

The Madrid System for the international registration of trademarks provides one single and cost-effective procedure for the registration of a mark in several countries and territories. India has joined the Madrid Protocol with effect from 8th July 2013.

At present, there are 91 countries which are members of the Madrid protocol as can be seen here:
http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf

To file an international application under the Madrid protocol, there should be a corresponding trademark application filed in India for the same mark in the same classes.

In a single international application under the Madrid protocol, several member countries may be chosen and designated for the protection of that mark. The filing fees will depend based on the number of classes for the mark as well as the countries designated.

The fees can be calculated using the online tool by choosing Office of origin as India, selecting the number of classes, and specifying whether the mark is in color:
http://www.wipo.int/madrid/en/fees/calculator.jsp

In addition to filing fees, a handling fee of Rupees 2,000/- is payable to the Indian Trademark Registry.
Upon applying, the mark is examined by each designated member country where registration is sought and then proceeds to registration.

An international registration under the Madrid Protocol is however dependent on the corresponding Indian application for a period of five years from the date of the international application.

If you wish to obtain registration in a country that is not a member of the Madrid Protocol, a separate national trademark application must be filed directly in the respective country.

Advantages of filing an International Application under the Madrid Protocol are:

1. Lower costs and fees payable as compared to individual foreign filings,
2. Managing renewals, change in address, change in ownership is easier and more cost-effective
3. Additional countries may be designated at a later stage.

A trademark protects the owner of the mark by ensuring an exclusive right to use the mark to identify his goods or services, and/or to authorize another entity to use that mark in return for consideration.

The period of protection usually lasts for ten years, but a trademark can be renewed indefinitely beyond the time limit on payment of renewal fees.

Trademark protection is enforced by the Courts, which has the authority to prevent trademark infringement.

In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit.

Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive marks to market inferior or assorted products or services.

The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade.

Trademark protection means that the trademarked goods/services cannot be commercially made, used, distributed, or sold without the trademark owner’s consent. These trademark rights are usually enforced in a court, which, in most systems, holds the authority to stop trademark infringement.

Conversely, a court can also declare a trademark invalid upon a successful challenge by a third party. A trademark owner has the right to decide who may – or may not – use the trademark.

The trademark owner may permit to, or license, other parties to use the trademark on mutually agreed terms. The owner may also sell the right to someone else, who will then become the new owner of the trademark.

All countries in the world register and protect trademarks. Each national or regional office maintains a Register of Trademarks which contains full application information on all registrations and renewals, facilitating examination, search, and potential opposition by third parties.

The effects of such a registration are, however, limited to the country (or, in the case of a regional registration, countries) concerned.

To avoid the need to register separately with each national or regional office, WIPO administers a system of international registration of marks. This system is governed by two treaties, the Madrid Agreement Concerning the International Registration of Marks, and the Madrid Protocol. A person who has a link (through nationality, domicile, or establishment) with a country party to one or both treaties may be based on registration or application with the trademark office of that country, obtain an international registration affecting some or all the other countries of the Madrid Union. At present, more than 60 countries are party to one or both agreements.

Written by Mahesh Bhagnari, Patent & Trademark Attorney in India.