Trademark registration in India

What is Trademark Registration in India?

Trademark registration in India is intellectual property protection over a name, symbol, figure, letter, word, logo, number, phrase, picture, packaging, slogan, devices, shape, configurations, patterns, ornamentation, color combinations, containers for goods, or any combination of these.

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 its use besides you.

Trademark in India

A Trademark in India is a distinctive sign capable of distinguishing the goods and services of one business from that of another.

A trademark/logo is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or an enterprise. The function of a trade mark is to distinguish the goods and/or services of one source from the goods and/or services of another source in the same sector.

A 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.

Requirements for filing an application for Trademark Registration in India

• 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.
• A list of goods and/or services for which the mark is to be used.
• The image of the mark in PDF/JPG format.
• If the mark contains or consists of non-English words, a translation of those words into English is required.
• Details of an earlier filed application in foreign country if priority is to be claimed.
• Affidavit mentioning the date of first use of the trademark in India, if an earlier usage is claimed.
• Power of attorney form signed by the applicant.

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.

Advantages of obtaining trademark registration in India

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.

And more benefits of registration are

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

• Exclusivity to the trademark across all of India rather than to the geographical scope of a trademark’s reputation.
• The basis for filing a trademark in another Convention country.
• 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.
• The basis for a trade-mark infringement action in India.
• 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.
• The basis for determining rights in a licensing regime; and
• 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.

Absolute and relative grounds for refusal of a Trademark registration in India

• The refusal is often under Section 9(1) (a) of the Trade Marks Act 1999, if the mark is descriptive or non-distinctive as such that it is not capable of distinguishing the goods and services of one business from others, or is something that indicates kind, quality, quantity, intended purpose, values, geographical origin of the product.
• The refusal is also often under Section 11 (1) of the Trade Marks Act, 1999, if the mark is identical with or similar to earlier marks in respect of identical or similar goods and services, and due to this there exists a likelihood of confusion on the part of the public.

Why should I get a trademark registration in India?

Filing a trademark in India can offer several benefits for individuals and businesses, including:

1. Legal protection: Filing a trademark in India can provide legal protection for your brand name, logo, or other distinctive signs, preventing others from using identical or similar marks in relation to similar goods or services. This can help you safeguard your brand identity and reputation, and prevent others from exploiting your brand.
2. Access to a large market: India is a large and rapidly developing market, with a population of over 1.3 billion people. By filing a trademark in India, you can gain access to this market and potentially secure a competitive advantage over others who have not filed trademarks in India.
3. International recognition: Filing a trademark in India can provide international recognition for your brand, as India is a signatory to several international treaties and agreements related to trademark protection. This can help you protect your brand not only in India but also in other countries around the world.
4. Brand value: Filing a trademark in India can help enhance the value of your brand and increase its commercial appeal, making it easier to attract customers, investors, and partners.
5. Government support: The Indian government has implemented several initiatives and programs to promote innovation and entrepreneurship, including support for trademark filing and prosecution. This can help you access funding, resources, and expertise to further develop and commercialize your brand.

Overall, filing a trademark in India can provide significant benefits for individuals and businesses looking to protect their brand identity and reputation, and gain a competitive edge in the global marketplace.

Why is a trademark registration in India important?

A trademark registration in India 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 registration in India is a protection capable of being enforced by the Courts, which have the authority to prevent a trademark infringement.

In a larger sense, trademark registration in India promote initiative and enterprise 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 trademark registration system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating trade.

Without a registration, the person claiming rights in a trade mark will have to rely on the common law remedy of passing off to defend its rights. The prospects of success in such a claim will depend on the extent to which the person can prove that the mark has acquired a reputation in relation to specific goods/services. In the case of a new business or product, reputation may be minimal and the mark may therefore be difficult to protect.

How to get a Trademark Registration in India?

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.

What kinds of trademarks can be registered in India?

The possibilities are almost limitless. 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.

Can you get an International Trademark Registration?

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.

• Registering a trademark abroad gives the applicant an exclusive right to commercialize its products in those markets.
• 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.
• 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.

What is an International Application under Madrid Protocol?

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:

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

What kind of protection does a Trademark Registration in India offer?

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.

Attorney fee for trademark in India

Fee for Indian applicants in Rupees

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

Action based attorney fee for a Trademark Registration in India

Particulars	US Dollars
Consultation charges per hour or part thereof	100
Search of Trademark Database	30
Attorney fee for filing an application for Trademark	200
Filing a response to an office action	100
Amendment of application due to objections	100
Attending to serious objections at the Trademark office/hearing	200
Alternatively – Fixed one time ATTORNEY fee for filing & prosecution of application till registration	400

The above fee would be applicable for an application which does not face a third party opposition. Opposition proceedings are uncertain in degree and complexity, so a fee for these can not be predicted.

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