Trademark Application Filing in India
In India trademark applications are filed on the basis of statutory provisions and Rules embodied in (a) The Trademark Act, 1999 and (b) Trademark Rules, 2017. In accordance to the Act and Rules a trademark application is to be filed with the Trademark Registry in the prescribed format alongwith the prescribed fees.
Is registration of trademark mandatory or compulsory in India?
No, registration of a Trademark is not mandatory or compulsory in India. However, it is advisable to file for registration of a trademark in order to obtain statutory rights over the trademark. Protecting your trademark by registration gives you the right to initiate infringement actions against misuse of your trademark by infringing parties. Section 29 of the Trade Marks Act, 1999 talks about infringement of trademark in India.
Benefits or advantages of registering a trademark in India
There are many benefits or advantages of registering a trademark in India, to name a few:
Registration grants statutory protection to a trademark.
A registered trademark proprietor has the option to initiate infringement actions by filing a suit for infringement in India.
A registered trademark proprietor can also file recordal of license of his trademark with the Trade Marks Registry.
The proprietor of a registered trademark can use the symbol ® in India in respect of those goods or services for which the mark has been registered. Using the symbol ® unless the mark has been registered in India is unlawful. Using symbol TM with trademark simply means that one claims to be the proprietor of the trademark through mark may not be registered.
Preliminary Aspects to be considered while applying for a trademark in India
1. What are the qualities of a good trademark or a brand name in India? – A good trademark in India should possess the following qualities-
- It should be easy to pronounce, spell and remember.
- It should not be generic or descriptive or common in respect of its goods or services.
- It should be distinctive and should not have deceptive similarity.
- It should not be copied / identical to any other existing trademark.
- It should not be similar to any other existing trademark.
- It should not be deceptively or confusingly to any other existing trademark.
- Laudatory word or words such as best, perfect etc. to be avoided.
- It should not be obscene, derogatory or hurt religious sentiments.
- The mark should be a coined word.
- It should not be prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
If the mark is in any language other than English or Hindi, then the same should be filed with the appropriate translation and transliteration.
2. Who can file a trademark in India? Any person or an entity which claims to be proprietor of a trademark can file a trademark application in respect of desired specification of goods or services. A mark filed for service is also referred to as a service mark i.e. a service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.
A trademark application can also be filed in India through a trademark agent. A trademark agent is an individual or lawyer or firm registered with the Indian Trade Marks Registry. Such Agents can file a trademark application on behalf of the applicant or proprietor of a brand.
Whether foreign proprietors or applicants apply for registration of trademark in India?
Yes, foreign proprietors or applicants can apply for registration of trademark in India. The Indian trademark Law is TRIPS obedient and provides for protection of well-known trademarks and recognizes trans-border reputation.
In order to file an application in India in the name of a foreign entity who does not have a principal place of business in India, an application can be filed through an Indian Trademark agent / attorney. In such case the jurisdiction of a trademark application is automatically selected from the address of the agent.
What type of mark can be filed or registered as a trademark in India?
Under the Indian Trademarks Act,1999 the following types or trademarks can be field or registered in India:
- Word Marks (including Invented or Coined Words)
- Letters
- Slogans
- Signature
- Numerals
- Devices
- Combination of colors
- Shape of goods
- Sound Marks
- 3D marks
3.Trademark Search and selection of a distinctive mark : Prior to filing an application, it is very necessary to select a good trademark i.e. a mark which would not attract objections in future. Preliminary Trademark Search will determine similar or deceptively similar marks already in the Trademark Register. Additionally, while selecting a trademark it must be taken into consideration that the mark does not:
- Deceive the public or cause confusion;
- Hurt the religious susceptibilities of any class or section of the citizens of India;
- Comprise of any scandalous or obscene matter;
- Attract objections under the Emblems and Names (Prevention of Improper Use) Act, 1950;
- Have any negative connotation in India; If the proposed trademark is a foreign word, then it must be translated into English to ascertain its distinctiveness i.e. its translation in English shall not render a descriptive meaning
4. Jurisdiction for filing application
While applying for the Trademark, a proprietor has to file the mark in the appropriate Registry depending on the jurisdiction. In case of Indian Applicants, the appropriate office will be the place under whose jurisdiction the Applicant’s principal place of business falls. In case of Foreign Applicant’s appropriate office will be the place within whose jurisdiction the Applicant’s agent/attorney is based.
Can trademark application filed in one Trademark Office in India be transferred to another?
No, the jurisdiction of a trademark application in India is not transferrable. Once an application is filed with the Indian Trade Marks Registry, the jurisdiction as allotted as per the principal place of business of the applicant / agent would remain the jurisdiction for the lifetime of a trademark application.
5. Particulars to be mentioned while filing an application
• Name, address and nationality of the proprietor;
• Party Type i.e. proprietorship, partnership, individual, HUF, body incorporated;
• Trademark to be applied for i.e. wordmark, device mark, label, composite mark etc.
• Language of the mark;
• Translation or Transliteration of the trademark (if any);
• Class of goods or services in respect of which the trademark is to be filed;
• Specification of goods or services in respect of which the trademark is to be filed;
• User detail of the trademark i.e. Proposed to be used or used since date;
• State of Jurisdiction of the trademark/ appropriate office;
• Address of service details;
• Condition or Disclaimer with the mark (if any);
• Associated trademark (if any);
• In case the application is a priority/ conventional application then priority details of the trademark;
6. Documents to be filed
- Power of Attorney – Power of Attorney is required to be submitted at the time of e-filing of the application.
- In case of Priority Application – certified copy of the priority application as filed in the convention country.
- If use is to be claimed – Affidavit of use is required to be filed at the time of e-filing the application
7. Use of Trademark before filing an application for registration
If use of a mark is to be claimed, a statement of use in the form of an affidavit is required to be filed at the time of e-filing a trademark in India along with documentary evidence in support of such use.
As per the Rule 25 of the Trade Marks Rules 2017 in case, the use of the trademark is claimed prior to the date of application, the applicant shall file an affidavit testifying to such use along with supporting documents.
Is it mandatory or compulsory to use the trademark before filing a trademark application in India?
No, it is not mandatory or compulsory to use a trademark before filing an application for registration of the trademark in India.
It can be filed at any point in time i.e. before commercial use of the trademark as well as after use of the mark the trademark. If the application is being filed after use, then the date of first commercial use of the mark can be claimed in the application at the time of filing
Comprehensive e-filing of Trademark:
The Indian Trademark Registry has introduced the service of comprehensive e-filing of trademarks, which enable online filing of trademarks and facilitates the entry of aforesaid particulars along with the uploading of requisite documents online. The portal of comprehensive e-filing of trademarks can be accessed at http://ipindiaonline.gov.in/trademarkefiling/user/frmlogin.aspx .
With the objective to encourage online filing of Trademarks, a 10% discount on official fees has been provided for to applicants who choose to file the applications or forms online. This step is also a discernable move by the Government to ensure that it fulfills the promise of the Digital India Campaign and Government services are made less cumbersome for citizens by making available to citizens an improved online infrastructure and thereby making the country digitally empowered in the field of technology.
Who can apply for a Trademark Registration?
An application for registration of a trademark in India may be filed by any person claiming to be the proprietor or owner of a mark for those goods and services for which he is using or intends to use the mark. Such persons includes:-
- Limited or Private Limited Company
- Partnership Firms
- Sole Proprietor
- Individual
- Joint Individuals or Companies
- Trust
- Other Legal Entities
At the time of filing the application the proprietor must either be using the mark or have an intention to use the mark in the future.
It should be filed at the appropriate trademark office under whose jurisdiction the principal place of the business of the applicant in India falls. In case, the applicant is doing business outside India, then the application can be filed at the trademark office under whose jurisdiction the office of the agent is situated.
After filing the application, the same is then examined by the Registry, as to its inherent registrability and/or any similarity with existing marks. If any objection is raised, an official examination report is issued by Registry. To overcome the objection, a response to examination report along with the supporting documents showing the marks as used is required to be filed within one month from the receipt of the examination report.
If, following examination, the trademark application is considered allowable, acceptance order is issued, and thereafter the trademark is published in the trademarks Journal. If there are no oppositions filed within 4 months from the date of advertisement in the Trade Marks Journal, then the trademark registration certificate is issued.
It takes around 12-15 months to obtain registration in case no opposition is filed by a third party.
Duration of Registration
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 for a further period of ten years from the date of expiration of registration or of the last renewal of the registration.
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