TRADEMARK 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.
Preliminary Aspects to be considered while applying for a trademark in India
1. 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.
2.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
3. 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.
4. 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;
5. 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
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?
A person who claims to be the proprietor of a trademark can apply for the same in respect to goods/services for which it intends to use. 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.
For more information on Trademark Filing in India please write to us at: email@example.com