India offers multiple paths to trademark protection, each of which requires a tailored strategy. Brand owners need to cover all their bases by preparing the proper documentation, whether they are seeking protection via the Madrid protocol or the local route.
Trademark registration – India
An online search of the database of the Office of the Controller General of Patents, Designs and Trademarks can be conducted on its official website at www.ipindia.nic.in. No official fee is charged for the search.
An application must be filed in the prescribed form with the applicable statutory fee. The application must be made in triplicate, along with two representation sheets, and addressed to the appropriate office. On submitting the form and fees, a unique number is allotted to each application, which is indicated on the payment receipt. An online application for registration of the trademark can also be filed through the official online portal of the Indian Trademark Office.
It is advisable to file all necessary documents (eg, a power of attorney or a certified copy or English translation of the priority application) along with the application. The applicant will otherwise receive an objection due to lack of documentation. A duly stamped representation sheet will be issued within approximately one month of application.
On examining an application, if the examiner has any objections to registration of the trademark, they will be communicated to the applicant in an office letter (ie, an examination report). The applicant must submit a written reply to the objections within one month of receiving the examination report. If the examiner is satisfied with the response and amendments made to the application, he or she will order publication of the application in the Official Trademarks Journal.
If the examiner is dissatisfied with the response, a hearing will be fixed for the applicant (or representative) to make submissions in person before the Office of the Controller General of Patents, Designs and Trademarks. If the examiner is satisfied with the submissions made at the hearing, he or she will order publication of the application in the Official Trademarks Journal, published weekly.
Once a trademark application is advertised as accepted in the Official Trademarks Journal, it is open to opposition by any party. An opposition to a trademark application must be filed within four months of the date of publication.
Any party can oppose a published trademark application, using a prescribed form with the applicable fees.
Where a trademark remains unopposed for four months or the opposition is rejected by the trademarks office, the trademark will be registered and the Office of the Controller General of Patents, Designs and Trademarks will issue a registration certificate. The initial registration period is 10 years; this can subsequently be renewed by the rights holder for further 10-year periods. A trademark can be registered in perpetuity, provided that it is maintained in accordance with the Trademarks Act 1999 and renewed as prescribed.
Documents and other requirements – India
Any party claiming to be the owner of a trademark can apply for registration by filing an application in the prescribed form, including the following evidence and information.
Specimen of mark
The applicant must supply a soft-copy specimen of the mark. In case of online filing, the specimen of the mark should be readily available in .jpeg format.
Specification of goods or services
The applicant must specify the goods and services to be covered in order to identify the classes for which the application will be filed. In India, goods and services are classified according to the ninth edition of the Nice Classification (where goods are defined in Classes 1 to 34 and services are defined in Classes 35 to 45). The application should specify the goods and services to be covered. An overly broad description of goods and services will create problems in obtaining registration if the mark is found to be similar to another previously registered mark. The specification of goods or services should be within 500 characters; otherwise, an additional fee of Rs10 per character over this limit is payable.
The applicant must specify whether the mark is in use in India – and if so, the date of first use. Section 46 of the Trademarks Act states that a trademark need not be in use before the date of filing in India, but there must be a bona fide intention to use the trademark in future. Accordingly, Section 47 provides that a trademark may be revoked if it is:
- registered without a bona fide intention to use it for the relevant goods or services; or
- not in use for a continuous five-year period from the date of registration.
The application must include a specific date of use; the practice of providing merely the year and month of first use should be avoided.
Priority can be claimed if the Indian application is filed within six months of the filing date of a basic or foreign application. The following is required to claim priority:
- the priority application number;
- the priority country;
- the priority date; and
- a certified priority document, with an English translation if necessary.
It is best to provide these documents at the time of filing in order to save the cost of filing afterwards. Where the documents cannot be delivered at the time of filing the Indian application, the Trademarks Act specifies a two-month period to provide them.
Power of attorney
A stamped power of attorney must be filed with the application if it is being filed through a representative. A foreign applicant must have a local address for service in India. A trademark application can be filed without enclosing a power of attorney at the time of filing, but the power of attorney must be filed within one month of the filing date. In case of online filing, a power of attorney must be filed together with the application; otherwise, the application cannot be filed.
Trademark registration – Madrid Protocol
Filing of international application
The international application must be submitted on Form MM 2(E) through an online portal, as provided on the website of the Office of the Controller General of Patents, Designs and Trademarks.
The Madrid Protocol allows applicants to choose an international application based on the basic application or registration and include multiple different member states with a single application. The application must designate the countries in which protection is sought. The Office of the Controller General of Patents, Trademarks and Designs has released a reference guide regarding the processes and formalities involved with the registration of an international application in India, accessible at www.ipindia.nic.in/eLearning/M....
Local verification of application and notification of deficiencies by Trademarks Registry
On receiving a request to file an international application at the International Bureau for Registration, the registrar of trademarks carries out a preliminary check for deficiencies at the basic stage. All information relating to the basic registration is confirmed before further processing. Details such as the date of registration and application number are checked; if deficiencies are found, the applicant is informed and directed to rectify them and resubmit the application within one month.
However, regardless of whether the deficiencies are rectified within one month, if an intimation has been given, a letter of refusal will be issued. The applicant must reply to this letter within one month, as well as rectifying the application’s highlighted deficiencies.
After the deficiencies have been rectified and the local trademark registry’s basic requirement criteria have been met, the application will be forwarded to the World Intellectual Property Organisation (WIPO) International Bureau for further examination for international registration no later than two months from the date of receipt of the application. The Office of the Controller General of Patents, Trademarks and Designs has issued guidelines for applications and their functioning and operation under the Madrid Protocol on its official website, accessible at ipindia.nic.in/Whats_New/guidelines_MadridProtocol_17December2013.pdf.
Examination of application and notification by International Bureau
Once the WIPO International Bureau receives an international application, it will ascertain its compliance with the requirements of the Madrid Agreement, the Madrid Protocol and their common regulations. This examination is restricted to formalities, including the classification and comprehensibility of the list of goods or services. If irregularities are found, the bureau notifies them to the office of origin, as well as to the applicant or its representative. All such communication takes electronic form. Irregularities are ordinarily rectified through the office of origin within three months of the date of notification.
If satisfied with the application, the International Bureau will record the mark, publish it in the WIPO Gazette of International Marks and notify the international registration to the relevant IP offices of the countries where protection is sought, requesting their approval.
Domestic examination of international application by Trademarks Registry
On receiving instructions from the International Bureau regarding an international registration in which a specific country has been designated, the registrar must keep records of the details (and changes thereto) in a prescribed form, entitled “Record of Particulars on International Registration”. After recording the details of the international application, the registrar will subject it to substantive examination as though it were a direct domestic application under the Trademark Act. If the registrar has an objection to granting protection to the trademark, it may still be granted subject to limitations and conditions; the registrar may also offer a hearing to the applicant. Communication of an objection takes the form of a ‘provisional refusal’ for grant of protection. If any grounds for refusal are found, they are communicated to the International Bureau within 18 months of receipt of the notification. If no objections are communicated within this period, the trademark is deemed to be registered in India. An applicant that is refused a trademark in a designated country will have been given appropriate remedies under domestic law.
Registration of application by designated country
The countries designated in an international application send a statement to the WIPO International Bureau notifying whether protection has been granted, partially withdrawn or completely withdrawn. This is subsequently published in the WIPO Gazette of International Marks. Accordingly, the trademark is then deemed to be protected in all countries which have agreed to protect it. The registered international application is dependent on the basic application for a five-year period; during this time, should the basic application collapse for any reason, the international registration will also be considered void.
An application for international registration is open for opposition for four months from the date of advertisement in the trademark journal. On opposition, notice is issued to the applicant or agent for clarification.
Further, if an international mark infringes existing or pending registrations, an opposition may be filed against the basic application in the country of origin; if accepted, the international registration proceedings in all other designated countries will be affected. This method of opposition is known as a ‘central attack’.
Since an international registration is dependent on a basic application or registration, the goods and services to be covered must be indicated in the international application in precise terms and according to international classification. The list of goods and services should not be broader than that in the basic registration or application. An international registration is protected for 10 years and can be renewed for further 10-year periods. Renewal is subject to payment of a renewal fee; there is a surcharge and six-month grace period for delayed renewal.
Singh & Associates
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New Delhi 110017
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Manoj K Singh has expertise in litigation and alternative dispute resolution (domestic and international) covering all areas of intellectual property, including copyright, trademarks, patents and trade secrets. He has a particular emphasis on trademark infringement and passing-off. He represents clients in managing their IP portfolios and in the licensing and distribution of IP rights. Under his aegis, Singh & Associates has become a recommended firm for IP prosecution and strategy in India. Mr Singh himself has been recommended by the Legal 500 (which describes him as an “excellent and solution-oriented lawyer”), Indian Lawyers 250, Finance Monthly and 100 Legal Luminaries of India. He has an LLB from Delhi University and a postgraduate diploma (IP rights) from Indian Law Institute, New Delhi.
Himanshu Sharma is a senior principal associate in the IP practice group’s trademark department. Before joining the firm, he was an examiner of trademarks in the Indian Trademark Office in New Delhi, where he was involved in the examination of trademark applications, registrations, renewals, assignments and certification. His practice is focused on trademark prosecution and opinion work relating to trademark registrability, opposition, infringement, passing-off, licensing and assignment, counterfeiting, customs actions and investigations. He also specialises in the prosecution of copyright before the Indian Copyright Office and has successfully advised clients on issues relating to copyright registration and infringement.