Trademark laws and regulations in India are a combination of domestic laws and international treaties, including Madrid Protocol and Agreement. Brand owners can register their trademarks in India by filing trademark applications after conducting brand clearance searches in the relevant classes of goods and services. International brand owners can also obtain trademark protection in India by using international treaty governed by WIPO under Madrid Protocol.
Conducting a trademark search is important to know if the mark is already in use by a third party. The mark which you wish to protect may already have been registered or the rights to use that mark may already have been assigned. Furthermore, if the search results reveal that the mark is already registered, the investment in trademark search would save various costs, including the trademark filing fees. The search conducted by our team is an exact match search for the mark or logo in the particular class of goods.
On behalf of our clients, we prepare and file trademark applications in India. With our established network of trademark attorneys across the world, we assist our clients in international registration of their marks in multiple jurisdictions.
Trademark Prosecution & Licensing
Trademark prosecution in India includes filing a trademark application with the Indian Trademark Office (“IPO”) and arguing against any Examination Report (Office Action) received from the Registrar of Trademarks. The trademark prosecution process begins when an application for a trademark registration is filed either claiming prior usage (to be filed with affidavit of use with evidence), or, a proposed to be used trademark application.
We believe registering a trademark serves as a launch pad for a business. Our team provides all prosecution services necessary for registration of a mark, including filing applications, responding to office actions, recording assignments and maintaining registration. Our team prepares and analyses Trademark Licensing Documentation considering the quality control needs of our clients.
Trademark Law Case Study
It is well known that the acronym “WWF” was coined in 1980 when Vince MacMohan Jr. established the company Titan Sports. Since then, WWF, or “World Wrestling Federation” became a leading brand name in the field of wrestling worldwide.
In 2001, WWF officially got rebranded as WWE, or “World Wrestling Entertainment”, primarily due to legal reasons. The legal battle was fought between WWF (World Wide Fund) and WWF (World Wrestling Federation), and a London court ruled against the wrestling brand. Even after challenging the ruling, wrestling body could not succeed and subsequently, WWF was rebranded as WWE.
As a PR move, WWE even used “Get The ‘F’ Out” as marketing slogan.
This case study highlights the importance of trademark laws for business growth and appropriate steps must be taken by the brand owners to protect their brand, without infringing upon third party rights. Henceforth, trademark due diligence is extremely crucial for brand owners.
Trademark Due Diligence
Our team of specialized trademark attorneys is capable of performing extensive Due Diligence for the purposes of Trademark Litigation in various jurisdictions, or for the purposes of Mergers and Acquisitions, and the like.
Get Trademark Registered in India by hiring professional trademark lawyer in India. Currently, pendency in trademark examination of brand application filed for the registration of a trademark has been brought to less than a month. Trademark filed in late December, 2016 and trademark application filed in January 2017 are already in process of trademark examination. Recently, our client’s trademark has been Advertised before Acceptance in less than 3 weeks from trademark filing date.
So, by following the ten step process get Trademark Registered in India in 30 days.
- Coin a brand name for trademark registration
- Select the appropriate Trademark class for your brand
- Avoid filing multi class trademark application in class 99
- Conduct a trademark search online at Indian Trademark website
- Expedite the digitation process by filing online trademark
- Get digital signature for signing online trademark forms
- Get proprietor code for filing trademark in India
- File TM-A Form for Trademark Registration in India
- Attach Stamped Power of Attorney (POA) while filing the trademark in India
- Wait for formal response from trademark office and reply trademark objection within one month of receiving the formal response
Attention All Trademark Owners who filed Trademark applications in India
According to trademark notice issued by Trade Marks Registry in India, it has identified many trademark applications filed before December 2016 failed at 1st stage of formality check pass. Therefore, those trademark applications have not been examined in India due to compliance issues.
The list of filed Trademark applications has been published as follows:
- Annexure I: Incomplete digitization of the filed Trademark
- Annexure II: Trademark applications failed in formality check during examination and have been pending for compliance with the office direction.
The Trade Marks Registry in India has directed the trademark attorneys and brand agents to comply with the pending issues for the trademark applications that have failed in Formality check. As a trademark owner you should check if your brand is in this list. Refer the details of trademark filing deficiency and requirement raised by the trademark office. The trademark applicants should email at firstname.lastname@example.org, with brief details of such brand applications to remove existing objection and comply with the same.
Example of Trademark compliance issue in India
|While taking up the above application for examination under the provisions of Trade Mark Act, 1999 and Trade Marks Rules 2002, it is observed that trademark application could not proceed to examination because of the following reason/s:|
|* Power of Attorney (TM-48) is not found enclosed along with the trademark application.|
|* You are required to provide TM-48 with necessary stamp duty..|
Therefore, trademark applicants and their trademark agents should include the following details while mailing at email@example.com and and send the hard copy to the concerned office of Trade Marks Registry:
- Full and complete Reference Letter No. and date,
- Trademark application number and the class to which it relates.
As strategic patent counsel, we work with clients in aligning the patent prosecution process with client’s core business strategies, in addition to drafting patent claims, patent application preparation and prosecution focused on securing patents, determining freedom-to-operate rights, and analysing validity of granted patents.
We serve as patent prosecution attorney for clients across a wide range of sectors, including, computer software, mobile applications, aeronautics, automobiles, internet of things, robotics, artificial intelligence, blockchain, cryptocurrency and drones, as well as manufacturers. In life science category, clients range from healthcare, biotechnology, pharmaceutical, energy and environmental industries.
As patent attorney with expertise in software patents and mobile app patents along with Internet of Things (IoT), we regularly advise clients to embody business methods as technology patents because a business method patent can serve as a powerful asset for companies to leverage their intellectual property assets. At the beginning of the patent process, we determine the patentability, scope and enforceability of the innovate process and product. Patent attorney also works with clients in securing patents for clean technology sector, including, green technology inventions, energy generation, conservation, renewable energy inventions, etc.
Patent attorneys generally possess dual qualification in technology and law, mostly with advanced degrees in technical fields such as pharmaceuticals, mathematics, chemistry, biochemistry, genetics and aeronautics. At Law Office of Rahul Dev — Tech Corp Law Group, we assist clients as a team of professionals having prior work experience in technical fields such as engineering and manufacturing, aerospace, robotics, plastics, computer software, biochemistry, molecular biology and neuroscience. Our core patent services include, patent research, patent analytics, patent searching, patent prosecution, non-infringement and freedom to operate opinions, technology transactions and licensing, as well as alternate dispute resolution and commercial litigation.
As licensed patent attorney, we represent clients during the entire patent registration process in India, including filing of patent applications and trademark applications. We advise clients regarding duration of a patent and a trademark, patent and trademark renewals, patent filing forms, patent filing fee, trademark filing forms, trademark filing fee, protecting process and product both by patents, protecting brand and logo both by trademarks, analysing patent portfolio for strength and weaknesses, etc.
Rahul Dev, Patent attorney in India, has conducted sessions for clients to convey the message that patent provides a strong protection for innovations, and having patent rights in India can help in resolving patent-related problems in addition to protection of intellectual property rights.
We work with clients to formulate a long-term patent strategy to protect the patentable inventions, drafting of patent applications, filing patent applications in India, initiating legal actions against patent infringing parties, along with developing custom-tailored solutions to complex patent and legal matters.
Law Office of Patent Attorney Rahul Dev provides comprehensive solutions to all intellectual property needs of clients, including patent filing services in India. We operate as a close network of patent attorneys, patent agents and patent lawyers enrolled with Indian patent office and bar councils in India.
We assist individual researchers and inventors who develop novel and inventive technologies by searching relevant prior art (patent database and non-patent literature), determining patentability of invention, drafting patent applications, filing domestic and international patent applications in India, filing design applications in India, filing trademark applications in India, providing offshore patent services to global patent attorneys and patent law firms, providing patent outsourcing services, and the like.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyerpracticing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter
Quoted in and contributed to 50+ national & international publications(Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech)
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management
Working closely with patent attorneys along with international law firmswith significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.