Trademark Process in India

Q1. What is a Trade Mark?
Q2. What are the essentials which every trademark must possess to be a trademark?
Q3. Who can file for registration of Trade Marks in India?
Q4. How much does it cost to get a trademark in India?
Q5. What are the different types of trademark applications?
Q6. How is Trademark designated in India?
Q7. What is Honest Concurrent Use?
Q8. What is the procedure to file for registration of a Trade Mark in India?
Q9. What is the trademark office procedure for trademark registration in India?
Q10. What is the Office Procedure for Registration of a Trademark?
Q11. Can a suit for infringement for a registered trade mark be instituted?
Q12. What is the procedure of Trademarks through the international registration under “MARDRID PROTOCOL”?

Q1. What is a Trade Mark?

Before discussing the concept of Trademark, let us first understand what a Trademark is. In general terms, a trademark can be a word, logo, symbol, label, shape, smell and combination of colours etc. and acts as a source indicator and refers to the origin of goods or services. According to Section 2(1)(zb), “trade mark” means a mark which is:
i. Capable of being represented graphically; and
ii. Capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging, and combination of colours, and;
• in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and
• in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark. Back to top

Q2. What are the essentials which every trademark must possess to be a trademark?

In order to bring it within the scope of statutory definition of trade mark, it should satisfy the following essentials:
i. It must be a mark;
ii. It must be used or proposed to be used in relation to goods which are the subject of trade or manufacture or in relation to services;
iii. The use must be of a printed or other visual representation of the mark.
iv. Such use (in relation to goods) must be upon, or in any physical or in other relation whatsoever to the goods, or (in relation to services) as a part of any statement about the availability, provision or performance of such services;
v. The use must be for the purpose of indicating or so as to indicate a connection in the course of trade between the goods/services and some person having the right to use the mark either as proprietor or as registered user. Back to top

Q3. Who can file for registration of Trade Marks in India?

The trademark law in India defines various categories of trademark applicants. Depending upon the category and type of the trademark applicant, the documentary requirements and the official filing fee varies. In essence, a trademark in India can be filed by:
1. Individual Startup/Small Enterprise; (Joint Owners, Proprietorship)
2. In all other cases (Private Limited Company, Partnership Firm, LLP etc.) Back to top

Q4. How much does it cost to get a trademark in India?

An approximate basic fee for filling of trademark in India under Form TM-A for:
(a) Individual Startup/Small Enterprise:
• E-filing – 4,500/-
• Physical filing – 5,000/-
(b) In all other cases:
• E-filing – 9,000/-
• Physical filling – 10,000/-
Note: Fee is for each class and for each mark. For details, please refer the trademark office website. Back to top

Q5. What are the different types of trademark applications?

Trademark applications are divided into one or more types by the trademark office, and as per Indian Trade Marks Office, a trademark applicant can type multiple kinds of trademark applications. The documentary requirements and other formalities for each trademark application type are different, and hence it is crucial to identify the exact type of trademark application before initiating the trademark filing process. While filing for a trademark, few things are to be considered. The first is which type of application you are filling. In trademark, there are five types of trademark applications:
(a) Standard Trademark (also known as work mark) is used to register words, letters, device, numbers or any combination thereof. A single word mark will protect the phrase irrespective of how it is being displayed.
(b) Collective Mark (Section 63(1)) as the name suggests means, a collective mark is a mark that belongs to a collective group of people or an association of persons. Example – CA (device used by Indian Chartered Accountants).
(c) Certification Mark (Section 71(1)) is defined under Section 2(e) of the Trade Marks Act, 1999 as ““certification trade mark” means a mark capable of distinguishing the goods or service in connection with which it is used in the course of trade which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of service not so certified and registrable as such under Chapter IX in respect of those goods or service in the name, as proprietor of the certification trade mark, of that person.” In short, it is a mark which certifies the characteristics like quality, origin etc. of other goods/services. Example – ISI (Indian Standard Institute) mark.
(d) Service Mark came into recognition after the commencement of the 1999 Trade Marks Act. A trademark pertaining to services is known as service mark. When someone registers for the service mark successfully the standard symbol of registration is used by them. This mark can also be used when the practice of trademark is done it can be used there also.
(e) Series Mark (Section 15(3)) is where the trademark applied for, is in the form of a series. In other words, the primary element of a mark might be used/intended to be used in several forms or ways by the proprietor and instead of filing separate applications for each, it is possible to file them as a series. Example – McDonald has series marks incorporating the term “Mc” like Mc chicken, Mc Café, Ms Donuts etc. Back to top

Q6. How is Trademark designated in India?

When a trademark has been registered, the symbol ® is designated to it. Using the symbol ® for an unregistered mark is illegal. A mark which is not registered may use the symbol ™ which simply means one claims to be the proprietor of that mark. Back to top

Q7. What is Honest Concurrent Use?

Section 12 of the Indian Trade Marks Act, 1999 takes about “Registration in the case of honest concurrent use, etc”. Section 12 provides for registration of same or similar trademarks by more than one proprietor in the case of honest concurrent use or other special circumstances. The provision establishes the superiority of trade mark rights acquired by use.
Concurrent use by two or more persons of the same trade mark for the same goods is contrary to the whole essence of trademark jurisprudence, for a trade mark is intended to denote that the goods come from one source and one source only. However, exceptional circumstances arise when more than one person honestly and independently adopts the same or similar mark and continue to use without objection and without knowledge of each other’s marks, often in different territories, and without causing any confusion or deception to the public. It is considered just and natural to confer the benefit of registration to such concurrent users, even if it causes some occasional confusion.
Section 12 permits the registration by more than one proprietor of identical or similar trade marks in respect of same or similar goods or services. It is an exception to the prohibition of registration of similar marks and it overrides the generality of prohibitions contained in Sections 9 and 11 of the said Act.
The power of granting concurrent registration under Section 12 is discretionary. This is clear from the use of the words “the Registrar may permit registration”. Back to top

Q8. What is the procedure to file for registration of a Trade Mark in India?

A trademark is filed in India through Form TM – A with the respective Trade Mark Office (New Delhi, Mumbai, Chennai, Kolkata and Ahmadabad). A trademark can be filled either through e-filing or through physical filing. A requisite fee is payable for filling of the trademark which is mentioned under The First Schedule of Trade Marks Act, 1999. (See Rule 11).

The first and foremost thing to determine while filing for a trademark is to assign a particular class/classes to the trademark. For filing an application with the Indian Trade Marks Office, the goods and/or services need to be categorized according to the class they fall under. The Nice Classification is a system of international classification of goods/services born out of the “Nice Agreement”, to be used for application of trademarks. There are 1-45 classes in the Nice Classification out of which, classes from 1-34 categorize Goods and classes 35 – 45 classify services.

Each class specifies a broad heading called ‘Class Header’ which gives a clear idea as to the type of goods/services which fall under them and the detailed list of names of goods/services. The Classification also gives an ‘explanatory note’ which very clearly elucidates about the type of goods/services which would fall under the particular class. The explanatory note allays doubts as to the applicable class for a particular goods/service and that way very helpful to determine the class.
A trademark can be filed for a mark/logo which is proposed to be used or already in use. If the mark/and logo is proposed to be used, the date shall be mentioned in the application form in DD/MM/YYYY format. In case the use of the mark is clamed to be prior to the date of application, the applicant shall file an affidavit testifying to such use along with the supporting documents and the affidavit shall be attested by a notary public.

A Power of Attorney is mandatory to be filed along with the application duly executed by the Applicant in favour of the trademark attorney. Back to top

Q9. What is the patent office procedure for patent registration in India?

Once an application for registration of trademark is filled with the Trade Mark Office, the Registrar may, refuse the application, accept it absolutely or accept it subject to such amendments, modifications, conditions or limitations, if any, as the registrar may think fit.
The Registrar may also withdraw his/her acceptance if he is of the opinion that the application was accepted in error, or that the trademark ought not to have been accepted in the circumstances of the case, or proposes that the trademark should be registered only subject to conditions, limitation, divisions or to conditions additional or different from the conditions, or limitations, subject to which the application has been accepted. The Registrar shall send a written communication of such action to the applicant. (See section 19 r/w Rule 38 of Trade Mark Act, 1999 & Trade Marks Rules, 2017)
If the registrar accepts the application, the application enters into the stages of registration. The initial stage is the “FORMALITY CHECK”. If the application passes the general formalities that must be fulfilled by the applicant in check, the status of the application on the Trade Mark Registry Website will show “FORMALITY CHK PASS”, and if the formalities are not in accordance with the law, it will show “FORMALITY CHK FAIL.”
The second stage, “MARKED FOR EXAM” is when the application, only after passing the formality check, is assigned to an Examiner. The trademark would be examined as to its ability to be registered under the various Sections of the Trade Marks Act, 1999. An examination report is then issued either accepting the trademark for publication or raising objections as to its registrability. At this stage, the applicant needs to wait for the examination report to be issued. An examination report is usually issued within a period of one month to one year depending on the backlog of the registry.
The stage of “OBJECTED”. If an examination report has been issued raising objections, a reply has to be filed by the applicant with a period of one month from the date on which the examination report was received by the applicant, failing which the trademark application may be treated as abandoned by the Registry. If the Examiner is not convinced with the written response, a hearing is posted for allowing arguments to be put forth in person.
The status “EXAM REPORT ISSUED” or “ACCEPTED” is used by the Trade Mark Registry to indicate that the trademark application has been ordered for publication in the Trade Marks Journal prior to registration. This status is used by the Registry when no objections are raised by the Examiner as to the registrability of the trademark or when the objections are overcome by way of written submissions or hearing. No action is required by the applicant at this point unless the application does not move forward for journal publication.
The status is shown to be as “AVERTISED BEFORE ACC” or “ADVERTISED” or “ACCEPTED & ADVERTISED” when the trademark application is advertised/published in the Trade Marks Journal. This is one of the final stages in the trademark registration process. Once the trademark is published in the Trade Marks Journal, 4 months’ time is given for any third party to oppose the registration of the trademark. If no oppositions are filed during the 4 month opposition period, then the trademark registration certificate is usually issued within 3 months thereafter.
But if the application is opposed, the status will reflect as “OPPOSED”. This happens when a third party files an opposition to the registration of your trademark. The notice of opposition is sent by the Registry to the applicant or its agent. In order to contest the opposition, a counter statement should be filed within 2 months from the date of receipt of notice of opposition, failing which the trademark application will be abandoned and cannot be revived. No extension of time is granted for filing the counter statement. (See Section 21 of Trade Marks Act, 1999)
If there is any error regarding the data entry of application or if the documents were not digitized properly and which needs to be corrected, the application is “SENT BACK TO EDP” (Electronic Data Processing) section.
In case any amendments which were filed prior to registration such as proprietor details, address, specification of good, etc, the application is “SEND TO PRAS” (Pre-Registration Amendment Section). Back to top

Q10. What is the Office Procedure for Registration of a Trademark?

When no notice for opposition is advertised or re-advertised to an application in the Journal within a period of 4 months, or where the opposition was made and was dismissed, the Registrar shall, subject to the provisions of sub-section (1) of Section 23 and Section 19, enter the trademark on the register. (Rule 53 of Trade Marks Rules, 2017)
The Certificate of Registration will be issued by the Registrar under sub-section (2) of Section 23 on FORM RG-2 and shall include the trademark. The form shall bear the seal of the Trade Marks Registry. (Rule 56 of Trade Marks Rules, 2017)
The term of registration for a trademark in India is 10 Years. A trademark is to be renewed after every 10 years by filing FORM TM-R along with a prescribed fee of Rs. 10,000 for physical filing and Rs. 9,000 for e-filing for each class. ((Rule 57 of Trade Marks Rules, 2017). Back to top

Q11. Can a suit for infringement for a registered trade mark be instituted?

The holder of a “registered” trademark has exclusive right over his/her mark. If a registered trademark is infringed by another trader, he is liable for an action against him for infringement of that registered trademark. (See Section 29 of Trade Marks Act, 1999)
NO ACTION for infringement of an UNREGISTERED trademark can be instituted. (See Section 24 of Trade Marks Act, 1999)
The period of limitation for filing a suit for infringement is Three Years from the date of infringement. Back to top

Q12. What is the procedure of Trademarks through the international registration under “MADRID PROTOCOL”?

The Madrid Protocol is a treaty, signed by India in 2013, that provides for international registration of trademarks by filling a single application with one set of fee. The regulatory body of Madrid Protocol is the International Bureau of World Intellectual Property Organization (IB of WIPO). An application for registration of a trademark under the Madrid Protocol can be filled though the Indian Trademark Office of the respective jurisdiction. The application under Madrid Protocol can be filed under 3 languages, i.e., English, French and Spanish.
An application for registration of a trademark under Madrid Protocol can be filled through FORM MM2 for a prescribed fee with the respective Trade Marks Office of the applicant’s jurisdiction.
Refer: (1) Forms
(2) Fee
The Trade Marks Office then certifies such application and forwards it to WIPO. WIPO then formally examines such application and forwards it to the other designated contracting parties for thorough examination in accordance with their respective domestic law within 12/18 months.
If no objection is found by any of the designated contracting parties, WIPO registers the mark in the International Registry and then publishes the International registration in a Gazette. Back to top

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International Trademark Filing in India – The Madrid Protocol

1. India adopted Madrid Protocol in 2013
2. The Madrid Protocol is a WIPO administered treaty to simplify the process of filing trademarks across multiple jurisdictions
3. Trademark applications can be filed in India under the Madrid Protocol when India is either the origin country or the designated country
4. If India is the origin country, the Indian Trademarks Registry (TMR) will receive the applications for international registrations of trademark
5. If India is the designated country, the international trademark application is filed with WIPO selecting India as the designated country

ADVANTAGES OF THE MADRID SYSTEM

1. Single application based system in one language (English, French and Spanish) with a strict time limit established under the Protocol. Thus the procedure becomes more cost effective, faster and with wide ranging international application.
2. Further chance of extending geographical application of the trademark along with any other changes, is recorded by the International Bureau and have effect through a single procedure.
3. No local limitations towards the trademark unless the contracting country raise objections. Thus allowing a necessary removal of local intermediaries and making it a smooth functioning system, internationally.

Replying to Provisional refusal in India under Madrid Protocol

International Trademarks and Brand Protection

Provisional refusal in India under Madrid Protocol Services

Provisional refusal in India under Madrid Protocol: Although, it is not possible to register a particular brand as “International Trademark”, the Madrid Protocol system provides an easy solution to the companies and individuals if the country in which they want to register their trademark has signed up the Madrid Protocol.

India signed up for Madrid Protocol With WIPO in the year 2013. Madrid System, including Madrid Agreement and Protocol relating to Madrid Agreement, is an international treaty to facilitate international registration of trademarks and management of trademark applications worldwide.

How Madrid Protocol Trademark System Works in Favour of  Brand & Trademark Owners

It can be used to file and register the trademark in the home country, for example, resident of India will file trademark in India first and subsequently be able to secure wider trademark protection globally. Once the Indian trademark application is filed before the Indian Trademark Office, one can extend the trademark registration in other countries by using a single trademark application. The details of the single trademark application should include desired countries in which you want to seek trademark protection.

Overall costs for filing trademark under Madrid protocol will depend on the applicable official government fees of the designated countries in which you are applying to register your trademark brand, and the number of trademark classes.

Filing International Trademark Applications Under Madrid Protocol With WIPO – Procedure, Cost and Requirements for Indian Trademarks

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Madrid Agreement and Madrid Protocol – Governing Treaties

The treaties provide an easy and cost effective way of filing international trademarks. Once the trademarks are registered by respective designated offices, the Madrid protocol further provides simple procedures to manage international registrations.

Provisional refusal in India under Madrid Protocol: Office of Origin

The trademark office that receives application under Madrid protocol is known as office of origin.

Provisional refusal in India under Madrid Protocol: Designated Offices

The trademark applicant can designate one or more trademark offices as contracting party, which is then notified about filing of trademark application under Madrid protocol by WIPO.

Provisional refusal in India under Madrid Protocol: Madrid Protocol Application – General Procedure

Usually, once the international trademark application is filed with designation of countries with the office of origin, the contents of said application are verified by said office of origin. Once done, the application is forwarded to WIPO, which is then published by WIPO and subsequently, WIPO notifies all the designated offices. Thereafter, each designated office examines the trademark application as per respective trademark laws, rules and procedures.

Madrid Trademark Application in India

The Indian Trademark Office is authorized to receive an international trademark application under Madrid Protocol.

Madrid Trademark Application in India – Requirements

The basic criteria to file Madrid Trademark Application in India requires applicant to be eligible to file said trademark application, which essentially requires the applicant to be an Indian national or having a place of business in India. In addition, the Indian trademark office requires an existing trademark application, known as the basic application, and designation of one or more countries wherein international trademark protection is required.

Documents Required for Filing Trademarks in India

The Indian Trademark Office requires an international trademark application under Madrid Protocol to be accompanied by an application form, power of attorney, payment of handling fee, and payment of international designation fee (in Swiss Francs) payable to WIPO.

Madrid Trademark Application – Role of Office of Origin

During the process of receiving an application for international trademark registration under Madrid System, the office of origin plays an important role. After receiving the application, the office of origin verifies the contents, certifies the application and forwards it to WIPO for publication and notification to designated offices. Subsequently, the office of origin receives details of irregularities in the application, if any, and further communicates with WIPO regarding status of basic trademark application.

Responding to Provisional Refusal from the Indian Trademark Office under Madrid Protocol

The Indian Trademark Office examines every international trademark registration designating India received from the International Bureau of WIPO. An International Registration Designating India (IRDI) number is allotted by the Trade Marks Registry to every International Registration in which India has been designated. The trademark examiner examines the Brand trademark on the ground of non-distinctiveness and similarities to registered trademarks and pending trademarks before the Indian Trademark Registry.

While examining the trademark application, if there is any objection for protection of such trademark registration in India, a provisional refusal is notified to the International Bureau of WIPO within 18 months from the date the international registration was notified to India.

General objections raised by Trademark Registry in India | Trademark Objections under Provisional Refusal In India

9(1){a) under Indian Trademark Law- The objection is raised under S 9(1) (a) of the Trade Marks Act 1999, as the mark is non-distinctive and as such it is not capable of distinguishing the services of one person from those of others.,
11(1) under Indian Trademark Law – The objection is raised under S 11 (1) of the Trade Marks Act, 1999, as the mark is identical with or similar to earlier marks in respect of identical or similar description of services and because of such identity or similarity there exists a likelihood of confusion on the part of the public.

The provisional refusal includes an Examination Report containing objections. The International Bureau records the provisional refusal in the international register and provides the details of such provisional refusal to the trademark applicant of the international registration.

The provisional refusal is recorded in the International Register, together with an indication of the date on which the notification was sent. The provisional refusal is also published in the WIPO Gazette, with an indication as to whether the refusal is total (i.e. relates to all the goods and services covered by the designation) or partial (i.e., relates to only some of those goods and and services covered)

Responding to Provisional Refusal Issued by the Indian Trademark Office under the Madrid Protocol

The trademark applicant can respond to the provisional refusal by engaging a trademark agent or an  Indian trademark attorney having address in India by executing a Power of Attorney in the favour of the agent/attorney.

Follow the Deadline Dates | Trademark Response Deadline to Respond to the Objections:

The normal deadline to respond to trademark objections raised by the Indian Trademark Office is 1 month from the date of receipt of the provisional refusal notification by the trademark applicant. Technically, once the trademark applicant receives the provisional refusal notification from the International Bureau of WIPO the last date to respond to provisional refusal can be calculated.

Note:  If you have opted to receive notifications from the International Bureau of WIPO by paper mail, it is advisable to retain the postal receipt. So, if there is a delay by the post the date of receipt of the provisional refusal from WIPO, the postal receipt will act as documentary evidence.

What to do if you miss the deadline / extension of timeline to respond to trademark objections raised by the Indian Trademark Office?

The Indian trademark attorney can file an application for extension of time and the same is at the discretion of the trademark office. The Trade Marks Registry (TMR) office of India then considers the response of the trademark applicant of the international registration and may either confirm the refusal or move for advertisement of the international registration in the Trade Marks Journal.

Amending detailed description of different trademark goods/services:

Any amendments in goods/services in respect of the Indian trademark application needs to be made only at the International Bureau of WIPO and the same needs to be notified to the Indian Trademark Office by the International Bureau of WIPO.

Relevant legal provisions in Indian Trademark Law for International Trademark Applications Filed under Madrid Protocol

• Section 36E (2) of the Trade Marks Act 1999
• Rule 67H of the Trade Marks Rules 2002
• Articles 4 & 5 of the Madrid Protocol
• Rules 17, 18 & 18ter of the Common Regulations

A new interpretation/definition clause has been inserted in accordance with the Madrid Protocol in Indian Trademark Law (S.36B read with Rule 67A).

Applicant or registered proprietor of trademark under section 18 or under section 23 (‘basic application’ or ‘basic registration’) of the Act may make an international application in Form MM2 (E) along with prescribed fees in Swiss francs.

The Registrar shall certify & forward it to the International Bureau within two months from the date of receipt of the said application & for this, a fee of INR 2000 is payable to the Registrar towards handling charges (S. 36D read with Rule 67E & 67F).

A separate record for international registration where India has been designated shall be kept by the Registrar called the ‘Record of Particulars of International Registration (S. 36E read with Rule 67G).

For a period of five years from the date of an international registration, if the initial basic national application/registration ceases to have effect, through a withdrawal, refusal, cancellation following a decision of the Office of origin, or Court, or voluntary cancellation, or non-renewal, the international registration will no longer be protected. After the expiry of a period of five years from the date of international registration, the registration becomes independent of the basic registration or basic application (S.36D & S.36E).
Provided that, where an appeal is made against the decision of registration nd an action requesting withdrawal of application or an opposition to the application has been initiated before the expiry of the period of five years of an international registration, any final decision resulting in withdrawal, cancellation, expiration or refusal shall be deemed to have taken place before the expiry of five years of the international registration. (Provision of Sub-section 5 of Section 36D).
The Registrar shall examine the application within 2 months where India has been designated. If grounds for objection are found during the examination by the Registrar, or if an opposition is filed, the Registrar can declare a provisional refusal (within 18 months of receipt of the application’s notification from the International Bureau for India) for protection of the mark in that member country (S.36E read with Rule 67H).

The international registration of a trade mark at the International Bureau shall be for a period of ten years and may be renewed for a period of ten years from the expiry of the preceding period and subject to payment of a surcharge prescribed by the rules, a grace period of six months shall be allowed for renewal of the international registration (s. 36G).

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)

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