Indian Trademark Law has been codified in conformity with the International Trademark Law and is about to undergo an amendment to be at par International Trademark Law. India has also signed Madrid Protocol that will allow Foreign Applicants to file an International Application designating India (once notification is issued in this regard).
Main requirements of a Trade Mark
The two main requirements of a trade mark are:
It must be distinctive (adapted to distinguish the goods/services of the applicant from that of others) and
It must not be deceptive.
Therefore while selecting a trademark, words that are directly descriptive of the goods, common surnames or geographical names should be avoided as these confer weaker protection to the proprietor even if registered. Prima facie, a word having a direct reference to the character or quality of goods is not registrable. However it is registrable, if it has acquired distinctiveness through long and continuous use. Under Indian Trademarks law more significance has been given to “use” of the mark than “filing of application towards registration”.
Trade Mark Search
To avoid objections and/or oppositions, it is desirable to conduct a Trade Mark search to ascertain existence of any prior registrations of identical or similar marks. The register of Trademarks is available online now and it is possible to make word, phonetic as well as device search. The only drawback is that new applications are updated after only 30-60 days and their details are not reflected in search.
Trademark Applications in India
Trademark Applications in India can be classified under two categories depending upon their priority claim:
Ordinary trade mark application without any priority
Conventional trade mark application- has to be filed within 6 months from date of filing of conventional application.
In case of conventional trademark application, certified copy of the priority document has to be filed within 2 months from the date of filing of application in India. Besides above trademark applications, there are also certification trademarks and collective trademarks that are registrable in India
Trademark filing requirements in India
Specimen of the trademark for Agent: • 12 copies if in black and white, if provided in print form or single copy if provided soft copy vide email • 12 copies if in colour, if provided in print form or single copy if provided soft copy vide email • For shape of goods 3-5 different views ( top, bottom, left side, right side and front view) Following are the basic requirements for filing of a trademark application in India:
Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
International Class
Description of goods or services
User date in India or proposed to be used
Details of priority, if any, including application number, date of filing and country of filing
Translation and transliteration in English, if mark is not in Indian language
Power of authority has to be stamped as per Indian Stamps Act and preferably should be filed within one month from date of filing. Notarisation or legalisation is not mandatory.
Description of goods or services
Under Indian trademarks law, the specification of goods or services must be within 500 characters. In event the description exceeds 500 words prescribed fee must be paid for each additional character along with an application to that effect.
Trademark Registration in India
Following stages are ordinarily encountered while registering a trademark in India:
Filing of trademark application in India and issuance of fee receipt with application number
Issuance of official acknowledgement ordinarily within 30 days
Issuance of Official letter with objections, if any
Replying to official letter within 1 month
Hearing, if required
Provisional acceptance of trademark application subject to advertisement in Journal for inviting oppositions
Advertisement in the Indian trademark Journal
Opposition, if any, within 3+1 months from date of publication of the application
Registration of Trademark, if no opposition if filed or is set aside
Issuance of Registration Certificate.
Express Examination of Application
Indian Trademarks law allows express examination of the trademark application on filing of additional official fee along with a declaration stating the reason for such request. Within 3 months from the date of request the Registrar shall issue an Examination report.
Advertisement of Trademark Application
After the trademark application has been provisionally accepted by the Registrar of the Trademarks, the application shall be advertised in the Indian Trademarks Journal inviting opposition from public to the trademark.
Trademark Opposition
After publication of the trademark in the Indian Trademarks Journal, the trade mark remains open to opposition by public for a period of 3 months, further extendable for a period of 1 month upon prior request. On filing of notice of opposition the application shall not proceed towards registration until the opposition is set aside.
Registration of Trademark
If there is no opposition against the registration of the trademark application or the opposition proceedings have been decided in favour of the Applicant, the Trade Marks Registry shall accept the trademark and issue a registration certificate to that effect.
Duration of Registration and Renewal of Trademark
The duration of registration of a trademark is 10 years from the date of filing of application in India and is further renewable for every 10 years thereafter.
