Trademarks in India are governed by the Trade Marks Act, 1999 (“Act”) and Trademark Rules, 2017. The Act provides the procedure for the registration of any mark capable of being represented graphically as a word, device, label, numerals, or combination of colours, shape or sound, and capable of distinguishing the goods or services of one person from another. In other words, a trademark is a source identifier of businesses, products and services.
Any person or entity can file a trademark application in India, including foreign applicants. While adopting a trademark, an applicant must ensure the trademark is coined and arbitrary in nature, and not generic, descriptive, or common in respect of the goods or services offered under the trademark. It should be distinctive and not deceptively or confusingly similar to an existing brand or trademark.
Stage 1: Identifying the trademark and relevant classes
Before adopting a trademark, a trademark search is imperative. This helps applicants identify if there are any existing similar trademarks which have been applied for or already registered in India. For this purpose, a search on the official website of the Indian Trademarks Registry is useful, as also an online search, to determine the registrability of the proposed trademark. A search also helps identify risks in connection with the trademark, such as objections, oppositions or infringement challenges, during or after the registration of the trademark.
- Searching the Indian Trademarks Registry
Three types of searches can be conducted on the website of the Trademarks Registry – Wordmark, Vienna and Phonetic. A word mark search identifies trademarks that use the word searched for; a Vienna code search searches for similar visual elements such as a logo; and a phonetic search provides results having a similar sound. Searches are class specific, and results are restricted to records in the Register (and are thus India-specific only).
- Online search:
A simple online search is also always advised to determine the chances of availability and registrability of the trademark. This may include searching social media platforms, conflicting domain names or even brands present in other jurisdictions. This can help determine the degree of distinctiveness of the proposed trademark and identify any prior existing trademarks that may hinder the trademark application and brand as a whole.
Trademarks are associated with specific goods and services, for which countries follow the Nice Classification. This is an international system for the classification of goods and services for the registration of trademarks, that came into force pursuant to the Nice Agreement. The classification is revised annually, and new versions are published by the World Intellectual Property Office (WIPO). Under the Nice Classification, goods and services are divided into 45 classes (1-34 being for goods; 35-45 for services). Applications should be made in the classes of goods and services where the trademark is already being used and intended to be used.
A trademark application can be filed as a multiclass application, where the applicant seeks registration for more than one class; or as separate single class applications, with one application for a trademark for each class. Single class applications are generally recommended over multiclass applications. While the official fee for both kinds of applications is the same, if an objection or opposition is raised or filed even against one class in the multiclass application, the registration process in the other classes comes to a halt. Further, if the defence to such an objection or opposition fails, then the multiclass application will be refused as a whole.
Stage 2: Filing the trademark application
Upon determining that no similar trademark exists, a trademark application can be filed for the specification of goods/services for which it is being used or is proposed to be used, online on the official website (www.ipindia.com) or physically at the relevant Trademark Registry in which jurisdiction the applicant resides or operates. The Trade Marks Registry is headquartered in Mumbai, and has offices in Ahmedabad, Chennai, Delhi and Kolkata. Each office has jurisdiction over specified states in India. Foreign nationals or entities can also apply for trademark registrations in India, and the appropriate Trademark Registry would be based on their address of service in India, or their local attorney’s location.
Documents required at the time of filing include details of the applicant (name and address), specifications of goods and/or services, whether the trademark is being used, and so on. After the application is received, the Registry accords a date of filing and an application number to the trademark. Once filed, the trademark can be used by the applicant with a superscript of the ™ symbol, which indicates that a trademark has been applied for.
Stage 3: Examination of Applications
After filing, trademark applications are examined by the Trade Marks Registry in approximately one to two months’ time, and objections, if any, are raised. Objections are raised on two types of grounds:
- Absolute Grounds (Section 9, Trade Marks Act): e.g., distinctiveness, devoid of distinctive character, not capable of distinguishing goods or services;
- Relative Grounds (Section 11, Trade Marks Act): e.g., similarity with an earlier trademark already on the Register.
Objections are raised by way of examination reports, to which responses must be filed within one month of receipt. If a response is not received within this time, an application is deemed to have been abandoned. If the Examiner has further objections, a show cause hearing is scheduled.
Stage 4: Advertisement
If the Examiner is satisfied with the response to the objections, or with the show cause hearing, or if the Examiner does not raise an objection at all, the trademark is accepted and advertised in the Trademarks Journal. The Journal is published weekly on the official website. Once advertised, the trademark is open for opposition purposes by third parties, for a period of four months.
Stage 5: Registration and Renewal
If no opposition is filed by a third party within four months from the date of advertisement in the Journal, the trademark proceeds to registration. The Registry issues a soft copy of the registration certificate, and the applicant can use the symbol ® as a superscript with the trademark after receiving the registration certificate. A trademark is registered for ten years from the date of filing of the application, and is renewable every ten years thereafter, for a fee.
The Registrar usually sends a notice to the proprietor of the trademark asking them to renew their trademark. A trademark cannot be removed from the Register unless a notice has been served. If the trademark is not renewed, or fees are not paid, within the prescribed time, the proprietor of the trademark can apply for restoration of the trademark with an additional fee, between six months to one year after the prescribed time. If the trademark is neither renewed nor restored, it is removed from the Trademarks Register.
Why trademark registration is useful
Trademark registration is not compulsory, but it protects brands and businesses. A trademark registration provides you with full ownership of the trademark nationwide and grants the power to take infringement action against third parties copying the brand name, file police complaints if infringing or counterfeit goods are sold, and generally prevents competitors from using similar or identical trademarks.
However, unregistered trademarks also have certain legal protections, under common law concerning unfair competition, and for dilution and passing off, among others. Although unregistered trademarks enjoy limited rights, it is advisable for businesses to register their trademarks at the earliest.