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- Application Stages and Timelines
- Information and Documents Required for Filing
- Amendment, Rectification, Renewal & Restoration of Trademarks
- Opposition of Trademark
- Assignment and Licensing of Trademark in India
- Madrid Protocol
- 1. Why is it important to identify the relevant classes?
Before filing a trademark application, it is necessary to identify the classes in which one wishes to seek protection for their trademark.
An application should be made in the relevant classes of current goods/services as well as in classes where there is intent to use.
The specifications are covered under the NICE International Classification of Goods and Services which are divided into 45 classes. It ranges from Class 01 to Class 45 (wherein Class 01 to Class 34 deals with specification of goods and Class 35 to Class 45 deals with specification of services.
- 2. Can an application be filed in more than one class for the same trademark?
Yes. The trademark application can be filed as a multiclass application or as separate single class applications
- 3. Is prior search before filing a trademark application advisable?
Before adopting a trademark, a trademark search is highly recommended, as this will give an indication of any existing trademarks which have been applied for/or registered in the Trademarks Registry. Accordingly, it is advisable to conduct a search on the official website of the Trademarks Registry as well as an online search to determine registrability of the proposed trademark
- 4. What is a Well-Known Trademark?
The term ‘well-known trademark’ refers to a mark which has become so well-known to the substantial segment of the public through its extensive and continuous use. Use of the mark in relation to any other goods or services by another party may be taken as indicating a connection between the two parties.
Individuals/ Companies that have acquired immense brand value, reputation and goodwill in India through their trademarks should get the trademarks included in the list of well-known trademarks to safeguard themselves from future infringements and dilutions
- 5. What is the criteria for determining a Well-Known Trademark?
The Registrar shall, while determining whether a trademark is a well-known trade mark, takes into account all the facts which he considers relevant for determining a trade mark as a well-known trade mark including the following factors:
- That the trade mark is well known to the public at large in India;
- The number of persons involved in the channels of distribution of the goods or services;
- The number of actual or potential consumers of the goods or services;
- The duration, extent and geographical area of any use of such trade mark;
- The business circle dealing with those goods or services.
The record of successful enforcement of the rights in that trademark in particular, the extent to which the trademark has been recognized as a well-known mark by any court or Registrar under that record
- 1. Who can file a Trademark application in India?
Any person claiming to be the proprietor of a trademark, used or proposed to be used by him, may file an application for the registration of a Trade Mark. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark.
- 2. What are the minimum documents/information required for filing trademark application in India?
The minimum documents and information which are required for filing a filing trademark application in India is as follows:
- The name, address and nationality of the Applicant. If the Applicant is a company, the country or state of incorporation with the complete address. If a partnership concern, then the name of all the partners;
- A list of goods and/or services for which registration is required;
- Trade Mark Entity: Whether the Applicant is an Individual, Start-up or a small enterprise;
- Soft copy of the trademark to be registered;
- If the application is filed claiming priority from an earlier filed application in another country, details of that application is also required at the time of filing of the application in India (application number, filing date, country and goods/services). A certified priority document or its duly notarized copy is to be submitted with the Trade Marks Office in original within two months of the filing of the application. If the certificate is not in English, a certified/notarized English translation is required.
- USE: Date of first use of the trademark in India, if at all used or else the application can be filed on a proposed to be used basis. In case the use of the trademark is claimed prior to the date of the application, an affidavit testifying to such use along with supporting documents shall have be filed along with the application. [The term ‘use’ in India has an extensive meaning and does not necessarily mean physical presence of the goods or services in India. Advertisement of the mark in foreign journals having circulation in India or the use of the mark in sales invoices, letterheads etc. bearing the trademark shall constitute ‘use’ of the mark in India.].
- Power of Attorney: A prescribed document simply signed by the authorized signatory of the Applicant with the name and designation clearly mentioned (no legalization/ notarization is required).
- 3. Is it mandatory to file Power of Attorney while filing a Trademark application?
It is mandatory to submit a Power of Attorney at the time of filing the application on behalf of an Applicant. The Power of Attorney needs to be simply signed by the Applicant (no legalization or notarization is required).
- 4. Is it mandatory to submit “Statement of Use” at the time of filing of application?
The trademark application can be filed either claiming usage from a date prior to the date of filing of application or on Proposed to be Used basis.
- In case the Applicant wants to file an application claiming usage of the mark in India prior to the date of filing of application, then an affidavit, along with supporting documents testifying such use will also have to be filed. The affidavit needs to be signed by the authorized signatory and notarized by a Notary Public.
- In case the Applicant wants to file an application on a Proposed to be Used basis, then an affidavit substantiating use, is not required.
- 1. Can an Applicant claim a reduction in official fee?
Yes, the applicant can claim a reduction in official fee if at least one of the following conditions is satisfied:
- The Applicant is an Individual; or
- The Applicant is a Startup; or
- The Applicant is a Small Enterprise
However, such a reduction in fee will not be available if an eligible Applicant jointly files a trademark application with an Applicant which is “other than a Small Enterprise”. “Other than Small Enterprise” herein refers to a company/ organization which is not a Startup or a Small Enterprise.
- 2. What is a Startup according to the Trademarks Act?
The Trademark Rules, 2017 have divided the Applicants in two categories:
Category A: Individual/ Startup / Small Enterprise
Category B: Others
A Startup means an entity in India recognized as a Startup by the competent authority under Startup India Initiative and submitting declaration to that effect.
The Trademark Rules, 2017 define “Startup” as an entity that satisfies the following criteria:
- It is incorporated or registered in India, not prior to five (5) years,
- Has an annual turnover not exceeding INR 25 Crores (Rupees Twenty-Five Crores only) / USD 250 Million (Two Hundred and Fifty Million United States Dollars) (approximately) in any preceding financial year and
- Is working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property.
- 3. Can a non-Indian company be considered as a Startup?
A non-Indian company can be considered as a Startup if it fulfils the criteria for turnover and period of incorporation / registration as per Startup India Initiative.
- 4. What are the documents required for claiming fee reduction applicable for a Startup?
The Applicant would be required to obtain a Certificate, under the Start-up India Initiative, from the Inter-Ministerial Board of Certification as constituted by the Department of Industrial Policy and Promotion from time to time.
- 5. What is an Enterprise according to the Trademarks Act?
An Enterprise means an industrial undertaking or a business concern or any other establishment, by whatever name called, engaged in the manufacture or production of goods in any manner pertain to any industry specified in the first schedule to the Industries (Development and Regulation) Act, 1951 (65 of 1951) or engages in providing or rendering or any services or services in such an industry.
- 6. Who is a Small Enterprise according to the Trademarks Act?
A Small Enterprise can be classified as the following:
- Small Manufacturing Enterprises: An Enterprise engaged in the manufacture or production of goods wherein the investment in plant and machinery is more than INR 25 Lakh (Rupees Twenty-Five Lakh only)/ USD 2.5 Million (Two Point Five Million United States Dollars) (approximately) but does not exceed INR 5 Crores (Rupees Five Crores only)/ USD 50 Million (Fifty Million United States Dollars) (approximately).
- Small Service Enterprises: An Enterprise engaged in providing or rendering of services wherein the investment in equipment is more than INR 10 Lakh (Rupees Ten Lakh only)/ USD 1 Million (One Million United States Dollars) but does not exceed INR 2 Crores (Rupees Two Crores only)/ USD 20 Million (Twenty Million United States Dollars) (approximately).
- 7. Can a non-Indian company be considered as a Small Enterprise?
In case of foreign enterprise, an Enterprise which fulfils the aforementioned criteria is eligible to be an Applicant in the Small Enterprise category.
- 8. What are the documents required for claiming a Small Enterprise status?
An Applicant is required to submit evidence of registration under the Micro, Small and Medium Enterprises Development Act, 2006. Accordingly, an MSME Registration or SIS Registration Certificate would suffice accompanied with the official fee.
- 1. Is amendment in Trademark application allowed under the Trademarks Act?
The trademark law in India provides the Applicant of a trademark with an opportunity to correct an application only for minor changes and not for changes that substantially affect the identity of the trademark or the goods or services covered by the application. The correction or amendment as allowed can be made before or after registration of the trademark application.
- 2. What are the permissible amendments under the Trademarks Act?
Following are the permissible amendments under the Trademarks Act:
- Amendment/correction in the name, address or description of the registered proprietor
- Cancel the entry of a trademark on the Register
- Amendment of user date
- Amendment in the specification of goods and/or services
- 3. Can action be taken against a trademark that is wrongly registered or wrongly remaining on the Trademarks Register?
A mark may have been wrongly registered or may be wrongly remaining on the register. In such cases the Act provides for rectification of the register.
Any person, aggrieved by an entry wrongly made or wrongly remaining on the register of trademark, is entitled to file a petition for:
- Rectification of the Trademark in the Register
- Cancellation of Registration or removal of the registered mark
- 4. What is rectification of a Trademark?
Rectification of a trademark can be filed in India on grounds of contravention or failure to observe a condition of the trademark already entered in the Register or an error in registering the trademark.
The grounds for filing a rectification action are as follows:
- Contravention or failure to observe a condition entered in the Register
- The Register suffers from the absence or omission of an entry e.g. a disclaimer, a condition or a limitation on the registered mark.
- The entry made in the Register was made without any sufficient cause i.e. registration was obtained by fraud or misrepresentation of facts or the mark registered was similar to an already registered mark, etc.
- Error or defect in any entry made in the Register.
- The entered mark was wrongly remaining on the Register i.e. it is contrary to some of the provisions of the Act or is likely to cause confusion amongst the public and trade.
- The renewal fee has not been paid.
- 5. What is cancellation of a Trademark?
Cancellation of a trademark is a process in which a party seeks to remove a registered trademark from the register. This can be done: -
- if it is proved that the trademark was registered without any bona fide intention of use by the owner.
- if the trademark hasn’t been used for a continuous period of five (5) years from the date of registration of the mark.
- 6. Who can file for rectification/cancellation proceedings?
Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may file for rectification/ cancellation proceedings. An ‘aggrieved person’ implies any party whose trading interests are affected by the presence of the registration on the register.
- 7. Where does one file a rectification/ cancellation action?
An application can be filed in the prescribed manner before the Trademarks Registry where the application for its registration was filed or at the Appellate Board, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.
- 8. What is the effect of rectification?
The Tribunal i.e. the Registrar or the Appellate Board, after giving a notice as well as an opportunity of being heard to the concerned parties, may either cancel, vary, add or remove the entry in question.
- 9. What are the documents required for filing a rectification/ cancellation action?
The documents required for filing a rectification/ cancellation action are as follows:
- An application is to be made in triplicate on the requisite form
- A statement of case, setting out the nature of the Applicant’s interest, facts upon which the case is based and the relief that is sought.
- 10. How to renew a Trademark in India?
The registration of a trademark is valid only for a period of 10 years. After which, it can be renewed from time to time. Trademark renewal preserves those rights which are only available to a registered mark. In case the proprietor fails to renew the trademark, then he shall lose all the protection that comes along with registration.
Application for renewal of the trademark can be filed on or before 6 months, before the expiry of the registration in a prescribed form before the Registrar along with the requisite renewal fee.
A renewal request can also be filed within 6 months after the expiry of the renewal date along with the requisite late renewal fees.
If the request is not filed and the fees is not paid within the aforementioned periods, the trademark is liable to be removed from the Register.
- 11. How to restore a Trademark in India?
If more than six (6) months have lapsed from the renewal date and no renewal request has been filed, then an application for restoration is required to be filed within one (1) year from the date of expiration of the renewal date. The application is to be accompanied with the prescribed fee and a statement explaining the factors that led to the trademark not being restored.
The Registrar will restore the Trademark if satisfied that it is just to do so.
- 1. What is the next step once the trademark has been advertised in the Trademarks Journal?
After the examiner reviews the trademark, if the trade mark application is considered allowable, the application is advertised in the Trademarks Journal. Once advertised, the trademark is open for opposition purposes for a compulsory period of four (4) months. In case no opposition is filed within this stipulated time period, the mark proceeds to registration. The purpose behind publishing a Trademark in the Journal is to enable any third party to view the trademark and file a trademark opposition against it.
- 2. Who can oppose a Trademark Application in India?
“Any person” may oppose a trademark. This person does not necessarily have to be a registered proprietor of any mark. He can be a purchaser, customer or a member of the public likely to use the goods. The rationale behind this is that the Opponent is not only representing himself but the public at large because having two similar marks in the market can only result in confusion.
- 3. What is the period within which a Notice of Opposition can be filed?
The Notice of Opposition has to be filed within four (4) months from the date of publication of the mark in the Trademark Journal. The period is not extendable under any circumstance.
- 4. What are the stages in an Opposition proceeding?
Stage 1: Filing a Notice of Opposition/Filing a Counter-Statement
Any person wanting to oppose a mark can do so by filing a Notice of Opposition on the prescribed form along with the prescribed fee within four (4) months of advertisement of the mark. It is first sent to the Registry for review and if all the formalities are met, the Registry will then serve the notice on the other party.
A counter-statement or reply to the opposition must be filed within two (2) months. There is no extension to file a counter-statement which means that if the Trademark Applicant fails to file a counter-statement within two (2) months of receiving the Notice, the mark shall be deemed abandoned. The counter- statement is first sent to the Registry for review and if all the formalities are met, the Registry will then serve the counter-statement on the Opponent.
Stage 2: Filing of Evidence in support of Opposition
Within two months (extendable by one (1) month of receiving the counter-statement, the Opponent has the choice of providing evidence in support of his opposition in form of an Affidavit to strengthen the case. The Opponent can choose to waive filing an Affidavit if he wants to rely on the facts stated in the notice of opposition. Whatever maybe the choice, the Opponent has to inform the Officials and the other party within the prescribed time otherwise the opposition will be tagged as abandoned.
Stage 3: Filing of Evidence in support of Counter- Statement
Within two (2) months of receiving evidence/intimation of waiver by the Opponent, the Applicant has to file evidence in support of his counter-statement /application. The Applicant also has an option to waive his right to submit any evidence.
Stage 4: Filing of Evidence in Reply
Within one (1) month of receiving evidence/waiver, the Opponent again has the option to file additional evidence in support of his opposition. This option is given to achieve some sort of finality in the proceedings, to rebut the evidence produced by Applicant.
Stage 5: Hearing
Ordinarily with three (3) months of the completion of evidence, a hearing is appointed and the parties are notified. After hearing the parties and considering the evidence, the Registrar shall decide whether the trademark is to be accepted or not.
- 1. Can a trademark be transferred from one person to another?
Trademarks like any other asset can be transferred from one proprietor to another. The transfer could be temporary through licensing or permanent thorough an assignment. A registered mark, or a mark for which an application to register has been filed is assignable/ transferable.
- 2. What is the difference between Assignment of trademark & Licensing of trademark?
In case of an assignment of a trademark, there is a transfer in the ownership of the trademark registration and in case of licensing, the proprietary rights of the trade mark continue to vest with the original owner but only few restricted rights to use the brand/trademark are given to the third party.
- 3. What is Assignment of Trademark?
Assignment of a trademarks is a process in which the owner of the trademark transfers the ownership and proprietary rights of the trademark either with or without the goodwill of the business. The manner in which an assignment can be made are as follows:
- Complete Assignment to another entity
- Assignment to another entity but with respect to only some of the goods/ services
- Assignment with goodwill
- Assignment without goodwill
- 4. What are the documents required for the Assignment of Trademark?
A trade mark is generally assigned by way of a properly executed and notarized Trademark Assignment Agreement which pertains to the transfer of the mark from the owner to another. Accordingly, a specific request along with the Trademark Assignment Agreement is required to effect such a change of ownership in respect of the mark at the Trademarks Registry.
- 5. What is Licensing of Trademark?
A trademark may be licensed to allow others to use the mark without assigning the ownership and the same may be done for all or some of the goods and services covered. The Trademarks Act refers to a Licensee as a 'Registered User'.
- 6. Is it necessary to record an assignment with the Trademarks Office?
Once a trademark is assigned it is necessary to record the change in ownership with the Trademark Registry. Specific forms with fees along with the corresponding Assignment Deed have to filed to ensure that the records reflect the ownership details.
The Trademarks Act states that the assignment or transmission shall be ineffective against a person acquiring a conflicting interest in or under the registered trade mark without the knowledge of assignment or transmission.
- 7. Is it necessary to record a License Agreement with the Trademarks Office?
A trademark is licensed by way of a License Agreement. As per the Trade Mark Act, 1999, contrary to the requirement in case of Assignment, the recordal of the license agreement for permitted use with the Trademark Registrar of a trademark is voluntary and not compulsory. However, it is advisable that the Agreement be registered with the Registrar.
- 1. What is the Madrid Protocol?
The Madrid Protocol provides for the international registration of trademarks by filing a single International Application. Indian companies which have procured trademark registrations and/or have pending applications with the Trade Marks Office in India can file a single International Application (“IA”) under the Madrid Protocol.
This IA can be filed across 92 countries based on the same particulars as of the registration/pending application in India (Home Application). The countries which shall be covered by the IA are to be designated by the Applicant at the time of filing.
Once the application has been filed, it is examined and/or prosecuted under the local laws of these designated countries.
- 2. What are the advantages of filing under Madrid Protocol?
- Reduction in cost: The additional fee of engaging local counsels at the time of filing of the application is not required. This reduces the cost of filing the application substantially as a single request can be filed for recordal of assignment, name change, renewals etc.
- Reduction in time: Generally, the countries designated at the time of filing have to either accept or refuse the application within a period of eighteen (18) months from the date of filing of the International application. This reduces the time frame of procuring registrations considerably.
- 3. What are the disadvantages of filing under the Madrid Protocol?
- Any change owing to opposition/rectification/cancellation/objections in the Home Application within a period of five (5) years from the filing of the IA shall also identically change the particulars of the International application across all designated countries.
- If the Home Application is opposed and the application is eventually removed, the International application in such cases shall also be removed from all designated countries.
- The specifications of goods and services that are accepted for various countries and their respective trademark offices may differ.