4 Steps to Register a Trademark in India - The fast and cost effective way.

While the Indian Trademark Office has been constantly trying to complete the mammoth task of clearing several thousands of trademark applications pending before it at various stages of prosecution, fulfilling the following steps would help you to protect your trademark in India quickly and cost effectively.

1. File your trademark application electronically/online.

The Indian trademark office accepts applications for registration of a mark electronically. In a bid to encourage online filing, the New Trade Marks Amendment Rules, 2017 provide for 10% discount on the official fee for applications filed online when compared to physical filings. Therefore, file your application online and save that tree! There are other reasons why you should file your application online. The application number and filing confirmation is instantly generated and unnecessary delays such as errors on the data manually entered from the paper application and costs and delays to rectify these errors are avoided. It also helps you in keeping paperless records of your trademarks portfolio.

2. Be clear on the specification of goods and services covered by your application.

While filing a trademark application, you need to specify the description of goods and/or services which you are using your mark. The Indian Trade Marks Registry follows the current edition of the NICE Classification as updated and issued by WIPO. The Trade Marks Registry stringently adheres to the NICE Classification and therefore, in order to avoid unnecessary objections, delays and additional costs, one ought to ensure that the specification of goods and services do not deviate from the acceptable list of goods and services as per NICE Classification.

3. Submit all necessary documents at the time of filing.

There are only three documents that you may have to submit at the time of filing the application. A certified copy of the Priority Application, when you claim priority from an application filed in any of the country which is a member of the Paris Convention [however, there is a provision to submit the certified copy of the priority document within 2 months from the date of filing the Indian application], an affidavit along with evidences of usage of the trademark in India when you file an application claiming usage and the Power of Attorney/Authorization if the application is filed through your counsel. Besides these documents, if the Applicant is claiming the status of a start-up or a small enterprise, then a copy of the Start-up recognition certificate, or the MSME certificate needs to be mandatorily submitted while filing the application. If the said documents are not submitted at the time of filing the application, the Examiner raises a non-substantive objection on missing documents which not only causes delay in your application proceeding to the next stage but also additional counsel costs for late submission of documents and responding to the trademark office’s objections.

4. Claim date of first use of your trademark in India.

Using your trademarks in India plays a very important role in trademark protection strategy and since India is a common law country, usage plays an important part in terms of overcoming objections on absolute grounds by convincing the examiner that the mark has acquired distinctiveness and also in oppositions and any action against third party infringers. .

Over the years, the concept of usage has been expanded through judicial interpretation from actual sales and physical availability of products to usage over the internet, website analytics and can be established by any documentary evidence that shows that the mark had been accessed by people in India. The Indian Courts have also held that limited sales, knowledge of the mark within specific circles, advertisements in magazines, newspapers, television, video films, cinemas, and internet circulated or made available in India even without the physical existence of goods/services in the Indian market amounts to use of the trademark in India. So, the test to determine usage needs to be not just the physical presence of the goods/services in India but also to use the mark in India and such usage is bona-fide and the public has knowledge about the trademark.

Accordingly, if you are filing your trademark application claiming usage from a particular date, you are mandatorily required to submit an affidavit, along with evidences attesting to such usage of the trademark.. Earlier, such User Affidavits were only submitted if specifically required by the Examiner/Registrar, however, post enforcement of the Trade Marks Amendment Rules, 2017, the requirement for filing a user affidavit has been made mandatory.

When the trademark application has been filed with sufficient information and requisite documents, and the mark passing the tests of objections under absolute and relative grounds, the Trade Mark Office allows the application to be advertised in the Trade Marks journal. This in practicality saves several months of delay that can be caused by non-compliance of the above-mentioned steps, such as missing POA and User Affidavit, etc.

Disclaimer: The information contained herein is for informational purposes only and is not legal advice or a substitute for legal counsel.

We hope this article helped you learn the steps to register a trademark in a fast and effective way in India. You may also want to see our article on difference between filing a trademark as a word and as a logo.

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