Before the Trade Marks Rules, 2017, each type of trademark needed its own application form, with further variations for single-class and multi-class filings and for applications claiming priority.
The 2017 Rules simplified this considerably. All of these applications are now filed on Form TM-A.
What still varies is the substance: what kind of mark you are filing, how many classes it covers, whether you are claiming priority, and which route you use to reach the Indian Register.
By type of mark
Ordinary trademark
The standard application, for a word, a device, or any combination of the two. This covers the large majority of filings.
Certification mark
Defined in Section 2(e) of the Trade Marks Act, a certification trade mark distinguishes goods or services certified by the proprietor in respect of origin, material, mode of manufacture, or performance, from goods or services not so certified.
In plain terms, it certifies a characteristic of someone else’s goods. The ISI mark is the familiar Indian example. The proprietor sets the standard and certifies compliance; it does not trade under the mark itself.
Certification marks are registrable under Chapter IX of the Act, and the application requires the regulations governing use of the mark to be filed alongside.
Collective mark
Where the mark belongs to a collective group or association of persons. CII is an example.
A collective mark identifies goods or services of members of that association. Like certification marks, the application must be accompanied by regulations governing use.
Series mark
Where a proprietor uses or intends to use a common primary element across several variants, those variants can be filed as a series in a single application rather than as separate applications.
McDonald’s marks incorporating “Mc”, such as McChicken and McCafé, illustrate the concept.
Series applications are efficient where they are accepted, but the Registry examines whether the marks genuinely constitute a series. Variants that differ in matter affecting the identity of the mark will be objected to, and the application then has to be divided.
By number of classes
An application can be single-class or multi-class.
A multi-class application covers several classes under one application number. It is administratively simpler, but the official fee is still charged per class, so there is no saving on fees.
There is one practical trade-off worth knowing. In a multi-class application, an objection or opposition affecting one class can hold up the whole application. Where one class is materially riskier than the others, separate applications sometimes move faster overall.
See trademark classes in India for how to work out which classes you need.
By filing basis
An application is filed either on the basis of use or as proposed to be used.
If the mark is already in use in India as at the filing date, the application claims a date of first use, and that claim must be supported by an affidavit of use filed with the application.
If the mark is not yet in use, it is filed on a proposed-to-be-used basis and no affidavit is required. Starting to use the mark after the filing date does not by itself create a requirement to file one, unless the examiner specifically calls for it.
By route into India
Indian application
Filed directly at one of the trademark offices in India through the IP India e-filing portal.
International application designating India
India acceded to the Madrid Protocol with effect from 8 July 2013, so it is possible to designate India in an international application filed through WIPO.
It is equally possible to file an international application through the Indian trademark office as office of origin, where the applicant has a qualifying Indian basic application or registration.
The Madrid route is attractive for its single application and single set of fees. It also brings its own complications in India, particularly around provisional refusals, which are dealt with in the Madrid Protocol guide.
Priority claims
Where an application has been filed in a Convention country within the preceding six months, priority can be claimed, giving the Indian application the earlier filing date for the purpose of assessing conflicting rights.
A certified copy of the priority document is required. It should be filed with the application, or within two months of the Indian filing date, to avoid an objection.
Frequently asked questions
Do I use a different form for a certification or collective mark? No. Since the 2017 Rules all trademark applications are filed on Form TM-A. What differs is the supporting material, since certification and collective marks require regulations governing use.
Is a multi-class application cheaper than separate applications? No. Fees are charged per class either way. The difference is administrative convenience, and the risk that a problem in one class delays the others.
Can I convert a proposed-to-be-used application to a use-based one? The filing basis is fixed by what you claim at filing. Where use begins afterwards, that use is relevant to enforcement and to defending non-use challenges, but it does not retrospectively change the basis of the application.
How long do I have to claim priority? Six months from the first filing in a Convention country.
Should I file directly in India or through Madrid? It depends on how many countries you are covering and how likely you are to face objections in India. Madrid is efficient across many jurisdictions; a direct Indian filing gives you a local agent from day one, which matters if a provisional refusal is likely.
Useful official resources
- IP India e-filing portal
- WIPO Madrid Monitor
- TMClass — includes the Indian trademark office
- Trade Marks Act, 1999 — Sections 2(e), 2(g), Chapter IX
Not sure which route or structure suits your portfolio? Talk to us.