Protection of Trademarks in India

The law relating to trademarks in India is governed by the Trademarks Act, 1999, the Trademarks Rules, 2017 and the Trademarks (Applications and Appeals to the Intellectual Property Appellate Board) Rules, 2003.

The Trademarks Act, 1999 replaced the Trademarks & Merchandise Act, 1958 and the Trademark Act & the Trademarks Rules have been amended from time to time to keep in pace with the changing practice of trademark law in India.

An application to register a trademark in India can be filed online or by paper at the trademark offices in Mumbai, Chennai, Kolkata, New Delhi or Ahmedabad.

The Indian trademark office follows the current edition of the NICE Classification in addition to a list of goods and services maintained by the Indian Trademarks Office. The registration of marks is acceptable in classes 1 – 34 in respect of goods and classes 35 to 45 in respect of services. Multi-class applications are possible in India however there is no cost-benefit as the official fee remains the same per class.

Being a signatory of the Paris Convention for the Protection of Industrial Property, one can file convention applications claiming priority in India. A certified copy of the priority document is necessary for claiming priority. The same can be filed within 2 months from the date of filing the application in India.

India acceded to the Madrid Protocol and with effect from July 8, 2013, it is possible to designate India in an international application. It is also possible to file online an international application under the Madrid Protocol through the Indian trademark office.

An application in India can be filed on an intent to use basis or by claiming the use of the trademark in India.

A trademark application filed in India is examined on absolute and relative grounds to determine whether it can be granted protection. The response to the objections should be filed within 1 month from the date of receipt of the examination report. Extensions of 1 month for any number of times can be requested and is given at the discretion of the examiner. When the application is accepted by the trademark office, it is published in the trademarks journal and is open to opposition for a period of 4 months from the date of publication and cannot be extended.

The registration of the trademark is valid for a period of 10 years and can be renewed every 10 years. An application for renewing a trademark registration can be filed at any time during the 6 months prior to the expiration of the registration/last renewal validity. Late renewal is also possible after the expiry and within 6 months from the validity date. Restoration of the registration is possible after 6 months but before 1 year from the validity date of the registration.

A cancellation petition on the grounds of non-use can be filed to remove a trademark from the register if it has not been used for 5 years and three months from the date of registration.

Recording the assignment of trademarks with or without the goodwill of the business, change of name and/or address of the applicant/proprietor, registered user agreements are possible. Amendments to the registered trademark without substantially altering the identity of the mark or the specification of goods and services covered by the registration of the trademark is also possible.

The Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 in conjunction with the Customs Act enables rights holders to register their trademarks with the customs houses at the various ports in India to stop the import of infringing or counterfeit products.

Use of the ® symbol on unregistered trademark, manufacture, import or sale of counterfeit goods, are offences punishable under the laws in India. Legal action can be initiated before the District Courts or High Court of India.