Introduction:
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 10th 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 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 renewable 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. A 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.
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.
Fact Sheet:
| Application | |
|---|---|
| Priority application | Yes |
| Late submission of priority docs | 2 months |
| Multi Class application | Yes |
| Service marks | Yes |
| Classification of goods/services | Nice Classification - 10th Edition & Fourth Schedule of the Indian Trademarks Rules, 2017 |
| Trademark in use | Not necessary. Can be filed on a proposed to be used basis. |
| Renewal | |
|---|---|
| Application for renewal | Can be filed 1 year prior to expiry date |
| Renewal with surcharge | within 6 months fom expiry date |
| Restoration with surcharge | within 6 to 12 months from the expiry date |
| Renewal Valid for | 10 years |
| Examination | |
|---|---|
| Absolute grounds | Yes |
| Relative grounds | Yes |
| Deadline to respond to examination report | 30 days |
| Hearing before the examiner | Yes |
| Appeal against the examiner's order | Yes to IPAB |
| Publication in the trademarks journal | Yes |
| Publication fees | No |
| Open for opposition | 4 months |
| Registration fee | No |
| Registration | 10 years from the date of application |
| Cancellation | |
|---|---|
| Cancellation for non use | Yes |
| Cancellation on Non Use grounds | 5 years preceeding the date of application for cancellation |
Requirements:
All information/documents are to be in English/Hindi or a certified/notarized translated copy of the same in English is required.
Required information:
- Name, nationality, legal status and address of the applicant.
- Trade description of the applicant. (Nature of business of the applicant – manufacturers, exporters, service providers etc).
- The depiction of the trademark (word or label in jpg/png format).
- Description of goods/services.
- Date of first use (if the mark has already been used in India in DD/MM/YYYY format).
- In case the mark is claiming colors/color combination, then a clear indication and pantones/name(s) of the colors used.
- If the trademark is in any other language other than English/Hindi then a translation/transliteration of the same in English.
- In case priority is claimed, the priority application number, filing date and the priority country.
Required documents:
- Power of attorney in original. Notarization/legalization is not required. The POA can also be submitted on a later date after filing the application.
- In case priority is claimed a certified copy of the priority document. The priority document can also be submitted within two months from the date of filing the application in India.
Required documents:
- Power of attorney in original. Notarization/legalization is not required. The POA can also be submitted on a later date after filing the application.
- Certified copy of the name change document in English or a verified translation of the same in English.
Required documents:
- Power of attorney in original. Notarization/legalization is not required. The POA can also be submitted on a later date after filing the application.
- Notarized copy of the assignment deed containing clear information about the Indian trademark application(s), valid consideration and mention of the transfer of goodwill or certified copy of the merger document in English or a verified translation of the same in English.
- An affidavit of no pending litigation and in support of the transmission of rights
- A statement of case of ownership change
Required documents:
Power of attorney in original. Notarization/legalization is not required. The POA can also be submitted on a later date after filing the application.
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