In India, law and provisions related to Trademarks are governed under The Trademarks Act, 1999 and the Trademarks Rules, 2002, as may be amended from time to time. Trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours. “Trademark” may include a device, name, signature, word, numeral, shape of goods, packaging or combination of colours or any combination thereof. Further Section 7 of the Trademark Act, 1999, provides for classification of goods and services in accordance with the International Classification for the purpose of registration of Trademarks. In order to comply with the said provision, the Trademark registry refers to NICE Classification which can be accessed here. It specifies goods under class 1-34 and services under class 35 to 45.
In order to get trademark protection, it is essential to register the trademark. It is not per se mandatory to register a trademark but strongly recommended because it prevents others from copying your mark and misrepresenting other products with your mark. Trademarks help customers to differentiate a brand from another, and recognise the brand and the brand value in a single glance like the logo of a tick sign for Nike or a jumping wildcat for Puma and so on. Trademark registration is perpetual in nature. Unlike patents, trademarks do not have a definite limitation period. Where a patent expires in 20 years, a trademark registration expires after 10 years of its registration but can be renewed again for another 10 years. This process can be done indefinitely i.e. as long as you keep renewing the trademark it will not expire and will continue to be under the protection of the Act.
1. Selecting a trademark
The first thing to remember in the process of trademark registration is selecting a unique and distinctive mark that will represent your product/company. The next step would be identifying the class that the mark would belong to. There are 45 classes of goods and services under which a trademark can be registered. Classes 1-34 are for goods and classes 35-45 are for services.
2. Trademark search
After selecting a trademark, it is pertinent to carry out a trademark search to check if the the selected mark is similar to any already existing and registered trademark. Our Trademark Agent or Attorney conducts due diligence and availability searches at the Indian Trademark Registry to confirm if there are any similar trademarks already registered under that particular class (or a related class), thereby verifying whether the mark is registrable under the trademark law or not.
3. Filing trademark application
Based on the results of the trademark search, our trademark attorney will draft a trademark application in furtherance of the registration process. If the client’s mark is not a clear mark, or is similar/ identical to existing mark, the mark being proposed for filing may need to be amended/ changed.
4. Application allotment
It takes about one or two working days for a trademark application allotment number to be provided. At this point, the applicant may affix a “TM” symbol next to the mark.
5. Vienna codification
Registrar of Trademarks applies the Vienna Classification to the mark based on its figurative elements.
6. Publication in tm journal
All trademarks whose registration is accepted by the registry are published in the trademarks journal that is published weekly by the registry. This publication given the public an opportunity to oppose to the trademark registration within a period of 4 months. For more details on the Trademark Opposition, please visit the (Trademark Opposition Page).
7. Registration of trademark
Once your Trademark Application is filed/ registered with the Indian Trademark Office, trademark examiners examine and approve the trademark application. After the approval of the trademark, it is registered and the symbol can be used along with the mark, which implies that Trademark or Service Mark has been registered with the Indian Trademark Office.
- Trademark/Logo you wish to Register.
- Date of first use of the Trademark in India or confirmation that the Mark is ‘proposed to be used’
- Name, Address, Nationality, and Particulars of the Applicant (whether Individual, Society, Trust, Partnership Firm, or Company).
- Details of Goods or Services for which registration is required.
- Address for correspondence with Name, Phone Number, and Email id.
- Power of Authority.
1. Is the Trademark Registration mandatory?
Registration of a trademark is not mandatory. However, the registration is the prima facie evidence of the proprietorship of the trademark under registration. It is to be noted that no suit can be instituted for infringement of unregistered trademarks. Nonetheless, in case of unregistered marks, an action can be brought against any person for passing off goods or services.
2. Can I carry out Public Search on my own?
Yes. In case you wish to carry out your own search (identical as well as similarity), following are the recommended steps for the same: At the first step, you may check your mark’s availability on the government portal using the
- Go to the government search portal.
- Select the relevant class of search from a list of 45 different business classes listed here.
- Carryout Search using the “Start With”, “Contain” and “Phonetic” each in the drop-down instead of only “Start With” to have a broader and clear search. However, “Start With” normally provides only marks starting with the word of the subject mark.
- Please note that Trademark Registry will also object if the name is similar sounding. Thus, for better results, search similar sounding words as well through the search option PHONETIC Example: A keyword like Kryzalcan have following terms that are similar sounding: Crizal, Cryzal, Creezal, Crisal, Crysal, Creesal, Krizal, Kreezal, Krisal, Kreesal, Krysal.
- Also note that the website often encounters downtime error, and sometimes shows “no record found” while that is inaccurate. And thus a minimum of 2-time confirmation is recommended if such a scenario occurs.
- Please note that the normal update in the portal is done on an average period of one month. Thus, recent filings may not reflect in the search.
- If you find any result similar to your mark and the same/ similar class or same similar business description, the name is recommended to be changed to avoid any objection/opposition during the trademark registration process.
3. Is the Trademark liable for removal on the ground of non-use?
Yes, a registered Trademark can be removed on the basis of non-use. A Trademark that was registered without any bona fide intention and has not been used till date three months before the date of the application for removal; or a Trademark that has not been used for a continuous period of five years from the date of registration of trademark and application was made after three months from the expiry of five years, can be removed on the basis of non-use. However, there are special circumstances under which non-use of the registered mark may be excused when there exist special circumstances in the trade, which includes restrictions on the use of the Trademark in India imposed by any law or regulation [Section 47 (3)].
4. Once registered, for what period of time is a Trademark effective?
Registration of a Trademark is valid for a period of 10 years. It can be renewed every 10 years. If no application is filed within six months after the expiration of the last registration of the Trademark, the trademark expires.
5. What are the benefits of a registered Trademark?
Below are the exemplary benefits of a registered Trademark:
(i) Gives Exclusive Right to the owner to use the mark in relation to his Goods and Services.
(ii) Prevents and restricts others from using the same or similar mark.
(iii) Provides remedies to the owner at the time of infringement.
(iv) A registered Trademark can be used as a basis to obtain registration in some foreign countries.
6. What can be registered as a trademark in India?
Following marks can be registered under the Indian trademark law:
- Invented / Coined Words
- Combination of colors
- Shape of goods
- Sound Marks
7. Can a three dimensional trademark registered in India?
Yes, as per the Indian Trademark Law, 3-D marks or Three Dimensional marks can be registered in India.
8. Can Sound be registered as a trademark in India?
Yes, Sound Marks can be registered in India under the Trademark Rules, 2017 and it has to be submitted in the MP3 format not exceeding 30 seconds length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations.
9. Can a Domain Name be registered as a Trademark or Service Mark in India?
Yes, Domain Names can be considered to be Trademarks or Service Marks. If it is merely used to indicate the URL or address at which a web site may be found, such use is not sufficient. It must be used as a source identifier for the Goods or Services.
10. Is it possible to have a descriptive trademark registered in India?
It is not possible to register a Descriptive Trademark unless it has acquired distinctiveness or secondary meaning by virtue of long-standing use and the resulting recognition.
11. Whether foreign proprietors can apply for registration of Trademark in India?
Yes, foreign proprietors can apply for registration of Trademark in India. The Indian Trademark Law is TRIPS compliant and provides for the protection of well-known trademarks and recognizes trans-border reputation.
12. Is the use necessary for filing a trademark in India?
No, the use of mark prior to registration is not mandatory in India. Trademarks that are proposed to be used can also be registered in India.
13. How can we know whether similar marks have already been registered in respect of the same type of goods in India?
A trademark search can be conducted in India on the Indian Trademark Registry’s Website.
14. Does Indian Trademark law bestow protection to unregistered Trademark?
An action for Passing Off can be brought for misuse of an Unregistered Trademark.
15. How long does it take to get a trademark registered in India?
It takes around 6 months to 12 months for the mark to get registered in case no objection is raised against the application by the TM registry.
16. What is the term of registration under the Madrid Protocol / International Application?
The term of registration under the Madrid Protocol is 10 years from the date of application. For more information, click here.
17. What are the languages in which an application under the Madrid Protocol / International Application can be filed?
An application under the Madrid Protocol / International Application can be filed in the following three languages:
18. What should be the size of a Trademark that is to be filed in an application under Madrid Protocol / International Application?
This size can vary from 3cm x 3cm to 8cm x 8cm.