English
Yes, for a broader and stronger protection in India, we recommend registering your trademark in local characters.
If the trademark is registered only in its original version (Latin characters), the protection does not always properly protect its equivalent in the local language. This means that a third party could use or register the same trademark (or a similar one) in local characters.
In additional to the legal benefits, the registration and use of the trademark in local characters can also have commercial benefits. The public in India will recognize your brand more easily if they are able to read and correctly pronounce the mark.
Registering your trademark in its original version, as well as local transliteration/translation, will provide a greater protection from any possible infringements.
The average time frame for the registration approval is 24 months, if no objections or oppositions arise.
No. The registered mark is protected only in India.
A power of attorney is a required to complete the application procedure.
It may demonstrate the acquired distinctiveness of the mark and help overcome an opposition to the application on the grounds of non-distinctiveness.
Pre-filing use of the mark is advantageous. The first person to use a mark obtains the ownership to such mark, even if other parties subsequently register it.
Yes, attack on the ground of non-use is available.
- words
- names (note: personal names are not allowed)
- devices
- certain three-dimensional shapes
- colours (acquired distinctiveness must be proved)
- slogans
- sounds
- trade dress/get-up
- holograms
- collective marks
- certification marks
- well-known marks
- service marks
The order of the application process is as follows
-
Examination – The trademark is examined in respect of:
- Formalities
- Classification
- Clarity
- Descriptiveness
- Distinctiveness
- Deceptiveness
- Conflict with prior registration
- Religious susceptibilities
-
Publication – Details about the application are posted online:
- Mark
- Name of applicant
- Address of applicant
- State or country of incorporation of applicant
- Application number
- Application date
- Goods/services
- Priority claim information
- Dates of first use
- Representation of trademark
- Registration – Official registration is granted once the application is able to pass the first and second phases and once all oppositions are overcome.
- marks contrary to moral standards or public order
- generic terms
- names, flags or symbols of states, nations, regions, or of international organizations
- marks without acquired distinctiveness
- marks that function principally as surnames
- marks that function principally as geographic location names
Yes, the Nice Classification System is effective in India.
The European Union Trade Mark registration (formerly the Community Trade Mark registration) is not effective in India.
Yes, if the following conditions are satisfied:
- If an applicant's home country is a signatory to the Paris Convention
- If the applicant’s home application was filed within the fixed period of six months preceding the application in this jurisdiction
- Registration based on the Madrid Protocol also enables an applicant to claim priority
A trademark must be used within five years and three months from the "sealing date."
The initial term of a registration is 10 years which is calculated from the application date.
The first renewal date of a registration is 10 years from the application filing date.
Yes, it is legal. You may use an unregistered mark for any goods or services.
The answer to this question depends on the characteristics of your mark, your budget and the scope of protection that you would like to have in India.
If your trademark contains distinctive verbal elements (text) as well as design elements (graphics or logos) and you wish both to be protected, our recommendation is to file two trademark applications; one to protect just the verbal elements (the application will be filed as “Word Mark”) and another to protect just the design elements (the application will be filed as “Combined Mark”).
In this case, proceeding with two trademark applications has the following advantages:
- Broader and stronger protection. If a third party files a “Combined Mark” with very similar text to yours but different design, their “Combined Mark” could be accepted for registration if you only filed a “Combined Mark” and not a “Word Mark,” because in its entirety the third party’s mark is still considered different from yours.
- You will be protected if your logo evolves. It is common for companies to change the design of their logo with time. If you file a “Combined Mark” and not a “Word Mark,” your new logo will not be protected. You must use your trademark exactly as registered; if you don’t, your trademark may be subject to cancellation.
- Effective verbal and graphics protection. Filing a “Word Mark” application provides greater flexibility to use your mark in different ways, whether it is presenting it in stylized text or presenting it with different designs (as long as they are not too similar to registered trademarks that belong to third parties). At the same time, filing a “Combined Mark” allows you to protect the design elements of your mark.
If your trademark also contains a slogan or a distinctive design symbol, we suggest you file a specific application for each, as this will give you additional protection.
Registration is not a requirement to obtain rights to a trademark. Prior use is enough to establish ownership to a trademark. India observes the "first to use" rule.
The national trademark office of India is accessible online at the following URL: www.ipindia.nic.in.
Yes. Applicants are required to prove either actual use or intent to use for the application to be accepted.
Opposition is available on the basis of the following:
- proprietary rights
- the mark is descriptive
- the mark is not distinctive
- the mark is misleading, deceptive or disparaging
- breach of copyright
- rights of notorious or well-known mark
- registration in the name of the agent or other representative of the proprietor of the mark
- rights of trade names
- registered design rights
- rights in a personal
- the mark is generic
- the mark is against public policy or principles of morality
Anyone may oppose an application.
The following can be grounds for cancellation:
- the mark is descriptive
- the mark is not distinctive
- the mark is misleading, deceptive or disparaging
- the mark is functional
- rights of protected armorial bearings, flags and other State emblems
- the mark is generic
- the mark consists of a geographical indication
- the mark is against public policy or principles of morality
- the mark includes a badge or an emblem of particular public interest
- the mark is used in a misleading manner
- the mark is prohibited in this jurisdiction
- the application for or registration of the mark was made in bad faith
The following rights are established by registration:
- the exclusive right to use the registered trademark
- the right to sue for infringement against confusingly similar third-party trademark use
- the right to license other third parties to use the trademark
- the right to apply for seizure by customs authorities for importation of counterfeit goods
The opposition period begins on the date on which the Trade Marks Journal is made accessible to the public.
The opposition period ends 120 days (4 months) from the date the Journal was made available to public. This deadline is final and non-extendable.
Yes, India is a party to the Madrid Protocol. However, the Madrid Agreement is not effective in this jurisdiction.
Periodic statements of use are not required.
Subsequent renewals last 10 years from the renewal date of the registration.
The first renewal date of a registration is 10 years from the application filing date.
The following documentation is required for renewal:
- a power of attorney
- a requisition may be raised by the Registry to furnish
- an original certificate of registration
- proof of the previous renewal by way of a copy of the renewal certificate
- or a journal notification regarding the previous renewal
The grace period after the renewal date has expired is 12 months.