Generally speaking, the procedure of Trademark Registration in India confirms to the international standards and India is a party to prominent International Conventions and Treaties related thereto, except Madrid Protocol. However there are certain allied technical aspects which if taken care off in professional manner and under customised guidance of proper IP Law Firm / expert Trade Mark Attorney would help brand owners to save their money and time invested in getting their trademarks registered in India and, further help them to curtail consequent infringement / passing off claims.
These facets have further got relevance in view of various technological initiatives of Indian Trademark Office such as facility of Free and portal based Trademark Search, E-filing of applications and responses, Online Application status and other similar facilities.
SOME BASICS OF INDIAN TRADEMARK LAW –
Governing Law – (Indian) Trademarks Act, 1999 read with Trademarks Rules, 2002
What Constitutes Trademark / Brand under Indian Law – Any word / symbol derived from signature, name, device, label, numerals or combination of colors or even sound recording capable of graphic representation, used to create distinctiveness in respect of goods / services of the trademark owner.
Who can be Applicant for Trademark Registration – Any person claiming to be the proprietor of a trade mark used or proposed to be used in India can apply for its registration with Indian Trademark Office. Thus even foreign national / company can hold valid Trademark in India.
Classification System – India follows NICE / International Classification system. And various goods and services can be registered in appropriate class(s) out of the total 45 (Forty Five) classes provided under schedule IV of the Trade Marks Act, 1999. These classes earlier 42 (Forty Two) in No. give an indicative summary of such goods and services and final authority regarding determination of the appropriate class(s) in respect of the goods or services in question lies with Registrar of Trademarks.
Benefits of registering a trade mark in India?
The registration of a trade mark under Trademarks Act, 1999 confers upon the owner / registrant following benefits –
1. Exclusive right to the use / grant the license to use the registered trade mark in Indian Territory or specified part thereof;
2. Create new market for its products;
3. Generate authenticity and trust amongst its consumers regarding origin and quality of its goods or services;
4. Create goodwill and thereby enhance financial worth of registrant entity;
5. Right to expanded legal remedies against infringer.
Details and Documents Required for Trademark Registration process –
Soft copy of the Mark to be Registered in India;
First Use date of the Mark, (required in case, Mark is already in use);
Description of related Goods and Services;
Complete details of Applicant
In case of Applicant being an Artificial Entity –
– Name of the entity / Company,
– Communication Address,
– Name and designation authorised to sign required documents.
In case of Applicant being a Natural Person –
– Name of the Applicant,
– Father’s / Husband’s Name,
– Communication Address.
Execution of Board Resolution (if applicant is an Artificial Entity) and Power of Attorney which shall further be required to be notarized and consularised in the home country.
Registration Stages –
The involved procedure of Trademark Registration in India requires an Attorney to possess practical knowledge of the involved steps so that the Applicant does not waste their valuable money and time in proceedings that might be unwarranted in view of its specific trademark or related goods and services. These registration steps are as follows –
1. Filing of Trademark Registration Application in requisite manner,
2. Issuance of acknowledgment by the Trademark Registry with Application No.,
3. Issuance of Examiner’s Report by the Trademark Registry,
4. Filing of Reply to Examiner’s Report on behalf of Applicant,
5. Arranging publication of Trademark in official Trademark Journal, either as Accepted or as Advertised before Acceptance,
6. Replying to third party objections in case any received in a particular case,
7. Attending personal hearing at Trademark Registry for explain applicant’s case,
8. Dispatch of Trademark registration Certificate,
9. Advising Registrant with Renewal Date and related formalities,
10. Ensuring exclusive Trademark exploitation by Registrant through Trademark watch services.
Registration Time Frame – The effective time taken by Indian Trademark office varies between 24 to 48 months, depending upon presence of objections or third party opposition in a particular case. In case of straight forward application or through proper professional handling of registration process, this time frame can be reduced to 18 to 24 months.