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The globalization of the economy in recent decades, accelerated by the birth of a powerful digital economy, has made intellectual property law a crucial tool for the protection of companies that do everything possible to protect their brands. The country has a rigorous legislation on Trademark Law, and its adherence to numerous conventions allows it to be an important player on the international scene. A trademark is defined by Indian law as any combination of signs capable of distinguishing the goods of one company or person from those of another. These distinctive signs are applied to commercial products, and allow consumers to distinguish between them.
According to Indian law, a Trademark is any visible indication or combination of marks capable of identifying the goods of one firm or person from those of another. These distinguishing marks are put to commercial items and help customers to differentiate between them.
1. Origins of Indian Trademars law
Prior to the 1940s, no trademark legislation was contemplated in India. The courts relied on the British common law principles of equity and deception to decide trademark disputes. The year 1940 marked the birth of the Trade Mark Act, later replaced by the Trade & Merchandise Marks Act of 1958.
After the ratification of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and in order to comply with it, the Trademark Act 1999 and the Trade Mark Rules of 2002 were created.
2. Political context of the evolution of trademark law
Since the mid-1990s, India has carried out major reforms regarding all aspects of intellectual property rights. While this law is divided into two categories, artistic and industrial, trademark law is part of the latter. Indeed, the government’s stated goal is to create “an India where intellectual property stimulates creativity and innovation for the benefit of all”.
3. Administrative body governing trademark law
In India, all intellectual property rights, including trademark rights, are regulated by the Controller General of Patents, Designs and Trade Marks (CGPDTM), under the aegis of the government, mainly the Department of Industrial Policy and Promotion and the Minister of Commerce and Industry.
This office is responsible for the control of the registration of the different elements of intellectual property, and verifies that the trademark registration process, which consists of several steps, meets all legal, formal and procedural requirements. For this purpose, several agencies called Trade Marks Registry are available across India. The central agency, located in Mumbai, is the only one competent to deal with international applications for registration.
In addition to the registration of trademarks, the Trade Marks Registry has a number of ancillary tasks, such as providing prior advice as to the registrability of a trademark,
Several aspects of trademark law are then to be developed, in order to understand its complete process, from the trademark search to its registration and renewal.
Why register your Trademark in India?
India usually recognizes rights in a mark through use. The person or company that uses a mark first, on a continuous basis, obtains the preferential rights to it. However, it is still important to register a trademark, as this establishes a presumption of ownership against the registrant in the event of a dispute. In the event of an infringement of one’s trademark rights, this presumption can be decisive. A registered trademark acts as a shield.
What is the national legislation on Trademark law?
The law in India currently in force for the protection of trademark law is still the Trade Marks Act of 1999, although it was last amended in 2010. The Trade Mark Rules had a recent update in 2017.
Trademarks are filed according to the nature of the product or service for which the mark is filed. These classes are referenced according to the Nice Classification (from the Nice Agreement of 1957), which is an international classification dedicated specifically to trademark registration. A new edition is published every five years. This classification includes 45 different classes of goods and services.
What International Conventions does India belong to?
India, in order to facilitate the opening of its market on an international level, is signatory to several conventions in this sense, in the field of intellectual property protection.
Thus, India is a member of the Paris Convention for the Protection of Industrial Property (1883) since December 7, 1998. This contains a series of provisions relating to the law of trademarks and patents at the international level. The aim here is equal treatment between nationals of the member countries of this Convention, and priority filing. Clearly, a foreign national wishing to register his trademark in India, which he initially registered in a foreign country, will have a period of 6 months to do so. During this period, he will be protected against third party applications. Reciprocally, an Indian national benefits from the same advantages. The person thus has the advantage of being considered by the signatory State as the first person to have requested the protection of this right in that State, even if a person has made a similar request before. The Paris Convention authorizes States to refuse protection to trademarks that infringe rights, mislead the consumer, are contrary to morality, infringe public order, are similar to well-known trademarks, or use the distinctive signs of one or more States (flags, etc.).
Since July 2013, India is also part of the Madrid Agreement (1891) and its 1989 protocol concluded to make the basic system more flexible and compatible with national laws. It allows, by access to a single window, to proceed with a single application for registration of a trademark, to proceed with the application for registration of the trademark in all countries party to the protocol. India is one of the ten most frequently designated countries in international applications via this protocol. The application is made to the WIPO International Office through the state administration, paying a single set of fees, instead of having to pay fees in several countries.
India is also a party to the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The agreement defines what types of signs are to be protected as trademarks and the rights attached to them. For example, the agreement stipulates that service marks must be protected in the same way as marks used for goods. So-called “well-known” marks are given additional protections compared to other marks.
The agreement also sets out rules regarding the taking of evidence, provisional measures, injunctions, damages and other sanctions. It states that courts should have the power to order that counterfeit goods be removed from the trade and/or destroyed. Acts of counterfeiting should be recognized by adhering countries as criminal offences.
What is the procedure for registration?
Several steps are necessary for a trademark to be finally registered. The interested party must then proceed with the search for a trademark by filing all the necessary documents, before the application is submitted for examination. Then, the publication of the application is made by the administration, in order to allow third parties to raise oppositions if they have any. Finally comes the registration of the trademark.
The applicant must carefully choose the trademark that will identify its products or services. After choosing a name, it is advisable to visit the Trade Marks Registry to ensure that the mark is not already registered and that there are no confusingly similar marks.
Your search will depend on the type of trademark you wish to assign to your company. There are three options: Written trademarks, which include only the name of the company without any particular typography. The logo, on the other hand, includes a combination of designs, images and words. In this case, these different elements are considered to be in a single, indissociable block. For example, a word that appears in the logo and is used by a third party on another product, but without the rest of the elements that make up the logo, then the third party could not be worried about any infringement of the trademark rights. The third and last option is to register a trademark that includes both a writing and a logo. This last option is the most secure in terms of intellectual property protection.
The necessary documents must be filed at the Trademark Registry Office of the person’s place of residence, of which there are five in the whole country. A form must be completed and submitted to the office. It should be noted that this process can also be done online. It is important to make sure that the form is filled out correctly and that it meets the requirements of the form, so as not to waste time repeating the procedure several times.
The application must contain, among other things: the name of the trademark and, if applicable, its logo, the name and address of the future owner of the trademark, the classification of the trademark (determined according to the Nice Classification), the date since which the trademark has been effectively used, as well as the description of the goods or services offered under the name in question.
The Indian government has over time simplified the formalities for filing an application for registration in order to encourage entrepreneurs to make such applications. The documents required by the administration may vary depending on the status of the person applying for registration.
For individual companies: The name of the trademark or a photocopy of the logo, if applicable. The basic form required for any application for registration (Form-48). A copy of an identity document and proof of address.
For companies, limited liability companies and partnerships: A scan of the logo, a certificate of registration of the legal entity with the Indian registry of companies, the company (or partnership) agreement as well as photocopies of the applicants’ identity documents and proof of residence.
The fee for registration of a trademark ranges from Rs. 4500 to Rs. 9500 (US$ 58-123). The smaller amount is for start-ups, small businesses, sole proprietorships and partnerships.
The application undergoes an extensive review by an officer of the office to ensure that all formal and legal requirements are met in accordance with the requirements of the Trade Mark Act. Within 30 days, a review report is prepared to raise any objections to the validation of the application.
If objections are raised, the applicant has a period of 30 days following the submission of the report to argue and provide evidence to overcome the objections raised by the administration.
If the answers provided are not sufficient, the administration can ask to hear the applicant at a hearing and, following this, accept the application or refuse it definitively.
Generally, the main grounds for refusal are non-distinctive character or the existence of priority rights on the mark.
Once the application is accepted, it must meet a publicity requirement. Thus, it is published by the administration in the “Trade Marks Journal” with all the other accepted trademarks, for 4 months, so that any interested third party can oppose the registration of the trademark, if this registration is legitimately harmful to them.
Third parties can effectively file an opposition against the filing of a new trademark. Formal requirements will be required, following which a hearing may be held. The applicant and the opposing third party will then be able to present their justifications, according to the rules of due process.
The official of the administration, in the light of this hearing, will take a decision on whether or not to validate the registration of the trademark. This decision can be appealed to the Intellectual Property Appellate Board.
Once the application has been finally accepted, whether or not it has been contested within the 4-month period following publication, a certificate of registration is issued to the trademark holder.
What is the procedure for International Trademark registration?
The Madrid Protocol offers the possibility of registering a trademark in all the adhering countries (including India) through a one-stop shop. The application is still made with the national administration, but the procedure and requirements are not the same.
The international application must designate each country in which the mark is to be protected. Only countries that are party to the Protocol can be designated. The application can be filed in English, French or Spanish. However, the country in which the application is filed may require the use of only one of these languages.
The filing is subject to the payment of a fee, which will increase for each additional class of goods (above three classes) or States in which registration is sought.
The application is then forwarded to the International Bureau, which will be responsible for examining whether the formal requirements of the Protocol have been met. If so, the Bureau may record the mark in the International Register and publish the registration in the WIPO Gazette of International Marks. A notification is sent to the applicants and to the countries concerned, together with a statement of the grant of protection requested.
A country may refuse the registration of a trademark applied for through the Madrid System if certain requirements of the law of the country in question are not met. Refusals must in any case be motivated and communicated to the International Bureau within 12 months from the date of notification.
Cases of refusal are then dealt with by the national administration of the country where the application was filed.
The international registration of a mark is valid for 10 years, and may be renewed for periods of 10 years. This registration has the same effects as a national trademark registration.
In the case of a company wishing to occupy a place on the international market, this method of registration is preferable. Thanks to the Madrid Protocol, the person will not have to comply with countless national procedures in various languages. It also avoids paying fees for each country where the trademark is protected. The only financial considerations are to be paid to WIPO.
As a reminder, the only competent agency in India for the international registration of a trademark is the Trademark Registry in Mumbai. As the central agency of this administration, it is the only one with a department specifically dedicated to international work.
What are the effects of the Trademark Registration?
Once a trademark has been filed and validated, it is valid for ten years from the date of filing. It can be renewed indefinitely every ten years, six months before the expiration date and during a grace period of twelve months after the expiration date.
In addition to this right to renewal, the holder has several rights. He has the exclusive right to use the trademark for the purpose of identifying the goods or services that are the subject of his business. The registration has a dissuasive effect on possible ill-intentioned persons who might make fraudulent use of the registered trademark, or unscrupulous competitors who might wish to use a deceptively similar trademark.
The owner of the trademark rights is also the only person who can take legal action for the infringement of unauthorized use of a trademark by a third party.
What is the procedure for renewing a Trademark?
Six months before the expiration of the trademark registration, the Trademark Registry sends a letter to the persons concerned reminding them of the upcoming expiration of the trademark registration. The owner may then choose to renew the mark without any changes, or make some.Several documents are required, such as a copy of the registration certificate, the name and address of the trademark owner, and a power of attorney if the person handling the formalities is not the trademark owner.
If, within 6 months following the letter received by the administration inviting the person to renew his registration, no action is taken by him, a period known as “restoration” of the trademark begins. The law provides that in the year following the expiry, it is still possible to proceed with the re-registration of the trademark, subject to additional fees.
It should be noted, however, that if the trademark is not used for a continuous period of 5 years, the registration may be cancelled by operation of law.
The renewal of a trademark is not free. It costs between 9000 and 10,000 Rupees to process the application. If the protection is renewed by way of restoration, an additional 10,000 rupees must be added to this price.
What are the legal recourses to enforce your rights?
There are no special courts for intellectual property in India. The only specialized entity is the Intellectual Property Appellate Board, set up in 2003. This administrative body exists only to challenge the decisions of the administrative officers as to the validation or not of the registration of a trademark and is not competent when it is a question of infringement committed by a third party.
Appeals are then made to the Indian High Courts. It should be noted, however, that Indian judges have a rather limited knowledge of the field of intellectual property.
However, since 2017, some jurisdictions have been equipped with more specialized Commercial Courts. Judges in these new courts must have a solid knowledge of intellectual property law, among other areas of specialty.
In civil matters, an action may be brought on the basis of an infringement of the Trade Marks Act of 1999 protecting intellectual property. In criminal matters, the offence of counterfeiting (characterized when a trademark is partially or totally reproduced or imitated), but also the sale, display or possession of counterfeit goods for commercial purposes.
In the event of a border crossing, customs authorities may detain suspected counterfeit goods for a period ranging from 24 hours to 3 months, in order to give companies time to prove the counterfeit and initiate the appropriate legal proceedings.
The civil sanctions can be various: the judge can pronounce an interlocutory injunction, forcing the person to do or not to do something while waiting for the judgment, but also a permanent injunction. Damages may be paid to compensate the owner of the trademark whose rights have been infringed, in addition to the confiscation of the infringing goods for destruction.
In criminal terms, the person may be found guilty of falsifying (by fraudulently affixing a trademark to a product) the trademark or its commercial description, as well as selling, possessing or displaying counterfeit goods. These offenses may be punishable by 6 months to 3 years imprisonment, as well as a fine ranging from 50,000 to 200,000 rupees (US$1110-4450).
Alternative Dispute Resolution
Since litigation is a costly and time-consuming way to win a case, an amicable resolution of the dispute is an option in intellectual property matters.
Parties may choose to submit their dispute to an arbitral tribunal, in order to avoid the need to appeal to a national judge. Indeed, if this method is chosen, a decision will be taken much more quickly by the arbitration. This can also be a solution in case of disputes between nationals of several different countries. In addition, WIPO has an arbitration and mediation center for disputes relating to intellectual property.
Mediation, a non-binding procedure whereby the mediator helps the parties to reach a settlement of their dispute, is also possible. Mediation will help preserve the business relationship between the parties and obtain a quick solution without compromising their reputation.
Why should you hire a Trademark Specialist in India
The Indian Legislation regarding trademarks is quite extensive and complex. Moreover, many administrative formalities are to be carried out to register a trademark. An error in the constitution of the file can lead to the refusal of the registration, thus forcing to start the procedure again from the beginning. The international dimension that the trademark registration may have adds an additional complexity.
An intellectual property specialist in Indian law will be able to assist you or represent you in your procedures. Aware of the stakes behind its creation, he will know how to fulfill the requirements imposed by the Indian administration and by the international community. You will thus have the guarantee of a procedure without lengthened delays.
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