Step-By-Step Trademark Registration Process in India - Compressed-1587132596

REGISTRATION AND
PROTECTION OF
TRADEMARKS
Step-by-step Trademark Registration
Process in India

Registration and Protection of Trademarks
Step-by-step Trademark Registration Process in India
Approximate reading time: 15 min 29 sec

Learning Objectives:
Learn the step-by-step trademark registration process.
●
Know about the fast-track registration procedure and registration of well-known
●
marks.
● Familiarize yourself with important forms for trademark registration.
● Learn the procedure for examination, publication, and opposition process.

Trademark registration can be undertaken through a long process or through a fast-track
examination process.

The steps below explain the long-form examination process.

Step 1 - Conducting a Trademark Search
The first step is conducting a trademark search, so as to ensure that the logo or name
intended to be registered is not identical or similar to an existing logo or name. This is
helpful in reducing or eliminating the chances of opposition at a later stage, once the
application for registration is filed. No search is fool-proof. As any third party can file an
opposition against the registration of a mark up to a period of four months from the date
of advertisement of the mark in the Trademarks Journal, it is possible that an
individual/company whose name did not appear in the search and is the owner of a
deceptively similar/identical mark, filed an opposition against the registration of a
trademark. However, a well-conducted trademark search before filing the application
helps in minimizing the chances of such opposition.

There are two kinds of search – online and offline. An online trademark search can be
1
conducted for free on the website of the Trademarks Registry (TM Registry). A search on
the TM Registry will show results of any identical or phonetically similar trademarks that
are already registered or in respect of which applications are pending. It will not show
unregistered marks.

In addition to the search on the TM Registry, it is advisable for applicants to conduct some
general searches on the internet to find out if similar names or marks are used in the
market for their products/services, before deciding which name they wish to register.

Any person or entity who has a brand (not just a lawyer) can conduct a trademark search.
An online trademark search on the Trademark Registry’s website does not require any
power of attorney.

An individual, Partnership firm, Private Limited Company, etc. who wish to get their
1
The search should be conducted on the following link:
http://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx

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Any unauthorized use, circulation or reproduction P - 2
shall attract suitable action under applicable law.

distinctive marks registered, usually consult an experienced attorney in the field of IPR or a

Trademark Agent, in order to help them in conducting a trademark search, so as to
understand the chances of registrability of the mark.

Step 2 - Filing an application for registration of trademark
Applicants: Any person (i.e. an individual, a partnership firm or a corporate entity such as a
company, an LLP, etc.) which claims to be the owner of a trademark can apply for the
registration of its mark for goods as well as services.

This application may be filed by the individual/entity claiming to be the brand owner or its
authorized lawyer, or a trademark agent.

One does not have to be a licensed trademark agent to file this application, as the owner
can file in person or through another lawyer (who is authorized by the owner) as well.

Sometimes, founders register trademarks under their personal names. In all cases where a
mark is registered in the name of a founder, it must be subsequently assigned irrevocably,
else the founder will retain the power to revoke the use of the mark by the business.

This can be a problem, if there are disputes amongst the founders. Investors will also have
this reservation at the time of making an investment.

Thus, wherever any trademarks of the business are registered under a founder’s name,
investors require such a founder to execute an assignment agreement in favour of the
company as a condition precedent to an investment transaction.

If a company has not been formed, the founding promoter(s) may jointly apply in their
individual names for the trademark, which can be subsequently assigned in the company’s
favour or licensed to it.

Note that a foreign company can execute a power of attorney in favour of its lawyer,
authorizing the lawyer to file a trademark in India.

Where a trademark registration is sought for a global brand, usually the foreign parent
company registers the mark in India in its own name, and licenses the name to the Indian
company, which may be a licensee or a registered user(but not the owner). Due to the
benefits available to a registered user, it may be preferable to register the Indian company
as a registered user of the brand.

A power of attorney sample is attached separately.

Major types of marks: A products company can apply for a trademark, while a service
business will be eligible to apply for a service mark. Advertising, business management,
business administration, office functions, insurance, financial affairs, education,


telecommunication, transport, legal services, computer programming, etc. are all service
businesses.

In certain cases, marks used by a business may be very similar to each other, in terms of
their essential characteristics. For example – Chicken McGrill or Chicken McNuggets,
McChicken, etc. have very similar characteristics – they all have the unique expression ‘Mc’
applied to common English words such as ‘grill’, ‘chicken’ and ‘nuggets’. Although these
marks are substantially similar to one another and would not have otherwise been capable
of being registered independently, trademark law permits them to be registered as series
marks. A single application can be filed for their registration, which makes the process
more convenient.

How are the marks in a series different from one another?
Each mark in a series applies to a different product.
Application formats
The application (for trademarks and service marks) must be made in the prescribed format
(Form TM -A) under the Trademarks Rules, in respect of the appropriate class to which the
goods/services pertain. This form can be filed both online and offline. Earlier, the 4th
Schedule of the Trademark Rules, 2002 listed out the different classes of goods and
services for which trademark applications can be obtained. However, the Trademark Rules
were amended in 2012 and subsequently adopted in the Trademark Rules, 2017. As per
the new rules, the classification of goods and services for the purpose of trademark will be
the same as the latest version of the Nice Classification (named after a place in France,
pronounced ‘niece’) (currently the 11th edition of the Nice Classification is in force from 1st
January 2017), which is available on this link.

This is a standardized classification system applicable internationally as per the Nice
Agreement concerning the International Classification of Goods and Services for the
purpose of the Registration of Marks, 1957.

Under the Nice Classification, Classes 1 to 34 pertain to goods whereas Classes 35 to 45
pertain to services.

The application must be filed by the applicant or his authorized agent (the agent must be a
legal practitioner or a registered trademark agent).

The simplest kind of application would be an application to register a trademark for a
specification of goods or services included in any one class, which is required to be made in
Form TM-A. Under the new Trademark Rules 2017, an application for trademark
registration can also be made under more than one class head, if the goods/services in
respect of which trademark is applied for are within the ambit of different classes in the
same Form TM-A. The application for a series trademark must be made in Form TM-A as
well.


Depending on the nature of the trademark (image mark, 3D trademark, sound mark, shape
mark), the application must follow the process given under Rule 26. In case the application
is made of a mark which is already in use, it must be filed with a statement of use in an
affidavit along with supporting documents.

The application must be filed with the appropriate office of the Trademark Registry (as of
August 2019, there are five registry offices as per the official website of the Registrar of
Trademark, listed in Annexure III). If an entity carries out business from multiple locations
in India, the office which will have jurisdiction will be the principal place of the applicant’s
business. If the principal place of business is outside India, the application can be filed in
the Trademark Office, having jurisdiction where the office of the attorney appointed to
make the filing is located.

Application Fee: The application fee payable (as of August 2019) is different for different
categories of applicant:

i) For individuals, startups, and small enterprises - INR 5000 per word or phrase per
class for physical filing and INR 4500 for online filing

ii) For others - INR 10,000 for physical filing and INR 9000 for online filing

So, if a brand name and a tagline or slogan are both sought to be protected under two
classes each, the government fee payable would be four times the applicable application
fees.

In addition, a trademark agent or a lawyer will independently claim a separate drafting and
filing charge.

Filing properly is important to minimize the risk of objections from the registry or third
parties. Also, in case an objection is raised, the trademark registration process takes
significantly longer (up to a few years).

Indian trademark law allows filing of a trademark application in India on a ‘proposed to be
used’ basis. However, the registered proprietor of the trademark in India has to commence
use of the mark within 5 years and 3 months of the date of registration. Otherwise, the
registered trademark is open to invalidation proceedings.
Application for well-known mark

Before March 2017, a trademark could be recognised as well-known by the Indian court or
by a trademark registrar. A list of such marks was also published on the trademark registry
website. However, there was no process for registration of a well-known trademark.

The Trademark Rules 2017 provides a detailed process for registering a trademark as a
well-known mark.


An application for a well-known mark can be made in Form TM-M, along with a fee of INR 1

Lakh. The application must be filed along with sufficient evidence of it being a well-known
mark. A list of documents that must be submitted can be accessed from here.

The registrar of trademarks then determines whether the trademark qualifies as a
well-known. The registrar is required to consider:

● the knowledge and recognition of the mark in the relevant sections of the Indian
public as a result of promotions of the mark in India;
● the duration and geographical area and extent of any use of the mark;
● the duration, extent and geographical area of any promotion of the mark (including
advertising or publicity and presentations at fairs or exhibitions);
● the record of successful enforcement of rights in the mark, especially recognition in
India by any court or the trademark registry of the mark as a well-known mark;
● the number of actual and potential consumers;
● the number of persons involved in the channels of distribution of the goods and
services; and
● the businesses dealing with the goods and services.

The following factors are not required as a condition to determine whether a trademark is
well known:

● the use, registration or application for registration of the mark in India;
● whether the mark is well-known to the Indian public; or
● whether the mark is well-known, applied for, used or registered in any jurisdiction
other than India.

Bene its of obtaining registration as a well-known mark

Since a well-known mark can be registered even if the mark is not actually used in India,
this is beneficial to multinational companies for overall brand protection. If such companies
do not use registered trademarks in India for a period of five years and three months, they
are open to cancellation for non-use. However, well- known marks are not subject to such a
provision. If a trademark is registered as a well-known mark, it will be automatically cited as
a conflicting trademark in any subsequent applications and the registrar may refuse the
application. This should reduce the opposition costs for the owners of well-known marks.

Further, such a registration will assist the owner of the mark in infringement and passing
off actions, as the burden of proof to establish reputation among Indian consumers can be
discharged easily.


User Affidavit
The Trademark statement of use is attached to the trademark registration application. After
the introduction of the Trade Mark Rules 2017, the User Affidavit has been considered to be
a mandatory document to be attached with the application.

The User Affidavit contains the name of Authorised Signatory, Applicant name, Applicant
Address , Residing Address, First Use Date and Good/Service details.

Grounds for refusal of registration of trademark
The grounds for the refusal of the trademark registration can be divided into two parts
under the Indian Trademark Act - absolute grounds and relative grounds.

Absolute grounds for refusal of registration of trademark are as follows(Section 9):

1. Marks not capable of distinction between any goods or services of one person from
those of others and Marks which are devoid of distinct character.
2. Marks which indicate the descriptive character of the goods.
3. Marks which have become customary in the current language in the bona fide
practice of trade.
4. The marks likely to cause the deceive to public.
5. Marks having scandalous object or hurting the religious feelings of any section of
India.
6. Marks which are Prohibited under the Emblems and Names (Prevention of Improper
Use) Act, 1950.
7. The shape which gives substantial value of goods and necessary to take technical
aspect.

The Relative grounds for refusal are as follows(Section 11):

1. Marks which are identical or similar to the earlier respective trademarks including
the goods and services.
2. Marks identical or similar but goods and services are not similar.
3. Marks under or passing of the copyright law.

Step 3 - Examination of the application
After filing the application, the Trademarks Registry conducts a search in its database to
check, if a similar mark already exists in respect of similar products or services.

A trademark application goes through two main types of review. First, the Trademark
Registry reviews the application to determine, if it meets filing requirements – this is
essentially a clerical process to check, if the application is filed in three copies, that a
graphical representation is supplied (in case of a pictorial mark) and that applicable filing
fees have been paid, etc. This stage is commonly referred to as the formality stage.


Next, the application is forwarded to a trademark examiner, who reviews the application to
determine, whether it complies with all applicable rules. This process involves exercise of
some level of discretion by the examiner. The examiner conducts a search for conflicting
marks, examines the written application, drawings and any other specimens.

If the examiner has no objections with the application, the application is published in
accordance with Step 4 (Publication of the application).

In case the trademark application is deemed to be refused as per section 9 and/or 11 of
the Trade Marks Act, 1999, the examiner issues an ‘Examination Report’ explaining
substantive reasons or any technical or procedural problems with the application (within
15-30 days of the receipt of the application). The Examination Report is uploaded on the
website of the Registrar and an email is sent to the applicant. If a response to the same is
not received within the stipulated deadline i.e. 1 month, the application may be
abandoned by the registrar. The applicant will also be given an opportunity for presenting
his case in person before his application is rejected.

In spite of the faster processing of the application, there is a separate process by which the
applicant can expedite the processing of applications by filing an application in Form TM -
M, such application will generally be examined within 3 months and other processes will
be held in an expeditious manner.

Objections under section 9 and section 11
The objection under section 9 is made when the Registrar or the examiner considers the
trademark to be descriptive of goods/laundry/generic/indicating the quality or nature of
good. Under this section, it is necessary to show that the trademark is inherently distinctive.
If the trademark has the distinctive character, there is an option of submitting an affidavit
along with the evidence, which are cogent in nature to show that the trademark has
acquired the status of distinctiveness. However, this affidavit is not mandatory. If all the
necessary details can be covered in response to Examination Report (ER), an affidavit is not
necessary.

The objection under section 11 is made when there is a similar or identical trademark with
the respect of the similar or identical goods already registered with the Trade Mark
Registry. In such cases, the Registrar/Examiner can issue a list of conflicting marks through
a computer generated report.

Step 4 - Publication of the application
Where the Registrar is satisfied with the reply, the application will proceed to be advertised
in the Trademarks Journal, as soon as possible, and within a maximum period of 6 months
from the acceptance of the application. This usually takes 2-3 months only from the
acceptance of the application (if there is no third party objection).


Step 5 – Opposition process

After the application is published, any person who already has a similar brand name
(irrespective of whether it is registered as a trademark) has an opportunity to oppose the
application by filing a notice of opposition in Form TM-O.

The opponent doesn't necessarily need to have a TM registered/applied for. As per the
Trade Marks Act, any third party can oppose a mark regardless of whether they have
applied for a trademark or not. For instance, if a person applies of the trademark “YOGA
AGARBATTI” for incense sticks, X, as an individual, can file an opposition to that stating that
this TM is not distinctive as "YOGA" is a common terminology amongst Hindus. It is one of
the schools of Hindu philosophical traditions, thereby adding the suffix “AGARBATTI” to
“YOGA” does not make it distinctive. Furthermore, no one can claim intellectual property
rights over the word ‘yoga’.

If no opposition is received in 4 months, the trademark is granted registration. If an
opposition has been received, an elaborate opposition process is required to be followed
under Indian trademark law, which can take from ten months to one and a half years. It
involves numerous communications between the opponent and the applicant. The process
is described in detail in a separate chapter on trademark prosecution.

If no objection is filed, or if the Registrar dismisses the objection, the Registrar issues a
registration certificate to the applicant and makes an entry in the Trademarks Register.

Knowledge of the opposition process is important for businesses because it prevents other
entities from acquiring a trademark in respect of an already existing brand name.
For this, one must read the Trademarks Journal consistently. An opposition can be filed
against a mark which is sought to be registered, even if the opposing entity has not
registered its own brand name. However, such an opponent must provide a higher
amount of evidence to establish that its brand is distinctive and is identified by the market.
It is a useful legal tool to avoid risk of brand dilution for company managers, strategists
and advisors.

Notice of objection and response
The notice of objection can be filed within four months of the date of advertisement or
re-advertisement in the Trademark journal. It must be on Trademark no. 5 and in the
prescribed manner filed with applicable fees. It should contain the necessary information
like:

● Application against which the trademark opposition is given with the application
number, case of goods and services and the applicant number.
● Details of opposition party.
● Grounds of opposition


In response to the notice, the Registrar shall serve a copy of the notice to the applicant
party and within two months, the applicant party should give a proper counter statement. If
he fails to give a counter statement, he is deemed to be abandoned. Also, based on the
counter statement, the Registrar can call the hearing of the parties and afterwards he has
the option to rule the trademark application and opposition based on the evidence.

Affidavit under Rule 45/46/47
Rules 45, 46 and 47 of the Trade Marks Rules, 2017 deal with evidence in support of
opposition, application and the opponent’s reply, respectively.

Within two months of receiving the affidavit and evidence under Rule 45 or letting the
waiver of right to file such affidavit or evidence from the opponent, the applicant shall
adduce evidence in support of an application by way of filing an affidavit under Rule 46. The
applicant can choose to waive the right of filing such an affidavit under Rule 46. It only
depends on the facts stated with the counter statement or the evidence submitted in the
application within the prescribed time. The trademark application is deemed to be
abandoned when the time limit of two months is over.

Within one month of receiving the affidavit and evidence filed by the applicant under Rule
46, the opponent may submit the evidence, if any, by affidavit in reply to the Registrar.

Response to objections by trademark applicant
What can you do if a trademark application is rejected?

The decision of the Trademark Registry in granting or refusing a trademark, or accepting/
rejecting an opposition to the trademark is appealable within 90 days to the Intellectual
Property Appellate Board(‘IPAB’).

If the Trademark Examiner finds the reply sufficient and addresses all the concerns raised
by him/her in the Examination Report, the application would be allowed to be published in
the Trademark Journal before registration. Otherwise, the application will be deemed to be
rejected.

Validity and renewal of a trademark registration
A trademark is valid for 10 years. It is renewable for a period of 10 years at a time, within 1
year from expiration of trademark registration. For this purpose, Form TM-R needs to be
filed along with the prescribed fee. However, note that a business must keep using the
trademark, as non-use of trademark for 5 years continuously is a ground for cancellation
of the trademark, in which case, the Trademark Registry removes it.

Currently, renewal fees is INR 10000 for physical filing and INR 9,000 for online filing per
mark per class.


Fast-track registration procedure

An applicant may apply for an expedited examination procedure for the scrutiny of his
trademark application, by applying in FORM TM-M. The procedure requires payment of INR
20,000 for small enterprises, startups and individuals and INR 40,000 for other category of
applicants.

The examination procedure for a regular application usually takes 3-4 weeks. Whereas, in
the case of a fast-track application, examination of the mark gets completed within 2
weeks.

Note on the use of the symbol ® and ™

The symbol ® can only be used by the proprietor of a trademark. Using the symbol ®,
unless your mark has been registered in India, is punishable with imprisonment of up to 3
years or with fine. Until a trademark is registered, the symbol ™ can be used. It indicates
the ownership is being claimed by the manufacturer/ provider of service, but that it is not
registered.


Registration Process Flowchart as Recap


List of Hyperlinks
● Form TM-A
http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/FORM-TM-A.pdf

● Form TM-M
http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/FORM-TM-M.pdf

● Form TM-O
http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/FORM-TM-O.pdf

● Trademark e-filing
https://ipindiaonline.gov.in/trademarkefiling/UsefullDownloads/User_Manual_etrade
markfiling.pdf

● Manual of Trade Marks
http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-d
raft-manual.pdf


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REGISTRATION AND

Approximate reading time: 15 min 29 sec

distinctive marks registered, usually consult an experienced attorney in the ﬁeld of IPR or a

Application for well-known mark

An application for a well-known mark can be made in Form TM-M, along with a fee of INR 1

Step 5 – Opposition process

Fast-track registration procedure

Registration Process Flowchart as Recap

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