Trademark in India

What is a Trademark registration in India?

Trademark registration in India is intellectual property protection over a name, symbol, figure, letter, word, logo, number, phrase, picture, packaging, slogan, devices, shape, configurations, patterns, ornamentation, color combinations, containers for goods, or any combination of these.

Why is a trademark registration in India important?

A trademark registration in India protects the owner of the mark by ensuring an exclusive right over the use the mark to identify his goods or services, and/or to authorize another entity to use that mark in return for a consideration.

Trademark registration in India is a protection capable of being enforced by the Courts.

What kind of protection does a registration of a Trademark in India offer?

Trademark protection means that the trademarked goods/services cannot be commercially made, used, distributed, or sold without the trademark owner’s consent. These trademark rights are usually enforced in a court, which, in most systems, holds the authority to stop trademark infringement.

A trademark owner has the right to decide who may, or may not, use the trademark.

What is the objective of Trademark Registration in India?

The objective of the Trademarks Act is to protect trademarks and safeguard the rights of the applicant. Often the purchase of goods or services is influenced not only by their practical efficiency but also by their reputation. The important purpose of a Trademark registration is to ensure that the owner of the trademark is not deprived of his/her bona fide goodwill created over a long period.

When does the Applicant for Registration of Trademarks get the registration Certificate?

When an application for registration of a trademarks is in order, it is accepted and advertised in the official journal. Anybody who has an interest in the mark can file an opposition within four months of this publication. If there is no opposition or on an unsuccessful opposition the certificate of registration is subsequently issued to the applicant. This usually takes about 12/15 months. 

However, a separate request is to be made to the Registrar of Trademarks for obtaining a certified copy of the certificate for use in legal proceedings.

What is the Register of Trademarks in India?

The Register of Trademarks is a document maintained as a statutory requirement. It contains the Trademark number, class number, date of filing (in this country) and reciprocity date (if any), name and address of the proprietor, and such other matters as would affect the validity of proprietorship of the Trademarks .

It is open for public inspection and an extract from the register may also be obtained on request.

What is the effect of Trademark Registration in India?

Trademark Registration in India grants the proprietor the complete control over the use of such mark The trademark owner may permit to, or license, other parties to use the trademark on mutually agreed terms. The owner may also sell the right to someone else, who will then become the new owner of the trademark.

What is the date of a Trademark?

The date of Trademark registration in India, except in case of priority, is the actual date of filing of the application. In case of registration of Trademark with priority, the date of registration is the date of making an application in the reciprocal country.

Is it possible to re-register a Trademark which has expired?

Yes. A trademark can be re registered if it has expired due to non payment of renewal fee.

Is it mandatory to use the Trademark in India before filing an application for registration?

No. An application of Trademark in India can be filed for a mark which has not been used yet. While a few countries require that there must be prior use before filing an application for trademarks, there is no such a requirement in India.

Why is it important to apply for registration of Trademark in India at the earliest possible date?

The first-to-file rule is applicable for registration of Trademark in India. If two or more applications relating to an identical or a similar Trademark are filed on different dates then only the first application shall be considered for registration. Hence, registering your trademark at the earliest is always considered prudent so that no one can register your trademark and claim its use besides you.

Can the same applicant make an application for the same Trademark again, if the prior application has been abandoned?

Yes, the same applicant can apply for the same Trademark again if the earlier application was abandoned.

Whether it is possible to transfer the right of ownership?

Yes, it is possible to transfer the right through assignment, agreement, transmission with terms and conditions in writing, or by operation of law.  An original/notarized copy of the assignment is to be submitted along with an application to register such a transfer.

What is meant by priority claiming of a Trademark in India?

Based on a first application filed in one of the contracting states, the applicant may, within six months apply for trademark in India. This application shall be regarded as if it had been filed on the same day as the first application.

Can the name, address of proprietor, or address for service be altered in the register of Trademarks?

The name of the registered proprietor, address, or address for service can be altered in the register of Trademark provided this alteration is not made by way of change of ownership through conveyance i.e. deed of assignment, transmission, license agreement, or by any operation of law.

How does a registration of a  Trademarks in India stop other people from using it?

Once a Trademark is registered, it gives the legal right to bring an action against those persons (natural/legal entity) who infringe the Trademark, in the Court not lower than District Court to stop such exploitation and to claim any damages to which the registered proprietor is legally entitled. 

Without a registration, the person claiming rights in a trade mark will have to rely on the common law remedy of passing off to defend its rights. The prospects of success in such a claim will depend on the extent to which the person can prove that the mark has acquired a reputation in relation to specific goods/services. In the case of a new business or product, reputation may be minimal and the mark may therefore be difficult to protect.

How long does the registration of trademarks in India last?

The registration of trademarks in India lasts indefinitely provided renewal fee is paid before its expiry. The trademark needs to be renewed every ten years.

Written by Mahesh Bhagnari, Patent & Trademark Attorney in India.