On this page:
What is a trademark?
Are trademark searches required before filing? If so, how can trademark search be done in India?
What are the types of trademarks that can be registered?
What can be registered as trademark?
Who can apply for trademark?
How can a foreigner register a trademark in India?
What information and documentation must be submitted in a trademark registration application?
Who can use a trademark?
What are the legal requirements for registering a trademark in India?
What is the duration of a trademark in India?
What is covered under trademarks?
What is the function of a trademark?
How should I select a trademark?
What international trademark conventions and treaties are applicable in India?
What are the benefits of registering a trademark?
What are the remedies for infringement of a trademark and passing-off
How to apply for registration of a trademark in respect of particular goods or services?
What is the purpose of registering a trademark?
Who benefits from trademark registration?
What does the register of trademark contain?
Can any corrections be made in the application, or the register of trademarks?
Can a registered trademark be removed from the register?
Can I apply for a trademark in black & white, as well as in color?
What recourse do I have if a competitor has already registered my mark in India?
Who can use the ® symbol in India?
When can the ™ symbol be used in India?
What are the penalties for infringement of trademark in India?
Can a foreign company sell its products or services in India before registering trademark in India?
Can a foreign company file a single application for more than one goods or services in India?
What are the major Trademark Laws and Treaties in India?
What is the procedure for trademark filing and other formalities?
What is the new trademark law in India?
What are the main features of the new Trademark law in India?
A 'Mark` is a visual symbol, which may consist of a word or invented word, signature, device, letter, numeral, brand, heading, label, name written in a particular style, the shape of goods other than those for which a mark is proposed to be used, or any combination thereof or a combination of colors and so forth. Subject to certain conditions, a trademark may also be symbolized by the name of a person, living or dead. Trademak may also consist of sound mark.
For the purpose of registration, a mark chosen should be capable of distinguishing goods or services of one person from those of the others.
Further, it should not be deceptively similar to an existing mark of another person and not the one expressly prohibited under the Act.
The marks devoid of any distinctive character, or which are only indicative of the kind, quality, quantity, purpose, value or geographical origin of the goods, or which are marks already in vogue in the trade due to their customary use may not be registered. But these disqualifications do not apply to marks, which have already acquired distinction due to their popularity and consistent use. Internationally acclaimed brand names are freely available for use in India.
It is advisable to conduct a trademark search before applying to register a trademark in India. Trademark searches in India can be conducted for word marks and device marks.
We provide a FREE ONLINE TRADEMARK SEARCH IN INDIA, if you hire us to register trademark in India. Contact us for Registering Trademark in India.
Under the Indian trademark law the following are the types of trademarks that can be registered:
A person who claims to be the proprietor of the trademark can apply for the registration of its mark for goods as well services.
A person may apply for registration of a trade mark to the Trademark office under whose jurisdiction the principal place of the business of the applicant in India falls.
In case, the principal place of business is outside India, then the application can be filed in the Trademark office under whose jurisdiction the office of the lawyer appointed by you is located.
In case of a company about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company's favor.
Before making an application for registration, it is prudent to conduct a trademark search in the Trademark office in context of the already registered trademarks to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one.
The following information and documentation must be submitted in a trademark registration application:
if the applicant is not domiciled in a particular jurisdiction, a local service address must be provided.
The right to use a mark can be exercised either by the registered proprietor or a registered user.
The legal requirements to register a trade mark under the Legislation are:
The selected mark should be capable of being represented graphically (that is in the paper form).
It should be capable of distinguishing the goods or services of one undertaking from those of others.
It should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person.
Term of registration of a trademark is ten years, which may be renewed for a further period of ten years on payment of prescribed renewal fees.
Non-user of a registered trademark for a continuous period of five years is a ground for cancellation of registration of such trademark at the behest of any aggrieved party.
A trademark is a mark used in relation to goods or services so as to indicate a connection in the course of trade between the goods or services and some person having the right as proprietor to use the mark.
Under modern business condition a trade mark performs four functions:
India has declared certain countries as convention countries, which afford to citizens of India similar privileges as granted to its own citizens. A person or company from a convention country, may within six months of making an application in the home country, apply for registration of the trademark in India. If such a trademark is accepted for registration, such foreign national will be deemed to have registered his or her trademark in India, from the same date on which he or she made application in the home country.
Where the applications have been made for the registration of trademark in two or more convention countries, the period of six months would be reckoned from the date on which the earlier or earliest of those applications was made.
Although the recovery of damages for infringement of a trademark is possible only if the infringement takes place after the date of filing application for registration with the concerned trademark office in India, yet the deemed seniority in making application in home country may entitle the applicant to initiate an action in India for injunction, delivery of impugned labels and so on.
The registration of a trade mark confers upon the owner the exclusive right to the use of the registered trade mark and indicate so by using the symbol (R) in relation to the goods or services in respect of which the mark is registered and seek the relief of infringement in appropriate courts in the country. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc. Also, where two or more persons have registered identical or nearly similar mark due to special circumstances such exclusive right does not operate against each other.
Two types of remedies are available to the owner of a trademark for unauthorized use of his or her mark or its imitation by a third party. These remedies are:
an action for infringement' in case of a registered trademark; and
an action for passing off' in the case of an unregistered trademark
While former is a statutory remedy, the latter is a common law remedy. In an action involving infringement or passing off, a court may grant relief of injunction and/or monetary compensation for damages for loss of business and/or
confiscation/destruction of infringing labels and tags etc.
Although registration of trademark is prima facie an evidence of validity of a trademark, yet the registration can not upstage a prior consistent user of trademark, for the rule is 'priority in adoption prevails over priority in registration`.
Goods and services are classified according to the International Classification of goods and services. Currently schedule IV of the Legislation provides a summary of list of such goods and services falling in different classes which is merely indicative. The Registrar is the final authority in the determination of the class in which particular goods or services fall.
The Registered Proprietor: The Registered Proprietor of a trade mark can stop
other traders from unlawfully using his trade mark, sue for damages and secure
destruction of infringing goods and or labels.
The Purchaser and ultimately Consumers of trademarks goods and services.
The Government: The Trademarks Registry is expected to earn a substantial annual revenue, which is perpetually on the rise.
The register of trademark currently maintained in electronic form contains inter alia the trade mark the class and goods/ services in respect of which it is registered including particulars affecting the scope of registration of rights conferred or disclaimers, if any; the address of the proprietors; particulars of trade or other description of the proprietor; the convention application date (if applicable); where a trade mark has been registered with the consent of proprietor of an earlier mark or earlier rights, that fact.
Yes. However, the basic principle is that the trade mark applied for should not be substantially altered, affecting its identity.
It can be removed on application to the Registrar on prescribed form on the ground that the mark is wrongly remaining on the register. The Registrar also can suo moto issue Notice for removal of a registered trade mark. Non use of a registered trademark for continuous period of 5 years is also a ground of removal.
Yes. You can do so. But applying in color means you are limiting yourself to use trademark only in that particular color. However, if you apply in black and white, then you can use your trademark in any color.
The Indian trademark law provides for invalidation proceedings and you have the right to initiate a cancellation action should a competitor have registered your trademark in India. You also have the right to initiate either a civil or a criminal action against any party that is violating your mark in India.
Only the proprietor of a trademark whose trademark has been registered in India can use the symbol ® in India. Using the symbol ® unless your mark has been registered in India is unlawful.
Using this symbol with your trademark simply implies that you claim to be the proprietor of the trademark. There is no prohibition on the use of the symbol ™ in India.
The penalty for selling or providing services using a false trademark is a minimum of six months and maximum of three years imprisonment and with a fine not less than Rupees Fifty Thousand but which may extend to Rupees Two Lakh.
Contact us for Registering Trademark in India
In addition to the registering of their trademarks in India, businesses need to adopt other strategies for protecting their trademarks. Some of them are mentioned below:
Yes. India recognizes the system of multi-class applications and follows the International Classification. There are 42 classes in which the goods and services have been divided in India and you can file for multi-class applications both for goods and services.
Yes. Indian trademark law allows filing of a trademark application in India on an 'intent-to-use' 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.
Recently, a whole new set of Forms has been prescribed for initiating various applications under Trademarks Act.
For filing new applications (Form TM-A)
To file a Notice of Opposition to oppose an application published in the Trade Marks Journal (Form TM-O).
For Renewal of a Regd. trademark (Form TM-R ).
Surcharge for belated renewal (Form TM-R)
Restoration of removed mark (Form TM-R)
Application for rectification of a registered trade mark or changes in registration (Form TM-P)
Legal Certificate (Form TM-M)
(Providing details of entries in the Register)
Official search request (Form TM-M).
Preliminary advise of the Registrar as to the registrability of a mark (Form TM-M).
Copyright search request and issuance of certificate (Form TM-C)
The Indian law of trademarks is enshrined the new Trade Marks Act, 1999 came into force with effect from September 15, 2003. The old Trade and Merchandise Marks Act, 1958 was repealed at the same time. The new Trademarks Act of 1999 is in line with the WTO recommendations and is in conformity with the TRIPS Agreement to which India is a signatory. Trademarks Act, 1999 has been further amended by The Trademarks (Amendment) Act, 2010 to provide for protection of trademarks, in line with the Madrid Protocol.
Under the Trademarks Act of 1999:
See also: Classes of Trademark in India
Foreign Companies Registering Trademark in India
How can a foreigner register a trademark in India? Foreign or American companies
or individuals can register their trademark in India.
Can a foreign company sell its products or services in India before registering trademark in India?
Contact us for registering Trademark in India
Foreign Investors Establishing Business in India
Foreign investors, including USA businesses, planning to incorporate in India are required to seek governmental approval before incorporating in India or opening a branch office or establishing subsidiary in India.
Some approvals for foreign businesses are automatic - RBI Approvals - if they are below the regular percentage allowed for various Sectors. See our FDI in India Sector wise Guide for more information. Application for Permission is required for those approvals.
Special Permission - FIPB Approvals - could be obtained to invest over and above the regular percentage allowed for various Sectors.
Contact us for incorporating in India & setting up business in India
Services Offered by Us
Madaan & Co. has helped foreign companies, including USA Companies, in setting up their operations in India. A careful tax planning is required before opening a subsidiary, branch, joint venture, project office or liaison office in India. Click here to Contact us for setting up company in India
Our lawyers include those admitted to bar in the United States of America and India. They have undertaken legal maters in the USA, India and Europe. They understand the multi-cultural and the multi-jurisdictional aspects of international business in this age of globalization. They include those educated at Harvard Law School, Harvard University in the USA and premier universities in India. They believe in high moral and legal ethics.
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