Trademark registration in India is a crucial step for businesses and individuals to protect their brand identity and gain exclusive rights to use their unique marks. The process is governed by the Trademarks Act, 1999, and administered by the Office of the Controller General of Patents, Designs, and Trademarks (CGPDTM), under the Ministry of Commerce and Industry.
Trademark Search (Highly Recommended and Crucial)
Before you even think about filing an application, conduct a thorough trademark search.
Purpose
To ascertain if your proposed trademark (word, logo, phrase, etc.) is similar or identical to any existing registered trademarks or pending applications in the relevant class(es). This minimizes the risk of objections and rejections later in the process.
Public Search (Official Website)
You can use the “Public Search” facility on the Intellectual Property India website (ipindia.gov.in). This allows you to search by wordmark, phonetic similarity, or Vienna code (for logos).
Professional Search
It’s highly recommended to engage a trademark agent or attorney to conduct a comprehensive search. They have access to advanced search tools and expertise to identify potential conflicts that a basic public search might miss.
Classification
Trademarks are classified into 45 classes (1-34 for goods, 35-45 for services) as per the Nice Classification. You must identify the correct class(es) for your goods or services. This is a critical step, as your registration will only grant protection in the specific classes you apply for.
Trademark Application Filing (Form TM-A)
Once you’ve confirmed the availability of your mark, you can proceed to file the application.
Who can apply?
Any person, individual, company, LLP, HUF, trust, society, or government department claiming to be the proprietor of the trademark.
Mode of Filing:
Online (e-filing)
This is the preferred and most efficient method. You’ll need to register as a user on the Intellectual Property India portal and ideally have a Class 2 or Class 3 Digital Signature Certificate (DSC) for e-filing.
Offline
Applications can also be physically filed at the regional Trademark Registry offices in Mumbai, Kolkata, Ahmedabad, Delhi, and Chennai.
- Form: The application is filed using Form TM-A.
- Details to Provide:
Trademark Representation
A clear soft copy of your trademark (logo if applicable, or the wordmark). If it’s a logo, it’s often advisable to file it in black and white to cover all color variations.
Applicant Details
Full name, address, nationality, and legal entity type (individual, company, partnership, etc.).
Goods/Services
A precise list of the goods or services for which the trademark is to be used, along with their respective classes.
Date of First Use (Optional but Recommended)
If you’ve already been using the trademark in commerce, you can specify the date of first use. This can strengthen your claim in case of a dispute. If not, mark it as “proposed to be used.”
Power of Attorney (Form TM-48)
If you’re filing through a trademark agent or attorney, a signed Power of Attorney (Form TM-48) authorizing them to act on your behalf is required.
Fee Payment
The government fees for trademark registration vary based on the applicant type and the number of classes.
For Individuals, Startups (DPIIT recognized), and Small Enterprises (MSME Udyog Aadhaar registered)
- E-filing: ₹4,500 per application per class.
- Physical Filing: ₹5,000 per application per class.
For All Other Cases (Companies, LLPs not registered as startups/MSMEs, etc.)
- E-filing: ₹9,000 per application per class.
- Physical Filing: ₹10,000 per application per class.
(Note: These fees are for filing Form TM-A. Other forms for opposition, renewal, etc., have different fees.)
Examination of the Application
After filing, your application undergoes examination by a Trademark Examiner.
Formalities Check
The examiner first checks for proper documentation and adherence to formal requirements.
Substantive Examination
The core check involves assessing whether the trademark meets the registrability criteria under the Trademarks Act, 1999. This includes checking for:
Distinctiveness
Is the mark unique enough to distinguish your goods/services?
Prohibited Marks
Does it fall under any categories that cannot be registered (e.g., marks hurting religious sentiments, scandalous marks, generic terms, deceptive marks)?
Similarity to Existing Marks
Is it identical or deceptively similar to any prior registered or pending marks in the same or similar classes?
Examination Report
If objections are raised (e.g., under Section 9 for lack of distinctiveness, or Section 11 for similarity to existing marks), an examination report is issued.
Response to Examination Report
You must file a reply to the examination report within one month from the date of receipt of the report, addressing each objection with legal arguments and, if necessary, supporting evidence. Failure to respond within the stipulated time can lead to the abandonment of your application.
Hearing (if required)
If the examiner is not satisfied with the written response, a hearing may be scheduled.
Publication in Trademark Journal
If the examiner is satisfied after examination (or after your response/hearing), the trademark is published in the Trademark Journal.
Purpose
This serves as a public notice that the mark is being considered for registration.
Opposition Period
Any third party who believes the registration of your mark would harm their existing rights has a period of four months from the date of publication to file an opposition to the registration.
Opposition Proceedings (if any)
- If an opposition is filed, the Registrar sends a copy to the applicant.
- The applicant must file a counter-statement within two months of receiving the opposition notice.
- Both parties may then file evidence (affidavits) in support of their claims.
- A hearing is scheduled, and the Registrar decides whether to allow the registration or uphold the opposition.
Registration Certificate
- If no opposition is filed within the four-month period, or if any opposition is resolved in your favor, the Registrar will proceed to issue the Trademark Registration Certificate.
- This certificate officially grants you the exclusive right to use the trademark for the specified goods/services.
- Upon receiving the certificate, you can legally use the ® symbol next to your trademark.
Documents Required for Trademark Registration
The exact documents may vary slightly based on the applicant type (individual, company, etc.), but generally include:
- Soft copy of the Trademark: The logo (if applicable) in JPEG/PNG format, preferably in black and white. If it’s a wordmark, a simple text representation.
- Applicant’s Identity Proof:
- Individual/Sole Proprietor: PAN Card and Aadhaar Card.
- Company/LLP: Certificate of Incorporation/Registration, Company PAN Card.
- Partnership Firm: Partnership Deed, PAN cards of all partners.
- Trust/Society: Trust Deed/Registration Certificate.
- Applicant’s Address Proof: Utility bill, bank statement, or other valid address proof.
- Udyog Aadhaar Registration Certificate (for MSME): To avail lower government fees.
- DPIIT Startup Recognition Certificate (for Startups): To avail lower government fees.
- Signed Form TM-48 (Power of Attorney): If filing through an authorized agent/attorney.
- User Affidavit (if applicable): If the trademark has been in use prior to the application date, an affidavit stating the date of first use and providing evidence of such use.
- List of Goods and Services: A clear and precise list of the products or services for which the trademark is to be registered, along with their respective Nice Classification classes.
- Digital Signature Certificate (DSC): Required for online filing.
Post-Registration
Validity and Renewal
A registered trademark is valid for 10 years from the date of application. It can be renewed indefinitely for subsequent 10-year periods by filing Form TM-R and paying the prescribed fee.
Monitoring
It’s advisable to regularly monitor the Trademark Journal for similar marks filed by others to protect your rights.
Infringement
If someone uses your registered trademark without authorization, you can initiate legal action for trademark infringement.
Given the complexities involved, especially in conducting thorough searches, responding to objections, and handling opposition proceedings, it is highly advisable to consult with our experienced trademark experts. They can guide you through the process, ensure compliance, and maximize the chances of successful registration.