India Trademark Service Charges
Note: According to the trademark law, when a trademark consists of several matters, its registration shall confer upon the proprietor an exclusive right to the use of the trademark taken as a whole. Further, the law states that registration of a mark shall not confer any exclusive right in the matter forming only a part of the whole of the registered mark. Hence, if any part or a word in a graphic mark is to be protected by way of registration, registration of each such part or word is necessary.
Trademark/Service Mark Applications
Note: All documents should be in English, or a certified/notarized English translation is required.
1. A simply signed Power of Attorney; this can be filed after filing the application.
2. Name(s), nationality, occupation and address of the applicant(s).
3. A list of the goods/services and the corresponding class(es), as per Nice Classification containing 42 classes.
4. The following additional details are needed in respect of trademarks to be registered:
• In case of word marks or graphic marks containing words that are not in English, name of the language and an English translation of the word(s);
• In case of graphics (2D or 3D), a brief explanation of the mark and 10 copies of the mark;
• In case of three dimensional (3D) mark, two dimensional graphic or photographic reproduction of three different views of the mark;
• In case of marks consisting of the shape of goods or its packaging, at least five different views of the trademark and a description by word of the mark;
• If a mark is to be registered wholly or in part to any combination of colors, 10 copies of the mark, (if a mark is registered in black and white, it shall be deemed to be registered for all colors).
5. A certified priority document or a copy of it duly notarized, if priority is to be claimed. If the certificate is not in English, a certified/notarized English translation is required. If it is not readily available, the application can be filed based on the basic application number, date of the application and country of the application. A copy of the priority document can be submitted within two months from the filing date of the application.
6. From which date (or month of the year or year) the mark is being used in India. If not used in India, mention ‘proposed to use’. If the mark is used only in respect of a few of the goods/services listed, date (or month of the year or year) since when the mark is used in India and items of goods/services in respect of which the mark has actually been used. Such use could be by the applicant(s), predecessor or assignor, etc.
Renewal of Trademark/Service Mark Registrations 1. A simply signed Power of Attorney.
2. The trademark registration number and the mark registered along with a copy of the registration certificate.
Assignment Applications1. A simply signed Power of Attorney. 2. Trademark application/registration number and the mark proposed to be registered/ registered.
3. A notarized copy of the assignment deed signed by the assignor and the assignee.
4. Name, address, nationality and profession or nature of business of the assignee.
5. Whether the assignment is with or without the goodwill of the business. If it is without the goodwill of the business, it has to be registered with the Trademarks Registry within six months from the assignment deed.
Change of Name Applications1. A simply signed Power of Attorney in the new name and/address. 2. A notarized copy of the change of name certificate issued by the competent authority.Change of Address ApplicationsA simply signed Power of Attorney with the new address.
India is a member of the Paris Convention for the Protection of Industrial Property; hence an applicant can claim priority of up to 6 months as per the convention. The International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement which consists of 42 classes is followed in India.
The revised trademark law (Trade Mark Act, 1999), which came into effect on September 15, 2003, allows for the protection of service marks in the international classes 35 to 42. Multi-class applications are also allowed, but statutory fees remain the same whether a single application is filed for goods/services falling in different classes or a separate application is filed with respect to each class of goods/services.
Once a trademark application is filed, it is examined as to its registrability which includes distinctiveness, deceptiveness, etc. and availability based on the existence of prior trademarks registered or pending applications. If there are any objections to the registration, an examination report is sent to the applicant. Except in a few cases, examination reports are issued as a matter of practice.
Once an examination report is issued, the applicant or his representative has to reply in writing to the report within one-month of the date of receipt. If the Registrar is not satisfied, he will call the applicant for a hearing. In case the application is rejected, the applicant can file a request for the review of the order of the Registrar. If the application is again rejected, the applicant can file an appeal before the Intellectual Property Appellate Board. (The applicant can invoke the writ jurisdiction against the decision of the Appellate Board). If the trademark application is accepted, it will be published in the Trademarks Journal.
An opposition to the registration of a trademark may be filed before the Registrar by any person or through an authorized representative/agent within 3 months from the date of the publication. The opposing party can seek an extension of one month to file the notice of opposition. In the absence of an opposition, the relevant certificate of registration will be issued.
In case of an opposition, the Registrar - after hearing both sides- would give his decision. Either of the parties may file an application to review the Registrar’s decision within one month from the date of such decision. After such review or without applying for such review, any party may make an appeal to the Intellectual Property Appellate Board within 3 months from the Registrar’s decision.
After the registration of the trademark, plea for cancellation of the trademark pleading that the registration of the trademark is invalid should be prosecuted before the Appellate Board.
A trademark registration is valid for 10 years as of the date of filing the application and renewable for periods of 10 years perpetually. In case of a convention application, the 10-year period begins from the earliest priority date. Trademarks that are registered before September 15, 2003, will remain valid according to the old law (7 years) and they would be renewed for 10 years. In case of applications filed before this date and registered on or after this date, validity period shall be 10 years.
An application for the renewal of the mark should be made within 6 months before expiration. The mark can also be renewed by paying surcharge within 6 months after the expiry date. If not renewed within the said 6 months, the mark would be removed from the register of trademarks. An application for restoration and renewal can be filed within one year from the date of the expiration of the registered trademark. If no action is taken within the said one-year period, a fresh application for the registration of the mark is to be filed.
The assignment of a trademark can be recorded while an application for the registration of the mark is pending, or after the mark is registered. In case of registered marks, unless an assignment has been entered against the trademark in the register, the assignment cannot be enforced.
Assignment can be made in respect of either all goods or services in respect of which the trademark is registered, or of some of those goods or services. If the assignment of the trademark is without the transfer of the goodwill of business, it has to be registered with the Trademarks Registry within 6 months from the assignment deed; otherwise the assignment shall not take effect.
Use of marks in India is not compulsory for filing applications or necessary for maintaining registrations in force. However, a registration is vulnerable to cancellation on the submission of an application by any aggrieved person, if the trademark has not actually been used during the 5 years immediately preceding the application for cancellation, or that the trademark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him, and in fact there has been no bona fide use of the trademark in relation to those goods or services up to a date 3 months before the date of the application for cancellation.
Unauthorized use of a trademark registered under the law or an imitation of such trademark applied on goods and services of the same class, or sale, storing for the purpose of sale, or exhibiting for sale of goods and services bearing a counterfeited mark, or using a mark duly registered under the law by another person to serve the purpose of unauthorized promotion of goods or services of the same class are offenses punishable under the law.
Well-known trademarks in the international market whether registered in India or not and known to the substantial segment of the public, which uses or receives such goods, are recognized by the law
T1: How long will it take to conduct a trademark search?
2-4 days.T2: Does India use the International Classification? Yes (45 classes).T3: Are there any goods or services for which the mark cannot be registered? No.T4: Does the specification of goods in any class limit the protection to the specified goods, or does it give additional protection to all the goods in the class? The specifications of goods limit the protection to the specific goods.T5: Can a trademark be registered in the name of more than one applicant (i.e. joint application)? If so, what are its requirements? Yes, apply jointly.T6: Can an application be filed claiming priority without priority documents? If yes, what is the deadline for filing the documents? Yes, two months from the date of filing in India.T7: Can one application cover more than one class of goods/services? Yes.T8: May priority be claimed under the Paris Convention? Yes.T9: What is the term of protection of a trademark? From what date is it calculated? 10 Years, from the date of filing.T10: Is marking compulsory and, if so, how should marking be made? No.T11: In case a trademark is not renewed in due time, and another company register the same trademark, can the original owner oppose the registration or not? Yes, based on prior use.T12: Can a mark in a trademark application be amended? Only if the amendment is not substantial as compared to the first mark.T13: Is use required before registration or for maintaining the registration in force? Use is not required before registration or for maintenance, but non-use may make the registration of mark liable to cancellation on application by an aggrieved person.T14: Is use of the trademark on one item sufficient to maintain the protection for all the goods covered by the registration? No.T15: What are the types of use required? Any type of use is sufficient.T16: Can the assignment of an application be recorded? Yes and it is compulsory.T17: Is recording a license agreement compulsory? What are the consequences of non-recordal? Not compulsory, but recommendable and application for recordal would not be entertained by Trademarks Registry after six months from the date of the agreement.T18: Can recordals such as change of name, address, merger, assignment, license, etc., be made against pending applications? Yes.T19: Can an assignment be made with or without the goodwill? What monetary consideration is to be mentioned as the value of the assignment? Is there any tax based on the value mentioned? Yes. US$ 1 is enough. No tax.T20: Can the trademark application be opposed and what is the opposition period?
Yes. Three months from the date of publication in the official journal.