Trademark Filing and Registration in India

In the vibrant and ever-evolving world of business, protecting your brand is crucial. Your brand is more than just a name or logo; it represents your identity, reputation, and the essence of what sets you apart from the competition. Trademark filing and registration in India provide a robust legal framework that empowers businesses to safeguard their unique identities. In this article, we will take a closer look at the process of trademark filing and registration, unraveling its significance and highlighting the steps involved.

Step 1: Understanding the Importance of Trademarks

Before we dive into the process, let’s explore why trademarks are vital for businesses. Trademarks serve as valuable assets that distinguish your goods or services from those of others, helping consumers identify and connect with your brand. They embody your reputation, trust, and quality. By registering a trademark, you gain exclusive rights to its use, preventing others from capitalizing on your hard-earned reputation and diluting your brand’s distinctiveness.

Step 2: Conducting a Thorough Trademark Search

Once you’ve recognized the significance of trademarks, the next step is conducting a comprehensive trademark search. This involves exploring existing trademarks to ensure that your proposed mark is distinct and not already registered by another entity. A thorough search minimizes the risk of potential conflicts or objections during the registration process.

Before conducting the search, it is essential to assign the trademark a class. The trademark classification system is referred to as the NICE classification system. This consists of 45 distinct classes, with classes 1-34 pertaining to products and classes 35-45 to services. Supposedly, if your trademark is used to sell clothing materials, it will be categorised as a product and fall under NICE class 25, whereas if it is used for a restaurant, it will be categorised as a service and fall under NICE class 43.

To illustrate, let’s imagine a budding fashion designer named Maya, who has created a unique logo for her clothing line called “Aurora Threads.” Before proceeding with the registration, Maya engages in diligent research, examining existing trademarks in the same or related industries. This search reveals that “Aurora Threads” is not already registered, allowing Maya to proceed confidently with the filing process.

Step 3: Preparing the Trademark Application

Once you’ve completed a successful search and determined the availability of your trademark, it’s time to prepare the trademark application. This entails gathering relevant information and submitting it to the appropriate authority—The Trademark Registry in India (Mumbai, Chennai, Ahmedabad, Kolkata & Delhi).

The application includes details such as the applicant’s name and address, a clear representation of the trademark, the goods or services associated with the mark, and the appropriate class of goods or services based on the classification system. Providing accurate and comprehensive information is crucial to ensure a smooth and successful registration process.

Step 4: Filing the Trademark Application

With the completed application in hand, it’s time to file it with the Trademark Registry in India. The application can be filed either online or in person at the appropriate office. It is essential to adhere to the prescribed format, pay the required fees, and submit all necessary supporting documents to ensure a valid and timely filing. 

The Power of Attorney (POA) is the most important document when submitting a trademark application. In addition, if the trademark has been in use for some time, an affidavit proving such use, known as a user affidavit, becomes crucial.

Lastly, if the proprietor is a sole proprietor, an MSME, or a startup, the government fees for per trademark application will be Rupees 4,500 (MSME or startup certificates must be submitted to claim this discount); otherwise, the fees will increase to Rupees 9,000.

Step 5: Examination and Objections

After filing, the Trademark Registry evaluates the application to ensure compliance with legal requirements and examines its distinctiveness. This examination process may include a search for prior trademarks and potential conflicts.

During the examination stage of a trademark application in India, there are two common categories of objections that can be raised: a Section 9 objection and a Section 11 objection. Let’s examine every type in detail:

Objections under Section 9 pertain to trademarks that are descriptive, non-distinctive, or generic, lacking in originality or distinction. These objections are raised when the proposed trademark is purely descriptive of the goods or services it represents, or when it is widely used in commerce. Attempting to register a descriptive term such as “Delicious” for food-related products would raise an objection under Section 9.

In contrast, Section 11 objections occur when a proposed trademark conflicts with existing trademarks or pending trademark applications. These objections focus on the similarity between the proposed trademark and previously registered trademarks or pending trademark applications for similar or identical classes of products and services. For instance, the registration of “Coca-Kola” for a beverage would be opposed under Section 11 due to its similarity to the famous trademark “Coca-Cola.”

Step 6: Publication and Opposition

Once the application clears the examination stage, it moves to the publication phase. The trademark application is published in the Trademark Journal, allowing the public to view and potentially oppose the registration for a period of 4 months. During this period, if any interested party believes the proposed mark infringes on their rights or conflicts with their existing mark, they can file an opposition.

If an opposition is filed, it triggers a legal process where both parties present their arguments and evidence before the Trademark Registry. The outcome of this opposition proceeding determines the fate of the trademark application.

Step 7: Registration and Protection

If no opposition is filed within the stipulated time or if the opposition is successfully overcome, the trademark application proceeds to the final stage—registration. The Trademark Registry issues a Certificate of Registration, granting exclusive rights to the trademark holder for the specified goods or services. 

The term of protection for a trademark is ten years from the date of filing the trademark application. After the initial ten-year period, the trademark owner can renew the registration indefinitely for successive periods of ten years each.

With the Certificate of Registration in hand, the trademark owner gains legal protection and the power to enforce their rights, preventing others from using a similar mark within the registered class of goods or services.