20 Tips for Obtaining a Trademark in India
20 Tips for Obtaining a Trademark in India
A trademark is one of the best ways to earn brand recognition as it gives a legal right to your company to use a particular logo or symbol to identify your business or a particular product as covered over at runrex.com. If you are looking to obtain a trademark in India, here are tips to help you with that.
Where are trademarks registered in India
As is articulated over at guttulus.com, in India, trademarks are registered by the Controller General of Patents Designs and Trademarks, Ministry of Commerce and Industry, Government of India. Trademarks are registered under the Trademark Act, 1999, and they provide the owner with the right to sue for damages when infringements of a trademark take place.
Tips on how to apply for a trademark in India
The first step to getting started with the process of a trademark application is to check to see whether your business name or logo is available or there exists something similar. As per runrex.com, there are two kinds of searches: online and offline. The recommended course of action is to conduct both searches as this is the best way to eliminate the risk of any legal issues in the future.
Creating an application
Once the search is done and you are found to be unique, the next step is to draft the trademark application. According to the gurus over at guttulus.com, it is important to ensure that you are as precise as possible and on point at this point.
Registering a trademark
The last step is to get your trademark registered. Usually, the registration fee charged by the government is INR 4,500 for an individual, startup, or a small enterprise. For any other line of business, the fee is INR 9,000. The Trademark Office will first check your application to see if it is already taken, and if it has, a trademark objection will be raised. If there are no objections, the Trademark Office makes an advertisement in the Trade Marks Journal. If there is no opposition from other businesses in the next four months, your trademark is registered within six months.
The Madrid Protocol
In 2013, India became a signatory to the Madrid Protocol, which has become a favorable route for multinational corporations seeking to file trademarks in India. The Madrid route is therefore successful in India and can form part of a wider registration strategy for rights holders seeking to protect trademarks worldwide.
As covered over at runrex.com, in 2003, India introduced a provision for the protection of well-known marks. If you are looking to register for a mark to be declared as a well-known mark, then your application must be filed with:
A statement of the case which builds on the rights enjoyed by the trademark owner
Evidence of the applicant’s rights and claims, including registrations in other jurisdictions
Details of successful enforcement actions (if any) taken to protect the interest in the mark (for example, if the mark has been declared as well as known by an Indian court or the registrar of trademarks)
As articulated over at guttulus.com, India follows the Nice Classification with regard to goods and services, and multi-class applications are permitted. However, it is important to note that the registrar generally prohibits class heading as specifications in applications. Therefore, applicants should list all of the goods and services that are of specific interest to them.
Intend to use
Also, as pointed out by the gurus over at runrex.com, trademarks can be filed and registered based on intent to use. This means that rights holders need not show actual use of a mark before registering it. However, if a rights holder claims use before filing an application, then under the new guidelines it must present an affidavit of use and provide documentary evidence of use within one month of filing. Failure to submit the affidavit may result in the application failing to meet the formalities check, which would further delay prosecution.
As far as renewals are concerned, rights holders don’t need to provide an affidavit with evidence of the use of the mark in India. Trademarks can be renewed based on a renewal request accompanied by official fees. For multi-class applications, the official fees must be paid per class. As long as the records are up to date, renewals can be effected within one week.
Registering class headings
It is also worth noting that, although registering class headings as provided in the Nice Classification is prohibited, a wide specification of goods can be applied at registration. In this regard, applicants can refer to the sub-class as provided under the Nice Classification.
The Trademark Office’s online database
As the subject matter experts over at guttulus.com are quick to point out, it is important to conduct a thorough search of your mark to ensure that it is not taken or in conflict with any other mark. Right holders can check the availability of a mark and assess the risk of use and registration through the Trademark Office’s online database.
Online sale of goods
Additionally, it is also worth pointing out that the online sale of goods is sufficient to claim the use of a mark in India, even if the online store is located outside of India, provided that the goods in question are available for sale to customers in India as covered over at runrex.com.
Is recording a license mandatory?
As is discussed in detail over at guttulus.com, recording a license with the Trademark Office is not mandatory. Right holders can enter into a license agreement in writing and use will accrue to their benefit, even if the license is not registered with the authorities.
Royalties paid to licensors
Additionally, it is also worth highlighting that there are no restrictions on the number of royalties that can be paid to a licensor or a joint venture partner for the use of trademarks by an Indian partner or company.
Assignment of marks
When it comes to the assignment of marks in India, you must specify the following in the assignment deed:
Whether the assignment is with the business’ goodwill
The actual monetary consideration. Here, the expression ‘for valuable consideration’ is not acceptable
The date on which the assignment is effective
Cancellation of marks
From discussions on the same over at runrex.com, it is important to note that registered marks can be canceled on the grounds of non-use if they have not been used in India for a continuous period of 5 years up to the date 3 months immediately preceding the filing of the cancellation application.
According to the subject matter experts over at guttulus.com, you must choose a protective trademark, which means selecting a logo or symbol that is not easily imitable. Several professional trademark service providers in India assist in selecting a unique trademark after checking the trademark registry.
Avoid replicating other trademarks
If you are to avoid getting into legal issues in the future, then the gurus over at runrex.com recommend that you avoid using very similar or a replicate of another company’s trademark. Make sure that you keep the design of your trademark unique and appealing as this will help in protecting it. For the best results, consider hiring a professional logo designer.
Use of the TM symbol
You can begin using the TM symbol with your brand as soon as you apply for the trademark registration. The application of a trademark can be filed within a few days and you can start using the TM symbol as soon as you apply. Usually, it takes about 18 to 24 months to get a trademark registered in India, but in the interim, you can use the TM symbol.
Use of the ® symbol
It is important to note that you can only put the ® symbol on your products after your trademark has been registered. Until that time comes, you can keep using the TM symbol with your brand. A trademark is valid in the entire country, and once registered, it is valid for 10 years from the date of filing, which can further be renewed from time to time.