Trademark attorney in India
I, Mahesh Bhagnari, am the Managing Principal of the firm:
- I am an Attorney at Law with Bar Council Registration № MAH/1574/2003.
- I am licensed to practice at the Intellectual Property Office as a Patent attorney in India and Design attorney in India with Registration № IN PA 1108.
- I am licensed to practice as a Trademark attorney in India with Registration № 10742.
- I have more than twenty years of professional experience working in the field of Intellectual property.
India is the rapidly growing market
In 2018-19, a total of 3,23,798 trademark applications were filed in India. This number increased to 3,34,805 in 2019-20. Despite the challenges posed by the global Covid-19 crisis, patent filings rose to 4,31,213 in 2020-21 and further to 4,47,805 in 2021-22 as the world began recovering. In 2022-23, filings jumped to 4,66,580, and projections suggest that filings will exceed 5,00,000 in 2023-24.
With its vast population and rapid economic growth, India has become a key global market. This is reflected in the rising number of trademark applications filed each year, showcasing India’s increasing focus on intellectual property protection, making it an attractive destination for businesses. Filing a trademark application in India opens the door to substantial business opportunities in a rapidly expanding economy.
Given below are a few of the questions I am usually asked by the applicants:
What is a Trademark in India?
A trademark in India (and in many other countries) is an intellectual property right associated with a mark. This mark can encompass various elements such as a name, symbol, figure, letter, word, logo, number, phrase, picture, packaging, slogan, or a combination of these.
According to the Trademark Act of 1999, a trademark is defined as “a mark that can be graphically represented and is capable of distinguishing the goods or services of one individual from those of others. It may include the shape of goods, their packaging, and color combinations.”
Businesses utilize trademarks to identify and differentiate their goods and services from those of others, signaling their source of origin as belonging to that particular business.
The concept of ‘trademarks’ dates back to ancient times when craftsmen marked their artistic or utilitarian products with their signatures or “marks.” Over the centuries, these marks have evolved into the trademark system we recognize today.
Why Should I Register a Trademark in India?
The trademark system assists consumers in identifying and purchasing products or services by ensuring that the unique trademark signifies the nature and quality of what they seek.
For businesses competing in a crowded marketplace, it’s vital to distinguish their brands, build goodwill, and make it easier for consumers to remember and recall the products they use. This, in turn, drives increased sales.
A registered trademark offers a competitive advantage by safeguarding the brand and differentiating it from competitors.
On a broader scale, trademark registration encourages initiative and entrepreneurship by rewarding trademark owners with recognition and financial benefits.
Additionally, trademark registration helps prevent unfair competitors, like counterfeiters, from using similar marks to promote inferior or unrelated products or services. This allows skilled individuals to confidently produce and market their goods and services without the risk of someone else appropriating their goodwill.
Under Indian trademark laws, it is crucial to file a trademark application in the appropriate classes with an acceptable description of goods/services to ensure a smooth and efficient registration process.
How to Obtain Trademark Registration in India
The journey to registering your trademark starts with submitting your application. Upon submission, the registry issues an official receipt, indicating the filing date and the unique application number.
Subsequently, the Indian Trademarks Office conducts a formal examination of the application to assess its inherent registrability and any potential similarities with existing trademarks.
If there are objections to the registration, an official examination report will be generated.
To address the objections, you must submit a written response or provide evidence demonstrating acquired distinctiveness. Typically, this process involves an interview or hearing with the examiner. The Registrar may request a statement of facts from the applicant, including exhibits showcasing the mark’s usage.
Once examined, if the application is deemed acceptable, the trademark will be published in the Trademarks Journal.
If no oppositions arise within three months from the advertisement date in the Trademarks Journal, the trademark registration certificate will be granted.
The trademark registration process can be lengthy, often taking around 18-24 months for straightforward cases without objections or oppositions. However, once your application is submitted, you receive an application number immediately, and your priority date is established.
After registration, the trademark is valid for ten years from the application date and can be renewed indefinitely by paying renewal fees every decade.
What are the Types of Trademarks That Can Be Registered in India?
The possibilities for trademark registration are extensive. Trademarks can consist of various elements, including words, letters, and numbers. They may also include designs, symbols, three-dimensional signs (like the shape and packaging of products), sounds (such as music or vocal signals), fragrances, or colors that serve as distinguishing features.
In addition to marks that identify the commercial source of goods or services, there are several other types of trademarks. Collective marks are owned by an association whose members use them to signify a level of quality or adherence to specific standards set by the association.
Examples include associations representing professionals like accountants, engineers, or architects.
Certification marks are awarded for compliance with defined standards and are not limited to association members. They can be granted to anyone who certifies that their products meet established criteria. An example of a widely recognized certification is the internationally accepted ‘ISO 9000’ quality standards.
Can You Obtain International Trademark Registration?
Trademark registration is territorial, meaning separate applications must be submitted in each country where you wish to register your trademark.
If you intend to sell and market internationally, it’s crucial to register your trademarks in those nations. Generally, the party that first registers a mark holds the rights to it. Thus, it’s vital to secure trademark registrations in each country that your business considers a potential market.
National trademark registration does not extend beyond the borders of the registering country.
Many companies that expand internationally often realize too late the importance of registering their trademarks abroad, typically only after encountering counterfeiters or being accused of infringing on others’ rights. The risks are substantial, and the consequences can be extremely costly, jeopardizing a company’s entire business strategy. Investing in a brand and promoting it locally only to find it cannot be registered or used internationally can lead to significant financial losses.
- Registering a trademark internationally grants the applicant exclusive rights to market their products in those regions.
- This registration not only helps prevent counterfeiting but also ensures the company maintains exclusive rights to what could be one of its most valuable business assets.
- International trademark registration also opens the door to licensing the trademark to others and can serve as a foundation for a company’s franchising or merchandising strategy.
The advantages of international trademark registration and protection far outweigh the costs involved.
What is an International Application under the Madrid Protocol?
The Madrid System offers a unified and cost-effective procedure for international trademark registration across multiple countries and territories. India joined the Madrid Protocol on July 8, 2013.
Currently, there are 91 member countries under the Madrid Protocol, which you can review here.
To file an international application under the Madrid Protocol, a corresponding trademark application must be filed in India for the same mark in the same classes.
A single international application under the Madrid Protocol allows you to designate several member countries for trademark protection. The filing fees will depend on the number of classes and the countries selected.
You can calculate the fees using the online tool by choosing India as the Office of origin, selecting the number of classes, and indicating whether the mark is in color: Click here for Fee Calculator.
In addition to filing fees, a handling fee of INR 2,000 is payable to the Indian Trademark Registry. Once the application is submitted, each designated member country examines the mark for registration.
However, an international registration under the Madrid Protocol remains contingent on the corresponding Indian application for five years from the date of the international application.
If you want to obtain registration in a country that is not a Madrid Protocol member, you will need to file a separate national trademark application directly in that country.
What are the advantages of Filing an International Application under the Madrid Protocol?
- Lower costs and fees compared to individual foreign filings.
- Simplified management of renewals, address changes, and ownership changes.
- Additional countries can be designated at a later date.
What Does a Trademark Do?
A trademark safeguards the owner’s exclusive right to use the mark to identify their goods or services, and it allows the owner to authorize others to use the mark for compensation.
Typically, the protection period lasts for ten years, but a trademark can be renewed indefinitely as long as renewal fees are paid.
Trademark protection is enforced through the courts, which can prevent trademark infringement.
Broadly speaking, trademarks encourage initiative and entrepreneurship worldwide by rewarding trademark owners with recognition and financial gain.
Trademark protection also curtails unfair competition, as it prevents counterfeiters from using similar distinctive marks to market subpar or unrelated products or services.
This system enables skilled individuals to produce and market goods and services under fair conditions, thereby facilitating international trade.
What Protection Does Trademark Registration in India Offer?
Trademark protection ensures that trademarked goods or services cannot be made, used, distributed, or sold commercially without the owner’s consent. These rights are typically enforced through the courts, which have the authority to stop trademark infringement.
Conversely, a court can declare a trademark invalid if a third party successfully challenges it. The trademark owner has the right to determine who may use or not use the trademark.
The owner can grant permission to others to use the trademark under agreed-upon terms or sell the rights, transferring ownership to someone else.
How Extensive is the Protection Offered by Trademark Registration in India?
Every country worldwide registers and protects trademarks. Each national or regional office maintains a Register of Trademarks containing comprehensive application details for all registrations and renewals, which facilitates examination, searches, and potential oppositions by third parties.
However, the effects of such registration are limited to the specific country (or countries, in the case of regional registration) concerned.
To simplify the process of avoiding separate registrations with each national or regional office, WIPO oversees a system of international mark registration. This system is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol. An individual with a connection (through nationality, domicile, or establishment) to a country that is a party to one or both treaties can obtain an international registration based on their registration or application with that country’s trademark office. Currently, over 60 countries are parties to one or both agreements.
Why Should I Register My Company Name/Trade Name as a Trademark?
Registering company names, business names, or domain names does not confer ownership or exclusive rights like trademark registration does. Therefore, to protect your brand name, trademark registration is highly recommended.
What Does It Mean If My Trademark Application Status is ‘Formalities Chk Fail’?
This status is one of the initial stages of the trademark registration process, indicating that the application has failed to meet certain formalities. Reasons for this status can include failure to submit the Power of Attorney (POA), missing translations/transliterations for non-English/Hindi trademarks, or filing in the wrong class. It’s essential to identify the reason for this formalities objection and take appropriate action to advance the application toward registration.
What Does It Mean If My Trademark Application Status is ‘Formalities Chk Pass’?
When the status shows ‘Formalities Chk Pass,’ it means that the Trademark Registry has verified that the basic requirements are met. This includes ensuring that the POA is uploaded (if filed through an agent) and that appropriate translations/transliterations are provided for trademarks not in English/Hindi. If these requirements are not met, the status could reflect ‘Formalities Chk Fail.’
What Does It Mean If My Trademark Application Status is ‘Marked for Exam’?
The status ‘Marked for Exam’ indicates that the trademark application has been assigned to an examiner. The trademark will be assessed for its registrability according to various sections of the Trademarks Act. An examination report will then be issued, either accepting the trademark for publication or raising objections regarding its registrability. At this stage, the applicant must wait for the examination report.
What Does It Mean If My Trademark Application Status is ‘Exam Report Issued’/’Accepted’?
The status ‘Exam Report Issued’ or ‘Accepted’ signifies that the trademark application has been approved for publication in the Trademarks Journal prior to registration. This status is assigned when no objections have been raised by the examiner regarding the trademark’s registrability, or when any objections have been resolved through written submissions or hearings. At this point, no further action is needed from the applicant unless the application does not proceed to journal publication.
What Does It Mean If My Trademark Application Status is ‘Objected’?
The status ‘Objected’ appears when the examiner raises concerns about the trademark’s registrability. You can view the examination report detailing these objections on the Trademark Registry website. To resolve the objections, you must submit a
written response to the Trademark Registry within one month of receiving the examination report; otherwise, your trademark application may be considered abandoned. If the examiner remains unconvinced by the written response, a hearing will be scheduled to allow for arguments to be presented in person.
What Does It Mean If My Trademark Application Status is ‘Advertised Before Acc’ or ‘Advertised’ or ‘Accepted & Advertised’?
This status indicates that your trademark application has been published in the Trademarks Journal. This is one of the final stages of the trademark registration process. After publication in the Trademarks Journal, a four-month period is given for any third party to oppose the trademark registration. If no oppositions are filed within this four-month window, the trademark registration certificate is typically issued within three months thereafter.
What Does It Mean If My Trademark Application Status is ‘Opposed’?
If your application status shows ‘Opposed,’ it means a third party has submitted an opposition against your trademark registration. The registry will send a notice of opposition to you or your agent. To contest the opposition, you must file a counter-statement within two months of receiving the notice. If you fail to do so, your trademark application will be abandoned and cannot be revived. No extensions for filing the counter-statement are granted.
What Does It Mean If My Trademark Application Status is ‘Send Back to EDP’?
The status ‘Send Back to EDP’ indicates that there are data entry errors in the application that need correction. The application is returned to the EDP Section for rectification, which may also occur if the documents are not properly digitized. This status will remain until the EDP Section resolves the issues.
Attorney fee for trademark in India
Action based fee
- Attorney fee for preparing and filing a trademark application in India
- Additional fee for responding to office actions
- Additional fee for preparing evidences and arguments
- Additional fee for attending hearings with the examiner
Capped Flat fee
- Attorney fee for preparing and filing a trademark application in India
- No further fee for responding to office actions
- No further fee for preparing evidences and arguments
- No further fee for attending hearings with the examiner
Official fee for trademark registration in India
Applicant Type | Indian Rupees | US Dollars |
Individual/Start-Up Firm | 4500 | 75 |
Large Firm/Foreign Firm | 9000 | 150 |
Written by Mahesh Bhagnari, Patent & Trademark Attorney in India.
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email: info@bhagnari.com
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