India Trademark Registration

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1. Is registration of a trademark mandatory in India?

   Registration is not compulsory, but it is advisable. Otherwise the legal benefits of registration may not be available, right to sue for infringement of mark.

2. Which Intellectual Property rights are registrable?

   The definition of trademark is broad and includes: device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors, or any combination thereof. A trademark can be registered for goods and services.

3. Can a trademark be registered for covering a commercial establishment which activity is focused in selling goods to consumers, for example retail stores? If so, how is the registration procedure? Are there any special requirements for it?

   Yes, a trademark can be registered for retail and like services in classes 35 to 42. Classification in India is limited to class 42 while NICE classification extends upto class 45. Services included in classes 43 -45 of NICE Classification are either filed in Class 42 of the Indian Classification or as advised by the Registrar.

4. Is there any advantage in using a trademark before filing an application?

   Yes. Use of the mark is always advantageous. The first person to use a mark has the right to such mark, even if another party subsequently registers it. In other words, India is a first-to-use jurisdiction and first use of a mark is superior to registration. Prior use of the mark is not a requirement for filing, but where prior use is extensive, it is possible to initiate an action for passing off.

5. How long does the registration process take?

   In the absence of objections and oppositions, the registration process takes between 2 to 3 years.

6. Is there any requirement of use for registered trademarks? If so, what happens in case it is not used?

   Use of a trademark is not mandatory to maintain its validity. However, a trademark must be used within five years from the date of registration or it will become vulnerable to cancellation for nonuse. The law, however, does provide for exemptions, i.e., “special circumstances in the trade” justifying nonuse of a trademark. Such circumstances can be used as a defense in the event of an action for cancellation for nonuse.

7. In the case of a registered mixed trademark (word + logo), is it possible to include in the logo, different or additional words from those mentioned in the word mark?

   Registration grants right on a particular form or design of the LOGO and does not give any right on the verbal element contained in the Logo or Design unless the same is filed seperately as a Word Mark.

8. How can I know which is the due date for the renewal of a registered trademark?

   The term/renewal date of a registration is 10 years from the application date.

9. When should I pay the renewal fee of my registered trademark?

   A renewal may be filed during the six month period expiring with the renewal date.

10. Is it possible to pay the renewal fee of a patent after the renewal due date has expired? If so, when should I pay?

    It is possible to renew for twelve months after the renewal date without payment of a fine.

11. What documents are required for filing a trademark or renewal application?

    A power of attorney (authorization form) executed by the proprietor is required for renewal.

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