India Trademark registration
In India the legal basis is the Trademark Act of 1999. The Indian Trademark law follows the principles of “common law”. Trademark protection is obtained by registration. An unregistered trademark may be protected due to prior use in which case an action for passing off may be initiated.
Requirements
A trademark application has to be filed before the Trade Marks Registry by a local agent as all documents and notices have to be served on the local address in India. An applicant situated abroad must have an address for service in India, which is usually the address of the Trademark Attorney who files the mark on behalf of the Applicant. The Trademark Attorney requires a Power of Attorney on a format given by the Trademark Office i.e FORM TM 48. The Power of Attorney can be filed at a later date and is not a requirement at the time of filing, incase of Foreign Applicants. There is NO requirement of legalization or notarization of Power of Attorney. Foreign applicants do not need a domestic registration.
Procedure
The application process includes a formal examination, which is based on distinctiveness, identity/similarity with prior pending marks or registered marks in the records of the Indian Trademark Office. It takes approximately 6-12 months from first filing to examination and acceptance of application for publication. After the mark is accepted for publication, the same is published in the Indian Trademark Journal for third party Opposition. The time limit for third party Opposition is 4 months from the date of publication. Incase no Opposition is filed within the statutory period in the published mark, then the same is entitled to be registered. Note that Indian Trademark Office allows 500 characters (alphabets with spaces) of goods and services under the prescribed statutory fee. If the number of characters exceed the limit prescribed, then the applicant is liable to be pay additional fee which is about Euro 1 for every 4 characters.
Duration
A trademark registration in India is valid for 10 years, which is counted from the date of filing of the application, notwithstanding when the mark is registered. Thus if the date of filing is January 1, 2010 and the mark is registered on December 1, 2012, the validity shall be counted from January 1, 2010 and shall remain in force until December 31, 2020. The mark must be renewed on or before December 31, 2020 or within 6 months period thereafter on payment of penalty and late fee.
Methods
NATIONAL REGISTRATION: If you just want to register your Trademark in one country, it is sufficient to apply for a national registration at the local trademark office. INTERNATIONAL REGISTRATION (MADRID SYSTEM)*: If you already have filed a trademark application or have a trademark registration in one or more countries of the Madrid Union (based on the Madrid Agreement and Madrid Protocol), you can obtain trademark protection by filing one single application, so called International Registration (Madrid System).
*Note: The fees for an International Trademark Application (WIPO) will be calculated for each individual country or multiple countries. For a quotation please send us an e-mail with the name of countries where you currently have a registration and all preferable countries where you wish to extend your trademark protection. INTERNATIONAL REGISTRATION (MADRID SYSTEM)*: If you already have filed a trademark application or have a trademark registration in one or more countries of the Madrid Union (based on the Madrid Agreement and Madrid Protocol), you can obtain trademark protection by filing one single application, so called International Registration (Madrid System).
Duly note, a trademark must be used within 5 years from the date of registration or it will become vulnerable to cancellation for non-use. The law, however, does provide for exemptions, i.e. “special circumstances in the trade” justifying non-use of a trademark. Such circumstances can be used as a defense in the event of an action for cancellation due to non-use.