Q. What is protected?

 

A device, label, name, signature, word, slogan, letter, numeral, a shape of goods, packaging or combination of colours or any combination thereof.

 

Q. What is not protected?

 

• Any mark which is non-distinctive.

• Any mark which is descriptive, i.e., mark which indicates the kind, quality, quantity, intended purpose, values, geographical origin or time of production.

• Customary mark, i.e., marks which are common to public.

• Any mark which deceives the public or causes confusion, is hurtful to religious sentiments, is scandalous or contains obscene matter.

 

Q. Who can seek registration of a trademark?

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Any person or legal entity claiming to be the proprietor of a trademark can apply.

 

Q. Should I file for a word mark or a device mark?

 

A word mark protects the textual element broadly, regardless of font, style, colour, or presentation, while a device mark protects the mark as applied for, such as logos, symbols, and distinctive graphic designs, etc.  Word marks offer wider protection across fonts and styles.

 

Q. Why register in black & white, and not in colour?

 

Filing in black & white protects the mark in all colour variations, and gives broader protection irrespective of colour, whereas filing in colour limits protection to the specific colours being used in the mark.

 

Q. Is it mandatory to register a trademark before commencing its use?

 

No, registration of a trademark is not mandatory, although it is recommended. Use of a mark is independent of its registration.

 

Q. Why register a trademark?

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•    Trademark registration serves as prima facie evidence of ownership of the trademark.
•    It is an important asset for a business and contributes to goodwill and gives exclusive rights to            the owner to use the trademark for the specified goods and services. 
•    Gives stronger enforceable rights to prevent others from using the trademark in connection with         the goods or services for which it is registered.
•    Opens the doors to the statutory remedy of trademark infringement. 
•    Assists in preventing third parties from unauthorizedly obtaining registration for similar marks

 

Q. Can an Indian application claim priority from a foreign application?

 

Yes, under the Paris Convention, within six (6) months of the application date of the foreign application.

 

Q. Does India recognize the First-to-File or First-to-Use principle?

 

India, being a common law jurisdiction, follows the First-to-Use principle. Rights of the first user are given precedence over the rights of the first filer.

 

Q. Why file an application with a use claim when the Registry allows filing on a ‘proposed to be used’ basis?

 

If the mark is in use as on the date of filing the application, it is advisable that the application be filed claiming use from the date when the mark was first used on the goods/services. Such an application is filed along with a Use Affidavit and supporting documents to establish use since the date of first use claimed. Use claims help show priority in use both during the prosecution of the application and enforcement against third-party marks.

 

Q. What documents are required to file?

 

·A trademark application for registration is to be made on the appropriate form.

·Application should be accompanied by requisite fees.

·The representation of the mark.

·Signed Power of Attorney.

·User Affidavit and supporting documents (in cases claiming a use date).

·A certified copy of the earlier foreign application, which must include a certified English translation if not already in English.

 

Q. What is the procedure for registration of trademark?

 

• Once an application is filed, the Registry examines the application for defects and on absolute and/or relative grounds.

• In case of objections by the Registry, the Applicant is required to submit a response within one (1) month. A hearing may be scheduled.

• Post-examination process, if the trademark application is considered allowable, the trademark will be advertised in the Trade Marks Journal. Once the mark is advertised, it is open for a period of four (4) months for third parties to oppose.

• If no opposition is received during the specified period, the trademark proceeds to registration.

 

Q. How long does it take from filing to registration?

 

Around 12-24 months, in a straight-forward case, without any objections or oppositions.

 

Q. Can a person apply for registration of more than one mark in a single application?

 

No, separate applications should be made for registration of separate marks.

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Q. Does India allow multi-class applications?

 

Yes. If, however, the bases of use for goods/services in different classes are different, it is advisable to file single-class applications claiming different use dates for each class. The e-filing portal does not allow different use claims to be made in respect of different classes in a multi-class application.

 

Q. Are marks examined on both absolute and relative grounds of refusal in your jurisdiction?

 

Yes. The Registry examines applications on both absolute and relative grounds of refusal.

 

Q. Are cross-class citations common in India?

 

Currently, barring Class 35, the Registry, while examining applications will typically only cite prior marks in the same class. The possibility of cross-class citations in the future cannot be ruled out if the Registry’s examination process changes.

 

Q. Are hearings on trademark applications common in your jurisdiction?

 

Yes, hearings are not atypical in our jurisdiction. Generally speaking, when the Registry is not satisfied with the written response/ arguments, it schedules an oral hearing to provide the applicant with an opportunity to present its arguments orally.

 

Q. What do the ™ and ® symbols signify? When can we use them?

 

·™ is used to indicate that the trademark is unregistered. It can be used even for trademarks for which registration is not applied.

·® is used to represent a registered trademark. It indicated complete ownership and legal rights. Misuse of ® is a criminal offence.

 

Q. Are domain names, websites, and corporate names trademarks?

 

Yes, they qualify as source identifiers and function as trademarks.

 

Q. Is the registration date the same as the application date?

 

In India, the registration date is the same as the application date. Renewals are counted from the application date. However, the date on which a registration is entered into the Trade Marks Register is important because it is used to calculate the date of vulnerability to cancellation of a registered mark.

 

Q. Can prosecution of a trademark application be suspended pending the adjudication of a proceeding initiated in relation to a cited mark?

 

No, trademarks law in India does not allow for such suspension.

 

Q. What is the term of the registration? Can it be renewed?

 

• 10 years from the date of application.

• Can be renewed indefinitely every 10 years.

 

Q. How soon can a request for renewal of a mark be filed?

 

A request to renew a registered trademark can be filed as early as one (1) year prior to the date of expiration.

 

Q. Is evidence of use required to renew a registration?

 

No, trademarks law in India does not require filing of evidence of use to renew a registration. A request for renewal simply needs to be accompanied by the requisite official fee.

 

Q. What are the consequences of not renewing a trademark?

 

• If the trademark is not renewed by the expiration date, a request for renewal may still be filed within a grace period of six (6) months thereafter (with a surcharge).

• If not renewed within this grace period, the registration may be restored within a further six (6) month period (with an even higher fee).

 

If no request for renewal or restoration is filed within one (1) of the expiration date of the registration, the mark is liable to be removed from the Trade Marks Register.

 

Q. What is the trademark classification system in India?

 

India follows the Nice Classification system with 45 classes:

 

• Classes 1 – 34 are for Goods

• Classes 35 – 45 are for Services

 

Q. Can an unregistered trademark be protected in India?

 

Yes, under common law, unregistered trademarks can be protected through passing off actions. However, legal remedies are limited as compared to registered trademarks.

 

Q. Is trademark assignable?

 

Yes, either with or without goodwill.

 

Q. What is the timeline of a trademark opposition in India?

 

Generally speaking, opposition proceedings may take a few years (anytime between 1-3 years or more) to conclude, depending on the Registry’s functioning.

 

Q. Can a registered trademark be cancelled?

 

Yes, a cancellation action can be initiated before the Trade Marks Registry or the relevant High Court having jurisdiction. Grounds for such an action include non-use for a continuous period of five (5) years from the date on which the mark is entered into the Register, the mark remaining on the Register without any sufficient cause or having been wrongly entered into the Register.

 

Q. Who can petition to cancel a registration?

 

Unlike in oppositions, where any person can file an opposition, a cancellation action can be initiated only by a person aggrieved by the registration remaining on the Register. The threshold to cancel a registration is higher than that to abandon an application through an opposition.

 

Q. Are certification marks protectable in India?

 

Yes, certification marks certify the quality, origin, or other characteristics of goods/services and are protectable under Indian law. Such applications are accompanied by a Statement of Case and draft regulations detailing the manner in which use of the certification mark will be regulated.

 

Q. What is a well-known trademark?

 

A mark that is widely recognized as such by the substantial segment of the consuming public and enjoys a broad scope of protection across classes of goods and services.

 

Q. How can I file an application to get my trademark declared as well-known? What are the documents required?

 

An application on the appropriate form with the required fee can be filed for including a mark in the list of well-known marks maintained by the Registry. This must be accompanied by a Statement of Case (containing extensive evidence why a mark is well-known mark), an affidavit by an authorized signatory, Board Resolution in favor of the authorized signatory, and Power of Attorney.

 

Q. Why seek declaration of a mark as well-known?

 

The declaration of a mark as well-known will have many benefits:

 

1.Acts as primary evidence of the well-known character of the mark and also deters adversaries from challenging a claim as to the well-known nature of the mark in contested proceedings.

2.A court of law would pay immediate attention to a well-known recognition and hold that such a mark is entitled to be put on a higher footing in enforcement efforts, including against similar marks being used on and in relation to dissimilar goods/services.

3.May assist with negotiating settlements with proprietors of third-party similar marks, even in unrelated classes of goods/services.

 

Q. Are non-conventional trademarks protectable in India?

 

Yes, the Trade Marks Registry does protect non-conventional trademarks, such as sound marks, motion marks, position marks, and 3-dimensional marks.