This article is written by Haridya Iyengar and further updated by Shreya Patel. This article acts as a comprehensive guide on how to register a trade mark in India. The article also throws light on the advantages of registering a trade mark and the kinds of trade marks which can be registered.
Table of Contents
Introduction
One of my college mates came up with a brilliant name for her new business. It was trendy, catchy, and very unique in nature. The name represented the business perfectly. She has also designed a creative logo for her brand along with the website. Months after her business started, she received a cease and desist letter (a document which states the receipt party to stop an activity as it infringes the right of the sender) from a company.
The letter stated that she was using their logo and brand name without permission and infringing their rights. These kinds of trade mark issues occur more than you think on a daily basis. In the blink of an eye, the whole business can come to a halt. You can avoid this from happening by registering your trade mark from the start itself.
In this article, we have a detailed discussion on the entire procedure of registering a trade mark in India. We will discuss who can register a trade mark, what types of trade marks can be registered, along with some crucial points on what to do after the trade mark has been registered.
Before walking through the process of trade mark registration, let’s take a look at how the trade mark and its related laws and rules have evolved during these years.
What is trade mark and trade mark registration
A trade mark is a mark that is unique in nature and helps the consumers identify the goods or services of one entity from another in the market. The origin of the goods and services can be identified by looking at their trade mark. A trade mark can be a symbol, mark, logo, sign, etc. Section 2(1)(zb) of the trade marks Act, 1999 (hereinafter mentioned as the ‘Act’) defines a trade mark as a mark which can be graphically represented and is also capable of distinguishing the goods and services of one party from another.
The process of acquiring the legal right to use a mark, logo, or symbol in relation to a specific goods or services is called trade mark registration. With the trade mark registration, the owner can get the exclusive right to use a trade mark and can sue parties that use the registered mark without prior permission.
Advantages of registering a trade mark
Why is registering a trade mark given so much importance? Below are some of the key advantages which will make us understand as to why we should register our trade mark in India.
- Trade marks make it easier for your customer base to find you.
- Trade marks distinguish your services and products from those of your competitors.
- A trade mark helps in identifying you as the source and indicates a consistent level of quality of your services and products.
- Trade marks also increase brand awareness and goodwill.
- Trade marks are economically efficient tools which create a face value in the market among competitors; they give your business a monopoly over the brand name.
- When a trade mark is registered, it gives the owner an exclusive right to use the trade mark.
- Trade mark registration acts as a low-cost protection. The trade mark registration has to be done only once. Then it only needs a renewal every 10 years.
We have understood the advantages of registering a trade mark in India. Now let’s move on to the next crucial step in trade mark registration, which is who all can register a trade mark in India?
Registration of trade mark in India
A trade mark is one of the significant intellectual properties for all kinds of business in India. In India, there are various types of trade marks which can be registered, such as word marks, device marks, service marks, collective marks, or certification marks. In order to register any type of trade mark, a registration procedure is laid down by the trade marks office in India.
We will now delve into how to register a trade mark in India. We will first start with who can register a trade mark in India, as before proceeding to the registration process, one should know whether they can register a trade mark in India or not.
Who can register a trade mark in India
Section 18(1) of the Act states that any person who asserts the ownership of the trade mark can file the trade mark in India.
A trade mark can be registered by the following:
- Natural person
- Association of persons
- A body incorporate
- Hindu Undivided Family
- Trusts
- Proprietorship firms
- Societies
- Joint owners of a company
- Partnership firms
- Limited Liability Company
Where to register a trade mark in India
Trade mark applications are handled by the Office of the Controller General of Patents, Designs, and trade marks. The office has its branches available in Mumbai, Kolkata, Ahmedabad, Delhi, and Chennai. The application must be filled as per territorial jurisdiction. The trade mark application can be filed online by visiting the official website of the Office of the Controller General of Patents, Designs, and Trade marks, or offline by visiting the trade mark office which comes under your jurisdiction. A trade mark cannot be registered anywhere else.
How to register trade marks in India
India is a ‘first to use’ country when it comes to trade mark registration, which means that the party that uses the trade mark first will get an upper hand. Hence, registering the trade mark before you start to use it is very vital. This way you can protect your trade mark and brand name and avoid any third party claiming that you are infringing their trade mark as they have been using it before you were. Therefore, it is important to apply for registration as soon as possible.
To register a trade mark in India, the following steps must be followed:
Select a trade mark agent in India
A trade mark application is allowed to be filed only if the place of business is in India. If this is not the case, the applicant must file a trade mark application through an agent or attorney. An individual can file a trade mark application on their own, but it is recommended to hire an agent or attorney for it. The agent or attorney usually takes care of the formalities such as searching, preparing, filing, and prosecution of the trade mark.
Choosing the mark and trade mark class
The next step in the trade mark registration is to choose and finalise the mark or symbol by taking into consideration all the requirements which are laid down in the Act and Rules. Sections 9, 11, 13, and 14 of the Act talk about grounds of refusal and other restrictions on the registration of the trade mark. Hence, it is very vital to choose a mark which does not violate any of the sections mentioned.
After a distinctive mark is chosen, an appropriate trade mark class is to be decided under which the trade mark will be registered. Having a trade mark class is important as it will be used throughout the registration process. For instance, a company manufacturing dolls wants to register their trade mark. Such a mark will be registered under class 28 of trade marks.
Finding the eligibility and availability of the trade mark
The agent usually starts the registration process by determining whether the trade mark is eligible for registration and conducting a public search to see if there is a similar mark in the Office of the Controller General. A public search shows all the trade marks which are registered or unregistered. A trade mark will only be applied for registration if it is distinctive in nature; if there are any other similar or identical marks already registered or are in the process of registration, then such an application will be rejected.
Conducting a prior trade mark search helps in saving the applicant’s time and money. If any similar or identical trade mark is already in use or proposed to be used, then the applicant can still make changes in his mark and then register it.
Filing the trade mark application
The next step, after conducting the trade mark search and deciding on the appropriate trade mark class, is that the trade mark application can be filed in the trade mark office under the appropriate jurisdiction. Section 18 of the Act talks about the application of the trade mark. The trade mark application is to be made in writing to the registrar. A single application can be filed for different trade mark classes for a trade mark.
The application can be accepted fully or with some amendments as per the discretion of the registrar. For filing an application for a trade mark, Form TM-A is to be filed by visiting the office or on an online portal. Along with the application form, there are other important documents which are to be attached, and a fee is to be paid for the same. The fees for both online and physical filing are different for different categories.
| Online filing | Physical filing | Type of entity |
| ₹ 4500 | ₹ 5000 | Small enterprise/individual/startup |
| ₹ 9000 | ₹ 10,000 | Other entities |
If the trade mark application is being filed through a trade mark agent or the attorney, then the power of attorney is to be filed through Form TM-48, and they can further file the application form on behalf of the real owner. The form will require details such as the name and address of the proprietor, a description of the goods and services associated with the mark, whether the mark is in use, and a copy of the mark.
Documents for trade mark registration
The applicant has to ensure that all documents are attached in order to avoid any delays in the registration process. All the documents are to be uploaded along with the trade mark online when the application is filed. The documents which are required along with the trade mark application are:
- Aadhar card
- Form TM-48 (if the trade mark agent or attorney is filing the application)
- Affidavit (if the mark is already being used priorly by the applicant)
- Other documents as per the requirement
- Graphical representation of the mark
- Proof of name and address in case of company, partnership, or LLP
- Pan card
- Company’s incorporation certificate
- MSME certificate (if applicable)
Examination of trade mark application by registrar
The trade mark office reviews the application after it is filed. This review by the examiner is compulsory in nature. The review is done to see if the application is complete, all documents are submitted, and if the mark is in compliance with the Act and Rules. The examination report must include all the similar registered trade marks along with the ones which are currently in the registration process which the registrar finds identical/similar. All marks along with their vital details, are to be included in the examination report for the applicant to know. After this, they issue an examination report within a period of one month.
The applicant has to revert this report, answering all the objections with evidence and argument. At the time of examination of the application, an application number is allotted. If the trade mark is registered, this number becomes the registration number. At this stage the status of the trade mark registration will be shown as ‘Awaiting reply to examination report’ which will change after the reply to examination report is submitted within a month.
Reply to examination report
A reply to the examination report is to be given in writing within 30 days from the date on which such report was delivered. The report consists of all the objections raised, any clerical mistakes, similarity, or lack of distinctiveness in the trade mark. The reply consists of answering the objections raised by the examiner. A comprehensive and clear report is to be filed as a reply to the examination report, along with the addition of all the evidence which can back your arguments made in the reply. If the reply is not submitted on time, it may lead to the application being treated as abandoned.
Objection to trade mark
The trade mark register determines if the application is barred from registration either on absolute or relative grounds for refusal as prescribed in the Act. The examiner can object to the trade mark application under Sections 9 and 11 of the Act. Section 9 of the acts talks about absolute grounds of refusal. If a trade mark is not capable of distinguishing the goods and services of one entity from another, it can be refused to get registered under the absolute grounds of refusal. A trade mark will be refused by the registrar if the mark includes any specification related to the kind of the product/ services, the place of origin or any of the key characteristics of the goods/services in question.
There are also other relative grounds of refusal for a trade mark registration:
- If the mark has some possibility of being misunderstood with other registered marks, then such a mark might get refused.
- If a mark is very identical in nature, then it may get refused.
- If the mark that is applied for registration is similar to a very famous or well known trade mark, then it will be refused.
The trade mark can be objected under any of the above mentioned absolute or relative grounds.
Depending on the examination report, the registrar of the trade mark determines whether the application must be accepted, rejected, or put up for ‘show cause’. During a ‘show cause hearing’ subject to the facts, an application might be rejected, accepted, or accepted with certain limitations. Rule 33 talks about the objection to acceptance, examination, and hearing of the trade mark application which is filed for registration.
Preliminary approval and publication of trade mark
Once the trade mark registration application is approved by the registrar, the next stage is advertisement of the trade mark and publication of the same in the Trade mark Journal. This publication is done for a period of 4 months. The manner of this advertisement is mentioned in Rule 39, which says that all the applications are to be advertised as per Section 20(1) and re-advertised as per Section 20(2) of the Act.
After the absolute or conditional acceptance of the trade mark, the same is published along with the conditions mentioned by the registrar as per Section 20(1). In certain cases, the trade mark is also advertised before acceptance if the registrar has reasons to believe that it is expedient in nature. If there are any changes or corrections made in the trade mark, then also the trade mark gets advertised again. For making changes in the trade mark application, one has to fill TM-M Form. Applicants, along with the other third parties, can view the trade marks Journal on the website; it gets published on every Monday.
Trade mark opposition
After the application for registering the trade mark is published in the journal, an aggrieved party can oppose such registration if they feel that it infringes their trade mark and its exclusive use. In order to file the notice of opposition, TM-O Form is to be filed by the party that is opposing the registration. The applicant then has to file a counter-reply statement replying to the notice of opposition. This reply consists of arguments and evidence which prove how the applicant is not trying to infringe the trade mark of the opposing party. A hearing also takes place where both the parties have to be present; if the opposing party gets satisfied with the reply, then the registration can move forward, or else further hearings take place.
As similar to trade mark applications, while opposing the registration or replying to it, certain fees are to be paid as well. The fees are prescribed below:
| Online Filing | Physical Filing |
| ₹ 2700 | ₹ 3000 |
Within the term of four months of publication in the Trade marks Journal, if not opposed by a third party, the trade mark will proceed for registration, and the trade mark authority will proceed to give a registration certificate. A trade mark usually takes 18-24 months to get registered, if the trade mark is not being opposed by a third party.
Trade mark registration
The last and the final stage towards the registration process is the trade mark registration. After conquering all the stages in the entire process, the trade mark is registered after objection and opposition. It is registered for 10 years.
Nature of trade mark registration
Territorial jurisdiction
If I want to file a trade mark application for my company, how will I know in which trade mark office to file the same? This is where the jurisdiction comes into play. Jurisdiction is basically the power of the court to determine or hear a case which is vested before it.
As per Section 134 of the Act, the registered proprietor can institute a case in the District Court within whose limits he carries on the business, is residing, voluntarily, or personally works for the gains. Jurisdictions are more important, especially in the case of trade marks, because they include the selling or buying of goods and services.
The trade mark registration is territorial in nature, which means the trade mark will be protected only in the jurisdiction it registered. If the trade mark is registered in India, then it will only be protected in India. Registration of trade marks in India does not entail that they are protected in other countries as well. All countries have their own established criteria for registering a trade mark. If the trade mark owner wants to protect the trade mark in other countries as well, then he will have to register the same in those countries as well.
In order to make this a little easier, the Madrid Protocol was adopted in the year 1989.
Madrid protocol
The Madrid Protocol helps the trade mark applicants in registering the trade mark in more than 120 countries using only a single application for trade mark registration. The Madrid Protocol is also referred to as international trade mark registration. This method of registration is a cost effective and time saving process for registering a trade mark.
For a detailed understanding of the Madrid Protocol and how to register an international trade mark, you can visit this link.
Timeline for trade mark registration
| Stage | Particulars | TM forms | Time period |
| 1 | Trade mark search | There is no such specific time period to carry out the trade mark. As soon as the individual or the company decides that they want to use a specific word or symbol as their trade mark, they can conduct a trade mark search and see whether any mark similar to theirs is registered or not. | |
| 2 | Trade mark application filing and filling | TM-A | This step should be conducted as fast as possible in order to avoid any other party registering the same mark as you. After the trade mark search is carried out and it is found that the mark that is intended to be registered is novel in nature, the company or individual can move ahead to filling the trade mark application. ` |
| 3 | Trade mark application examination | After the application for registering the trade mark is filed, the registrar of trade marks conducts an examination to ensure that the mark is in compliance with all laws and rules of trade marks. The time period for this stage depends on the date of filing of the application. | |
| 4 | Reply to the examination report | After a thorough examination by the trade mark office, an examination report is sent. The applicant has to reply to such an examination report within one month from the date on which it is received. | |
| 5 | Trade mark publication | The trade mark application gets published in the trade mark journal for a period of 4 months. | |
| 6 | Trade mark opposition | TM-O | Any third party is free to oppose the trade mark registration within 4 months from the date of advertisement in the trade mark journal if they feel it infringes their rights. If no opposition is done by any third parties, the trade mark is registered after the 4 months end. |
| 7 | Trade mark registration | The trade mark gets registered as per the decision taken in the hearing if the application is opposed. If there is no opposition, the trade mark gets published after the 4 months end. | |
| 8 | Trade mark renewal | The trade mark registration has to be renewed every 10 years by the trade mark owner. Non renewal can lead to the trade mark being open to the public domain, which means everyone can use such a mark. |
Symbols used during the trade mark registration process
™ symbol
The ™ symbol is used by the applicant when he has applied for the trade mark registration with the registrar. This symbol can be utilised as soon as the application for registering the trade mark is submitted to the registrar either in online or offline mode. The ™ symbol helps in making the other competitors in the market aware that this mark is already in the process of registration and its infringement in the future may lead to legal disputes.
This symbol can only be used when the trade mark application has been submitted. The symbol does not mean that the trade mark protection is already granted; it is just used as a warning to inform the other parties that this symbol is already in process, so they can register some other mark and not the one that is already in process of registration. The ™ symbol is used for product marks, while the SM symbol is used for services marks which are in the process of registration.
® symbol
® symbol can be used when the trade mark is registered. The symbol signifies that the mark is legally registered and protected under the Act and Rules laid down to protect registered trade marks. A company or an individual cannot use this symbol if their trade mark is not registered.
When any third party uses a trade mark with the ® symbol, they are infringing the rights of the owner, which is not allowed by the law, and they can be fined for the same. In case of a criminal proceeding, a fine or imprisonment which can be extended up to three years as mentioned in Section 107 of the Act. While in case of civil proceedings a permanent or temporary injunction can be ordered by the court, damages can be claimed, and the profits which were made with such a trade mark can be asked to be returned as well.
Steps to be taken after the trade mark is registered
It does not end with just registering the trade mark with the trade marks office. After the trade mark is registered, it has to be regularly renewed after 10 years. If the trade mark is not renewed, then it will go back in the public domain and any other party can register it, and the previous owner will lose the exclusive right to use the trade mark. To renew the trade mark, TM-R Form is to be filled and filed by the trade mark owner.
The next important step after the trade mark is registered is to monitor the trade mark. In order to check whether other parties are not registering any similar or identical trade mark, monitoring the registered mark is vital. If during the monitoring it is found that a mark that is similar in nature and can cause confusion in the eyes of the consumers of your goods or services then you can oppose such registration. The same can be opposed after it is advertised in the Trade marks Journal using TM-O Form.
Conclusion
Trade marks are a cost effective way of advertising your business, as a trade mark is helpful in brand recognition, which further helps in promoting the brand along with providing legal protection. It is important to register a trade mark as soon as possible. A registered trade mark acts as a vital intangible asset for the company, which helps them in protecting their goods or services if any third party infringes on their right. A registered trade mark can only be used by a third party if prior permission is taken from them. When a company/individual registers their trade mark, they increase the goodwill, net worth, and business value of the company. There are many other benefits which can be availed by companies/individuals who have registered a trade mark from the company.
Frequently Asked Questions (FAQs)
For how many years can a trade mark be registered?
The trade mark is registered for the period of ten years in India from the date on which the application was filed as per Section 25 of the Act.
Do I have to register the trade mark every ten years?
The trade mark has to be registered only once. After that, the trade mark owner has to simply keep on renewing the registration till he wants to use the mark for his business.
How long is the trade mark process in India?
The entire process of registering a trade mark takes approximately 18-24 months. The entire process of registration depends on various other relative factors, like trade mark opposition.
What is the first step in registering a trade mark in India?
The first and foremost step in registering a trade mark in India is conducting a trade mark search. This step ensures whether other similar or identical trade marks are already registered or proposed to be used by anyone.
When do I use the ™ symbol in the process of trade mark registration?
The ™ symbol can only be used when the application for registering a trade mark is filed in the office of trade marks Registry.
Can I make changes in the trade mark application after it is submitted?
The changes can be made in the application of the trade mark, which is submitted to the registrar for registration. But the changes should be minor in nature and should not change the main essence of the mark which is applied for registration.
Will my trade mark be protected in other countries if I register it in India?
The trade mark protection is territorial in nature. For instance, by registering a trade mark in India, you can get the trade mark protected only in India. If you want to use the same trade mark in America, you will have to register the same there as per their rules and laws. However, through the Madrid Protocol, you can protect your trade mark in several countries by only applying once.
Can a trade mark be used without registering?
Using a trade mark without registration can lead to infringement of the rights of the registered trade mark. Registering a trade mark is not mandatory, but it is always advised to register the trade mark to protect from third party infringement. trade mark registration establishes the legal right.
References
- Microsoft Word – SoP_TM_Processing of TM Application in TMR 27.10.2022 (ipindia.gov.in)
- Manual of trade marks (ipindia.gov.in)
- (PDF) trade mark Registration Process in India (researchgate.net)
- Handbook-on-trade mark-registration.pdf (msmedithrissur.gov.in)
- trade mark Registration in India (ipindia.gov.in)
- Territorial Jurisdiction Under trade mark And Copyright Law In India (livelaw.in)
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