Procedure for Trademark Registration

Published on 04 Oct 2016 by Team

Virtually every business has a trademark, whether you know it or not. The trademark is your brand, whether it is your product name or business name or maybe even both! We live in a product-oriented society where all brands are fiercely competing against each other. The value of brands has increased exponentially in the last few decades. Hence today, it is more important than ever that companies of all sizes protect their brand. Sometimes, merely protecting your brand is just not enough. Sometimes what is paramount for a business or a startup is to avoid litigation risks by all means. Adopting a new logo, or slogan or name has never really been riskier than what it is today. This why you need to understand the process of registering a trademark.

While getting your trademark registered seems like a good option, to protect the goodwill of your business in the long-run, a lot of people are wary about the amount of money they would have to spend on the registration process. While the total amount might seem a little high, the breakup of the trademark registration cost will rationalize the expenditure.

Who can apply for Trademark?

Any person which can be individual, company, proprietor or legal entity claiming to be the owner of the trademark can apply. The application for Trademark can be filed within few days and you can start using “TM” symbol. And the time required for trademark registry to complete formalities is 18 to 24 months. You may use the ® (Registered symbol) next to your trademark once your trademark is registered and registration certificate is issued. Once registered a trademark is valid for 10 years from the date of filing, which can be renewed time to time.

Process of Trademark Registration in brief

Step 1- Selecting a mark

You need to select a new mark, symbol, word, slogan, etc. for your business, which is original and does not exist already.

Step 2- Classification of goods or services

It is important for you to protect your trademark for the right goods of services you offer under your trademark.  It is important that your service provider understands your business well before deciding to select the classes in which the trademark should be protected. For example, your trademark will fall under different classes if you offer web app development services vs having an app for the purposes of selling goods online.

Step 3- Search the trademark office records

This search is to check whether your business name or logo is similar to other already registered trademarks. Generally, trademark agent or attorney conducts this search with the Trademark Office to check if there are any similar trademarks already registered under that particular class. There are two kinds of search: online and offline. It is recommended that you get both the searches done. Once found to be unique you can proceed to the next step. The following tips are useful while selecting a trademark:

  1. It should be easy to speak, spell, and remember.
  2. Invented words or coined words are advisable.
  3. Avoid selection of a geographical name.
  4. Avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super, etc).
  5. It is advisable to conduct a survey to ascertain if .same/similar mark is used in the market.

Step 4- Filing the application

After you are sure that your chosen brand name or logo is not listed in the Trademark Registry India, you can opt for registering the same. The first step is to file a trademark application form at the Trademark Office, India. Nowadays, filing is mostly done online. Once the application is filed, an official receipt is immediately issued for future reference. Choose our top legal services for trademark registration in India.

You can make an application for a trademark on Form TM-1 with the prescribed fee of Rs 2,500 at one of the five offices of the Trade Marks Registry located at Mumbai, Delhi, Kolkata, Chennai and Ahmedabad. This will depend on the place where you reside or have your main place of business.

Step 5- Responding to objections from the trademark office

An examination report is filed within three months of application. You will get a response to your registration either by an affidavit, a hearing or by an interview.

Your application will be looked at to ascertain if it does not conflict with existing registered or pending trademarks. Based on this, an examination report is issued.

As you defeat objections raised by the registrar, your application is then published in the Indian Trade Marks Journal, with an endorsement stating either that it has been accepted or that it is being published before acceptance.

Step 6- Advertisement in the trademark journal

After the application has been accepted, it will be published in the Trademark Journal. The advertisement will include all details of the acceptance including representation of the mark, date of filing, particulars of the applicant, and conditions or limitations if any. The opposition has to be done within three months of the date of the advertisement. The opposition must be in the prescribed form, in triplicate, and with the prescribed fee. You can send a reply for a trademark objection in few easy steps.

Step 7- Handling opposition by third parties

Once the trademark has been published in the trademark journal the public has a right to file an opposition (if they will be aggrieved by the registration) within 4 months. The opposition proceeding may extend the registration timeline up to 4 years. Again, Most of these objections can be avoided when the same is foreseen at the time of classification and trademark search by your service provider. This not only saves costs but a lot of time in the process of getting your trademark registered in India.

Step 8- Registration

Within the term of three months publication in the Trademarks Journal, if not opposed by a third party, the trademark will proceed for registration and the trademark authority will proceed to give a registration certificate.

Step 9- Maintenance or Renewal

The trademark can be renewed perpetually after every 10 years. Hence, your logo or brand name registration can be protected perpetually. 

Documents required for filing a Trade Mark Application in India:

  • Trademark or logo copy
  • Applicant details like name, address and nationality and for a company: the state of incorporation
  • Goods or services to register
  • Date of first use of the trademark in India, if used by you prior to applying.
  • Power of attorney to be signed by the applicant

Rights Conferred after registration of Trademark

The registration of a trademark gives the registered proprietor the exclusive right to use the trademark in relation to the goods or services for which it is registered and to obtain relief with respect to infringement of the same. Registration acts as a public notice to others, informing them that they should not use the trademarks that are registered or pending for registration.

Trademarks can also be assigned, licenced, or transferred with or without transmitting the goodwill of the company. There is a process for registration of all agreements that involve transmitting a trademark without the goodwill of the company.

E-filing of application

  • E-filing of a trademark application is a new service provided by the trademark registry office on its website. With it, you can:
  • Complete an electronic application form.
  • Provide the associated attachments.
  • Complete necessary payment details.

What is the benefit of e-Filing?

You will immediately:

  • Receive a trademark application number
  • Online verification to assure error-free filing and obtain your filing date
  • Speed up the registration process
  • Print the completed application data and receive fee acknowledgement
  • Save the data locally on your PC
  • Be able to recall your contact details for subsequent applications
  • You can also view online history and status of the applications filed by clicking "Status of Filed Application" and the online status of e-Payments.

Using the "™" symbol with your trademark simply implies that you claim to be the proprietor of the trademark. There is no prohibition on the use of the symbol in India.

Registration of International Trademarks in India

Madrid System

• The Madrid system provides one single procedure for the registration of trademarks in several territories.

• It is governed by two treaties, ‘the Madrid Agreement concerning the international registration of marks’ (briefly known as Madrid Agreement) and the ‘Protocol relating to the Madrid Agreement’ (briefly known as Madrid Protocol).

• These treaties are administered by the International Bureau (IB) of the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland.

India’s accession to the Madrid Protocol

On April 8th of 2013, the Hon’ble Minister of Commerce & Industry, the Government of India, deposited the instrument of accession to the Madrid Protocol, with the Director General of the WIPO. and accordingly, the provisions of an international registration under the Madrid Protocol came into effect in India since July 8th of 2013

‘Basic registration’ and ‘Basic application’

  • • Under the Madrid Protocol, an international application may be based on either a mark that has already been registered (“basic registration”), or a mark that has been applied for but not yet registered (“basic application”)
  • • The international application can be filed only in respect of goods and/or services covered by the basic application or registration.

Contracting Party

The term “Contracting Party” denotes any country as well as an inter-governmental organization (the European Union, for instance) which is party to the Madrid Protocol.

Office of Origin

The Office of origin is the trademark office of the Contracting Party with which the applicant for international registration has the necessary connection (through establishment, domicile or nationality) to be entitled to file an international application.

The international application is received at the Office of Origin and it is forwarded to the WIPO, through it.

Process of Registration in Office of Origin

• In case of an international applications designating India, is published as registered by WIPO and the same is notified to India, the particulars of international applications are recorded in TMR data base, by giving a national number to it as IRDI xxxxxx equating the date of international registration of IRDI with the date of application for a national application

• The IRDI shall be examined as a national application as per provisions of the Trade Marks Act & Rules.

• In case of any objection, a provisional refusal shall be communicated to WIPO. The WIPO communicates the provisional refusal to the applicant of the international application (the Holder of the international registration)

• The Holder of the international registration, may respond to the provisional refusal and request this office to reconsider it only through an Indian agent. The post examination process will be similar to that as in case of national application objected at examination stage.

• In case of no objections, it will be published in the Trade Marks Journal

• Any person may file a notice of opposition to so published IRDI, as any other published national application. The Notice of Opposition should be filed online through the gateway available at the website

• On receiving any opposition to the IRDI, the TMR will communicate to the WIPO, a provisional refusal based on the opposition. The WIPO sends a copy of the same to the holder.

• The Holder of the international registration, may contest provisional refusal and file a counter-statement, only through an Indian agent. The opposition proceeding shall then be conducted as per usual process.

 • In case no opposition is received within the prescribed period and there have been no grounds for refusal, the TMR will notify the Grant of Protection of the international registration, to the WIPO.

India as an Office of Origin

• A person (including a legal entity)

  1. who is a citizen of India, or domiciled in India, or

  2. who has a real and effective industrial or commercial establishment in India, and
  3. who has got a registration of a trademark or whose application for registration of a trademark is pending in Indian office,

may make application for international registration of his trademark

• The application must be filed only through the gateway for online filing of International applications made available at the official website [email protected], with a handling fee of INR 2000/

• The Trade Marks Registry (TMR) verifies as to the eligibility of the applicant and contents of the International Application vis-à-vis basic registration/application

• When the International Application is not proper, the TMR sends a deficiency letter in the email to the applicant. The applicant shall prepare a reply to the deficiency letter and upload it, with supporting documents, if any, through the gateway.

• When the International Application is proper the TMR certifies and transmits such applications to the International Bureau of WIPO.

• The fee for international application and the individual fee/Complementary fee for designated countries wherever applicable is to be paid directly to the International Bureau of the WIPO, in Swiss Francs, The IB of WIPO examines such applications for formalities.

• In case any irregularity (regarding classification of goods or services, for instance) is found, the IB communicates such irregularities to the TMR as well as to the applicant. The TMR also sends the irregularities to the applicant by email. The applicant has to rectify irregularities and prepare a reply to the irregularity letter and upload it, with supporting documentation, if any, through the gateway. The TMR sends a response to irregularities to the International Bureau of WIPO

• If the International Application is found to be proper by the IB of the WIPO. It is registered with the IB, published in the WIPO Gazette and transmitted to the offices of the designated Contracting Parties.

Replacement of a National Registration by an International Registration

An international registration is deemed to replace a national registration for the same mark and the same goods and services recorded in the name of the same person in a designated Contracting Party.

Dependence on the Basic Mark

• An international registration remains dependent on the mark registered or applied for in the Office of origin, for a period of five years from the date of its registration.

• If, and to the extent that, the basic registration ceases to have an effect or the basic application is refused or withdrawn or treated as abandoned within the five-year period, the international registration will no longer be protected.

Designation and subsequent designation

• A “designation” means an indication in the international trademark application form, of one or more Contracting Parties where the protection of the mark is intended.

• A “subsequent designation” means an extension of the geographical scope of protection after the mark has already been registered.

• A subsequent designation is made by completing the appropriate form, indicating therein the additional Contracting Parties for which protection is sought

Renewals and changes & corrections in the international registrations

• The international registrations of marks under the Madrid System is done and maintained by the International Bureau of WIPO, accordingly the renewals of international registrations and amendments or corrections in the international registrations are done by the WIPO

• The registration of a mark at the International Bureau is for a period of 10 years. It is then renewable for a further 10 years upon payment of the required fees to the WIPO.

• A request to record a change in name or address of the holder of an international registration is presented to the International Bureau of WIPO. The International Bureau records the change of name or address in the International Register and notifies accordingly the Offices of the designated Contracting Parties. At the same time, it informs the holder and, where the request was presented by an Office, that Office

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Tags: Trademark 

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