Trademark Jurisdictions in India

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All marks, such as a word, label, device, numerical or colour combinations, represented graphically to denote a particular service or goods that you deal with, can be registered as a trademark in India.

Trademarks are divided into 45 classes and the goods and services are segregated into these classes. When a trademark registration is done for a particular business (goods or services), the issued mark finds its way into that registry. Thus, while applying for a trademark, it is essential to mention the class under which the mark is registered

Any company or individual, company, even an NGO, can apply for trademark registration in India, after a valid trademark search. The mark to be registered should be original and unique, and not a copy of an already present mark or those which are under validation for registration. Even foreign nationals or foreign entities are eligible for trademark registrations in India.

The jurisdiction for filing a trademark application is called the ‘appropriate office’. There are five offices of the Trade Marks Registry with each having jurisdiction over certain states.

Trade Marks Registry, Mumbai (Head Office)

Jurisdiction: State of Maharashtra, Madhya Pradesh and Goa

Trade Marks Registry, Delhi

Jurisdiction: The states of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Union Territory of Delhi and Chandigarh

Trade Marks Registry, Kolkata

Jurisdiction: The states of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, Andamar & Nicobar Island

Trade Marks Registry, Ahmedabad

Jurisdiction: The states of Gujarat and Rajasthan and Union Territory of Damman, Diu, Dadra and Nagar Haveli

Trade Marks Registry, Chennai

Jurisdiction: The states of Andhra Pradesh, Kerala, Tamil Nadu, Karnataka and Union Territory of Pondicherry and Lakshadweep Island

The appropriate office for filing an application for a particular business is ideally the Trademark Registry within whose boundaries the business takes place.

FAQs

Q.  What is the relevant trade mark authority in your jurisdiction?
The Controller General of Patents, Designs and Trademarks is the relevant trade mark authority, managing the functions of the offices of the Trade Marks Registry which is located in Ahmedabad, Chennai, Delhi, Kolkata and Mumbai.
Q.  What trade mark legislation is applicable in your jurisdiction?
The trade mark legislation presently in force in India is the Trade Marks Act, 1999 and the Trade Mark Rules, 2002.
Q. What can be registered as a trade mark?
Any mark, which is capable of being represented graphically, and is capable of distinguishing the goods or services of one individual from those of others or is used in relation to goods or services for the purpose of indicating a connection in course of trade, can be registered as a trade mark.  A trade mark may include shape of goods, their packaging and combination of colours. Till now, the Indian Trade Marks Registry has seen a few successful applications for the registration of sounds, and none for that of smells.
Q. What can’t be registered as a trade mark?
The following can’t be registered as a trade mark in India:
The marks that are bereft of any distinctive character, this includes marks or indications which can serve in trade to designate the kind, quality or the intended purpose of the goods or services, or the marks or indications that are customary in the current language;
The marks that are such that it may led to deceive the public or cause confusion, or it contain any matter likely to hurt the religious sentiments of the citizens of India, or contain indecent or obscene matter;
The marks that consist of the shape of goods which results from the nature of the goods themselves;
The marks that are quite similar or identical to a previous registered trade mark; and/or
Any national flag, emblem or logo, which includes that of any United Nations body or any other international organisation.
Q. What is the information needed to register a trade mark?
An application for the registration of a trade mark must contain:
Representation of the trade mark;
Name and address of the applicant of the trade mark.
Specification of goods in respect of which the mark is sought to be registered;
Trade description, such as manufacturer, merchant, service provider, broadcaster, etc.
The information on use of the mark, i.e., exact date, month and year on which the use of the mark in commerce commenced in India;
If claiming a priority, then details of the priority application, followed, within two months, by a certified copy of priority document and, where applicable, a verified English translation of the same;
If the distinctiveness of mark resides in any specific colour or a combination of colours, a specific claim to such a colour or combination of colours.  It is, however, not necessary to indicate the pantones; and
Authorisation of an Agent (Power of Authority).
Q. What is the common procedure for trade mark registration?
After an application is filed, it gets examined by the Examiner of Trade Marks and an Examination Report containing the objections (comprising absolute and/or relative grounds of refusal) is issued.  The applicant is required to file a response within one month from the date of the Office Action.
After the response, in case there are any outstanding issues, a ‘show cause’ hearing will be appointed.
If there is an adverse action, the Registrar issues a Speaking Order, which is appealable before Intellectual Property Appellate Board.
If the mark gets accepted for advertisement, it is published in the Trade Marks Journal and is then open to a third party oppositions within four months from the date of publication.
If there are no oppositions is filed, or any opposition is decided in favour of the applicant, the mark proceeds for registration.
Q. How can a trade mark be sufficiently graphically represented?
A trade mark can be represented as a print, which can be a computer or photographic print.  When a colour or a combination of colours is claimed, it is essential to specify the colour or colours.  But, it is not necessary to use internationally recognised colour codes.
Q. How are goods and services described?
The goods and services are described in agreement with the Nice Classification of goods and services.  Broad class headings can be used, but the Indian Trade Marks Registry often doesn’t permit the addition of goods or services in the specification during the prosecution.  Therefore, it is advisable to qualify the generic class headings with specific goods.
Q. What territories (dependents, colonies, etc.) are or may be covered by a trade mark in your jurisdiction?
The statutory rights in a registered trade mark in India extend only within the Indian Territory.  But, on the basis of an Indian registration, it is possible to acquire expedited registration in Nepal.
Q. Who can own a trade mark in your jurisdiction?
Any individual (a natural or juristic person, like a company, society or trust) claiming to be proprietor of a trade mark can own and use a trade mark and claim registration of a trade mark.  In a situation of a partnership firm or an unregistered charity, only partners of the firm or members of the charity may own and register a trade mark.
Q. Is it possible for a trade mark to acquire a distinctive character through use?
Yes, uniqueness can be acquired by way of use.  Use will help to establish that a mark which is not distinctive/unique per se has attained a secondary meaning through use.
Q. What is the standard cost of obtaining a trade mark in your jurisdiction?
The cost of registration is subject to several factors, this includes the law firm handling the matter.  The total cost for registration for a straightforward application in one class shouldn’t normally exceed about USD 1,200.
Q. Is there more than one way to obtain a registration in your jurisdiction?
A trade mark can be registered in India by filing an application at the offices of the Trade Marks Registry in India.  In addition to that, with effect from July 8, 2013, India became a contracting party to the Madrid Protocol for the International Registration of Marks at WIPO.  An international application under this protocol can therefore now elect India as one of the countries in which protection is wanted.  Nevertheless, the Madrid system of international registration can’t be used by an individual or legal entity which doesn’t have the necessary connection, through establishment, domicile or nationality, with a member of the Madrid Union.  Moreover, a mark may be the subject of an international application only if it has already been registered (or, where international application is governed completely by the Protocol, if registration has been applied for) in Trademark Office of the Contracting Party with which the applicant has necessary connection, to be able to file an international application.
Q. Does one need a Power of Attorney?
Yes, it is advisable.
Q. If so, does a Power of Attorney need a notarisation and/or legalisation?
No notarisation or legalisation is required.
Q. How is priority claimed?
The Indian law provide a prescribed form for claiming priority.  An application with a claim to priority has to be filed in India within six months from the date of filing of the basic priority application.  Such an application must include a statement indicating the complete filing details of basic priority application.  A certified copy of the priority document must be filed along with the application within two months from date of filing the Indian application.  If priority document is not in English, it must be accompanied by a verified English translation.
Q. Does the Indian jurisdiction recognise Collective or Certification marks?
Yes, Collective and Certification marks are recognised in India.
Q. What ground on which trade mark can be opposed?
A trade mark application may be opposed on relative as well as absolute grounds.
Q. Who can oppose registration of a trade mark in your jurisdiction?
Any individual who may get affected by the grant of registration of the impugned trade mark can oppose the registration of the trade mark.
Q. To what extent are the unregistered trade mark rights enforceable in your jurisdiction?
A common law remedy of the passing off is available by way of a suit, if it can be established that Plaintiff’s mark has acquired a reputation and the goodwill by virtue of actual use in India or cross-border reputation
Q. What are the relative grounds for refusal of the registration of trademark?
A trade mark can be refused registration on grounds that it is misleadingly similar to a trade mark covered by a previous Indian application or the registration in the same class, or that it is similar to a well-known trade mark.
Q. What is the right of appeal from a decision of refusal of the registration from the Intellectual Property Office?
A decision of refusal of the registration from the Intellectual Property Office (Trade Marks Registry) must be appealed to the Intellectual Property Appellate Board.  The decision can be appealed in its entirety, or in part.
Q. What ground on which trade mark can be opposed?
A trade mark application may be opposed on relative as well as absolute grounds.
Q. Who can oppose registration of a trade mark in your jurisdiction?
Any individual who may get affected by the grant of registration of the impugned trade mark can oppose the registration of the trade mark.
Q. To what extent are the unregistered trade mark rights enforceable in your jurisdiction?
A common law remedy of the passing off is available by way of a suit, if it can be established that Plaintiff’s mark has acquired a reputation and the goodwill by virtue of actual use in India or cross-border reputation
Q. What is the procedure for opposition?
The opponents are required to file a Notice of Opposition, specifying the grounds on which the disputed mark is being opposed, within a period of four months from date on which the mark in question is advertised in the Trade Marks Journal.
A Notice of Opposition is served on the applicants by the Registrar.
Within two months from the date of receiving the Notice of Opposition, applicants are required to file a Counter Statement.  This two-month deadline is not extendable.  The failure to file a Counter Statement may result in abandonment of the application.
A Counter Statement is then served on the opponents by the Registrar.
Within two months (extendable by one month) from date of receiving the Counter Statement, opponents are required to file their evidence in support of the opposition at the Registry and they are also required forward a copy thereof to the applicants.
Within two months (extendable by one month) from date of receiving the evidence in support of the opposition, the applicants are required to file the evidence in support of the application and also forward a copy to the opponents.
Within one month from date of receiving the evidence in support of the application, opponents are required to file the evidence in reply and also forward the copy to the applicants.  In case the opponents don’t file their evidence within time, or don’t inform the applicant and the Registrar that they don’t wish to file their evidence, the opposition is considered to have been abandoned.
Subsequently, the Registrar will appoint a hearing on merits and pass appropriate orders.
Q. What happens after a trade mark is granted registration?
The statutory rights are conferred upon the proprietor of the trade mark.  The certificate is automatically sent to proprietor at the address for the service indicated on application form.
Q. From what date following the application does an applicant’s trade mark rights commence?
The moment the mark is registered, date of filing is considered the “date of registration”.  The right to sue for an infringement only commences on the date of registration.  But, if a mark is already in use in commerce in India, proprietor will have a common law remedy of “passing off”.
Q. What is the term of a trade mark?
A trade mark is valid for a period of 10 years.  The registration can be renewed before the expiry of 10 years.  The period of 10 years is calculated from date of filing or the date of priority, as the case may be.
Q. How is a trade mark renewed?
A trade mark is renewed by filing an application for renewal of the trade mark accompanied by a fee of INR 5,000 (approximately USD 85).
7.1        Can an individual register the assignment of a trade mark?
Yes, an individual can register a trade mark or any assignment in respect thereof.  The assignment is recorded by filing an application on a prescribed form along with the prescribed fee.  The application has to be accompanied by an original deed of assignment or a certified or notarised copy thereof.
7.2        Are there different types of assignment?
An assignment may be with or without goodwill.  Partial assignments are also possible.
7.3        Can an individual register the licensing of a trade mark?
Yes, an individual may record a licence.  This is achieved by filing a prescribed form with the prescribed fee along with the licence deed.  Licensees may record themselves as registered users, although such recordals are no longer mandatory.
7.4        Are there different types of licence?
Yes.  A licence may be sole, exclusive or non-exclusive.
7.5        Can a trade mark licensee sue for infringement?
Yes.  Subject to any agreement subsisting between the parties, licensees may institute proceedings for infringement on their own name as though they are the registered proprietors.
7.6        Are quality control clauses necessary in a licence?
Yes.  Quality control is necessary in cases where a registered trade mark is licensed without registration of the licensee as a registered user.
7.7        Can an individual register a security interest under a trade mark?
Yes.  A trade mark is included in the definition of a property under the Securitisation Act.
7.8        Are there different types of security interest?
Yes.  A “security interest” can include the right, title and interest of any kind whatsoever upon property (which includes a trade mark) created in favour of any secured creditor, and includes any mortgage, charge, hypothecation or assignment.
Q. What are the grounds for the revocation of a trade mark?
The Revocation (or rectification) of a registered trade mark can be sought on any of the following grounds:
The non-use of the mark for a continuous period of five years from date on which the mark was entered on the Register of Trade Marks;
If the application for registration of the mark was without any bona fide intention by proprietor to use the same in relation to the goods or services covered under the registration; and
If the mark is wrongly remaining on the Register of Trade Marks, i.e., it is in contravention to any provision of Trade Marks Act.
8.2        What is the procedure for revocation of a trade mark?
1.     Proceedings for rectification may be initiated by filing a petition on the appropriate form, accompanied by the prescribed fee, before the Registrar or the Intellectual Property Appellate Board (IPAB).
2.     A copy of the Rectification Petition is then served upon the Registered Proprietors by the Registrar or IPAB, as the case may be.
3.     Within a deadline of three months from the date of receiving the Rectification Petition, the Registered Proprietors are required to file their Counter Statement.
4.     The Counter Statement is then served upon the Petitioners by the Registrar or IPAB, as the case may be.
5.     Within a deadline of three months from the date of receiving the Counter Statement, the Petitioners are required to file evidence in support of the Rectification Petition and also forward a copy thereof to the Registered Proprietor.
6.     Within a deadline of three months from the date of receiving the evidence in support of the Rectification Petition, the Registered Proprietors are required to file their evidence in support of the registered trade mark and also forward a copy thereof to the Petitioner.
7.     Within a deadline of two months from the date of receiving the evidence in support of the registered trade mark, the Petitioners are required to file their evidence in reply and also forward a copy thereof to the Registered Proprietors.
8.     Thereafter, a hearing will be appointed and the matter will be heard on merits.
8.3        Who can commence revocation proceedings?
Any person claiming to be an aggrieved person as a result of registration of the trade mark in question may initiate revocation proceedings.
8.4        What grounds of defence can be raised to a revocation action?
A revocation action may be traversed by establishing continuous and uninterrupted use of the mark, and prior rights in the registered trade mark, as opposed to the mark based on which the Rectification Petition is filed.  Honest concurrent use may also be a defence.
8.5        What is the route of appeal from a decision of revocation?
The route of appeal is as follows:
1.     from the Registrar of Trade Marks to the Intellectual Property Appellate Board;
2.     from the Intellectual Property Appellate Board to the High Court by way of a writ petition; and a further appeal to the Division Bench of the High Court; and
3.     from the Division Bench of the High Court to the Supreme Court where substantive issues of law are involved.
9
Invalidity
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9.1        What are the grounds for invalidity of a trade mark?
The same as in revocation (or rectification) proceedings; see section 8 above.
9.2        What is the procedure for invalidation of a trade mark?
The same as in revocation (or rectification) proceedings; see section 8 above.
9.3        Who can commence invalidation proceedings?
The same as in revocation (or rectification) proceedings; see section 8 above.
9.4        What grounds of defence can be raised to an invalidation action?
The same as in revocation (or rectification) proceedings; see section 8 above.
9.5        What is the route of appeal from a decision of invalidity?
The same as in revocation (or rectification) proceedings; see section 8 above.
10
Trade Mark Enforcement
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10.1      How and before what tribunals can a trade mark be enforced against an infringer?
A suit for infringement can be filed in a District Court or a High Court having the jurisdiction to try the infringement suit.  Jurisdiction is determined by the place where the cause of action arises, or the place where the Defendant resides or has an office or, in case of an overseas Plaintiff, the place if any, where the Plaintiff has an office in India.
10.2      What are the pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?
The pre-trial procedural stages in a Civil Court will normally comprise filing a plaint at the appropriate court along with an application for interim relief, often ex parte relief.  In such a case, a notice is not served upon the Defendants.  In case the court is pleased to grant ex parte relief, which is usually an interim order for injunction, copies of the plaint along with the order of court are served upon the Defendants with a short leave – normally not more than a few weeks – to file their defence and show cause why the interim order of injunction passed ex parte should not continue.  The Defendants will file their reply along with an application for vacation of the interim order.  The Plaintiffs will have an opportunity to file their rejoinder, after which the matter will be heard in order to determine whether the interim order passed should continue or be vacated. 
A court will normally pass an interim order of injunction if the Plaintiffs show:
(i)     prima facie proof of validity of their trade mark;
(ii)    prima facie proof of infringement;
(iii)   balance of convenience in their favour; and
(iv)   absence of delay. 
Depending upon the facts and circumstances of a particular case, the court may choose not to grant ex parte relief but order that a notice be served upon the Defendants to enable them to file their reply.  Once the Defendants file their reply, the procedure outlined above will follow.  After the interim stage, which could last from a few days to a few weeks, the matter proceeds to trial.  The trial procedure will comprise:
(i)     service of the plaint and accompanying documents on the Defendants;
(ii)    filing and service upon the Plaintiffs of the Defendants’ reply along with a counter claim for invalidation of the trade mark, if any;
(iii)   filing of a rejoinder by the Plaintiffs;
(iv)   hearing of the matter before the Registrar of the court (or in special cases, before a judge) for completion of pleadings and admission and denial of documents, during which directions for the further conduct of the action – including filing of evidence, filing of the list of witnesses, examination and cross-examination of witnesses, fixing of dates of the next hearing, etc. – are given;
(v)    framing of issues before the court;
(vi)   exchange of lists of, and disclosure of, documents relevant to the issues; and
(vii)  argument of the case on merits before the court. 
Normally, it takes anywhere from three to seven years for a matter to be completed on merits.  As of now, intellectual property cases are won or lost during the interim stage, although efforts are being made by the courts to ‘fast track’ Intellectual Property cases.
10.3      Are (i) preliminary and (ii) final injunctions available and if so on what basis in each case?
(i)     Preliminary (interim) injunctions are available when Plaintiffs establish:
(a) prima facie proof of validity of their trade mark;
(b) prima facie proof of infringement or passing off;
(c) balance of convenience in their favour; and
(d) absence of delay.
(ii)    Final/permanent injunctions are granted after hearing both the parties on the merits of the suit.  Injunctions may be granted not only where actual infringement or passing off is proved, but also where a threat has been established.
10.4      Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so how?
Yes.  By an order of the court, a party may be called upon to produce relevant documents under the cover of affidavits.
10.5      Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?
Yes.  Submissions and evidence are presented in writing and are also argued orally.  Documentary evidence will have greater evidentiary value.  Cross-examination of witnesses will take place during the trial.
10.6      Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?
Yes.  However, whether infringement proceedings are to be stayed pending resolution of validity of the trade mark would be a matter of discretion of the court.  The factors which would affect such discretion would be the forum before which invalidation proceedings are pending, whether the suit for invalidation was filed prior to or subsequent to the suit for infringement, and whether or not there is an injunction operative against the Defendant.  Where the validity of a trade mark has already been called into question prior to the institution of the suit for infringement, the court may be disinclined to grant ex parte relief or may order that both suits be heard together.  The court may also order an interim injunction with a cross-undertaking by the Plaintiffs for damages in the event that the trade mark is found to be invalid, although this is rare.  Alternatively, the court may order the Defendants to file periodical statements of accounts before the court.
10.7      After what period is a claim for trade mark infringement time-barred?
The period of limitation for instituting a suit for infringement is three years from the last committed act of infringement.  Where the act of infringement is a continuing one, the limitation will not apply.
Under the Trade Marks Act, where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years to the use of a registered trade mark, being aware of the use, he shall not be entitled to oppose use of the latter trade mark.
10.8      Are there criminal liabilities for trade mark infringement?
Yes, there are criminal liabilities.
10.9      If so, who can pursue a criminal prosecution?
A proprietor of a trade mark who has been aggrieved by an act of falsifying or falsely applying his/her trade mark, disposing of any instrument for the purpose of falsifying a trade mark, or applying a false description to goods and services, can pursue a criminal prosecution.
10.10    What, if any, are the provisions for unauthorised threats of trade mark infringement?
The law provides for action against groundless threats of infringement.  A declaratory action may be instituted by a person interested in following up groundless threats of infringement.  A person affected by such threats may also seek damages.
11
Defences to Infringement
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11.1      What grounds of defence can be raised by way of non-infringement to a claim of trade mark infringement?
A suit for infringement may be defended on the grounds that the Defendants adopted and used their trade mark prior to the date of use or registration of the Plaintiff’s trade mark.  The Defendants may show that their trade mark is not the same or similar to the Plaintiff’s trade mark and that no confusion is likely to occur in the minds of the customers in the course of trade.
11.2      What grounds of defence can be raised in addition to non-infringement?
The Defendant may also plead that the Plaintiff has no title to sue, the registration of the Plaintiff’s mark is not valid, and that the Defendant has a statutory right to use the mark by virtue of concurrent or prior registration and/or use.
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Relief
12.1      What remedies are available for trade mark infringement?
The following remedies are available for trade mark infringement:
1.     preliminary injunction;
2.     permanent injunction;
3.     damages or account for profits;
4.     an order for delivery of the infringing labels and goods;
5.     an order for the preservation of infringing goods, documents or other evidence which are related to the subject matter and destruction thereof after disposal of the suit; and
6.     an order restraining the Defendants from disposing of their assets.
12.2      Are costs recoverable from the losing party and if so what proportion of the actual expense can be recovered?
Yes.  Damages suffered by the Plaintiffs as a result of the infringement are recoverable.  Although reasonable attorneys’ fees may be recovered, actual recovery of costs depends upon several factors and the Indian courts are not normally liberal in this respect.  Defendants may also claim compensation due to loss suffered by them on account of an injunction, if it transpires subsequently that the Plaintiff’s right was invalid.

Q. To what extent are the unregistered trade mark rights enforceable in your jurisdiction?
A common law remedy of the passing off is available by way of a suit, if it can be established that Plaintiff’s mark has acquired a reputation and the goodwill by virtue of actual use in India or cross-border reputation.

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A lawyer with 14 years' experience, Vikram has worked with several well-known corporate law firms before joining Vakilsearch.

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