Trade Mark

Filling Requirements

1. A simply signed Power of Attorney; this can be filed after filing the application.
2. Name(s), nationality, occupation and address of the applicant(s).
3. A list of the goods/services and the corresponding class(es), as per Nice Classification containing 45 classes.
4. The following additional details are needed in respect of trademarks to be registered:
• In case of word marks or graphic marks containing words that are not in English, name of the language and an English translation of the word(s);
• In case of graphics (2D or 3D), a brief explanation of the mark and 10 copies of the mark;
• In case of three dimensional (3D) mark, two dimensional graphic or photographic reproduction of three different views of the mark;
• In case of marks consisting of the shape of goods or its packaging, at least five different views of the trademark and a description by word of the mark;
• If a mark is to be registered wholly or in part to any combination of colors, 10 copies of the mark, (if a mark is registered in black and white, it shall be deemed to be registered for all colors).

5. A certified priority document or a copy of it duly notarized, if priority is to be claimed. If the certificate is not in English, a certified/notarized English translation is required. If it is not readily available, the application can be filed based on the basic application number, date of the application and country of the application. A copy of the priority document can be submitted within two months from the filing date of the application.

6. From which date (day, month and year) the mark is being used in India. If not used in India, mention ‘proposed to use’. If the mark is used only in respect of a few of the goods/services listed, date (day, month and year) since when the mark is used in India and items of goods/services in respect of which the mark has actually been used. Such use could be by the applicant(s), predecessor or assignor, etc.
 
Renewal of Trademark/Service Mark Registrations

1. A simply signed Power of Attorney.
2. The trademark registration number and the mark registered along with a copy of the registration certificate.
 
Assignment Applications

1. A simply signed Power of Attorney.
2. Trademark application/registration number and the mark proposed to be registered/ registered.
3. A notarized copy of the assignment deed signed by the assignor and the assignee.
4. Name, address, nationality and profession or nature of business of the assignee.
5. Whether the assignment is with or without the goodwill of the business. If it is without the goodwill of the business, it has to be registered with the Trademarks Registry within six months from the assignment deed.

Change of Name Applications

1. A simply signed Power of Attorney in the new name and/address.
2. A notarized copy of the change of name certificate issued by the competent authority.

Change of Address Applications

A simply signed Power of Attorney with the new address.

FAQ

T1: How long will it take to conduct a trademark search?
2-4 days.

T2: Does India use the International Classification?
Yes (45 classes).

T3: Are there any goods or services for which the mark cannot be registered?
No.

T4: Does the specification of goods in any class limit the protection to the specified goods, or does it give additional protection to all the goods in the class?
The specifications of goods limit the protection to the specific goods.

T5: Can a trademark be registered in the name of more than one applicant (i.e. joint application)? If so, what are its requirements?
Yes, apply jointly.

T6: Can an application be filed claiming priority without priority documents? If yes, what is the deadline for filing the documents?
Yes, two months from the date of filing in India.

T7: Can one application cover more than one class of goods/services?
Yes.

T8: May priority be claimed under the Paris Convention?
Yes.

T9: What is the term of protection of a trademark? From what date is it calculated?
10 Years, from the date of filing.

T10: Is marking compulsory and, if so, how should marking be made?
No.

T11: In case a trademark is not renewed in due time, and another company register the same trademark, can the original owner oppose the registration or not?
Yes, based on prior use.

T12: Can a mark in a trademark application be amended?
Only if the amendment is not substantial as compared to the first mark.

T13: Is use required before registration or for maintaining the registration in force?
Use is not required before registration or for maintenance, but non-use may make the registration of mark liable to cancellation on application by an aggrieved person.

T14: Is use of the trademark on one item sufficient to maintain the protection for all the goods covered by the registration?
No.

T15: What are the types of use required?
Any type of use is sufficient.

T16: Can the assignment of an application be recorded?
Yes and it is compulsory.

T17: Is recording a license agreement compulsory? What are the consequences of non-recordal?
Not compulsory, but recommendable and application for recordal would not be entertained by Trademarks Registry after six months from the date of the agreement.

T18: Can recordals such as change of name, address, merger, assignment, license, etc., be made against pending applications?
Yes.

T19: Can an assignment be made with or without the goodwill? What monetary consideration is to be mentioned as the value of the assignment? Is there any tax based on the value mentioned?
Yes. US$ 1 is enough. No tax.

T20: Can the trademark application be opposed and what is the opposition period?
Yes. Three months from the date of publication in the official journal.

Summary

India is a member of the Paris Convention for the Protection of Industrial Property; hence an applicant can claim priority of up to 6 months as per the convention. The International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement which consists of 45 classes is followed in India. 

Multi-class applications are also allowed, but statutory fees remain the same whether a single application is filed for goods/services falling in different classes or a separate application is filed with respect to each class of goods/services. 

Once a trademark application is filed, it is examined as to its registrability which includes distinctiveness, deceptiveness, etc. and availability based on the existence of prior trademarks registered or pending applications. If there are any objections to the registration, an examination report is sent to the applicant. Except in a few cases, examination reports are issued as a matter of practice. 

Once an examination report is issued, the applicant or his representative has to reply in writing to the report within one-month of the date of receipt. If the Registrar is not satisfied, he will call the applicant for a hearing. In case the application is rejected, the applicant can file a request for the review of the order of the Registrar. If the application is again rejected, the applicant can file an appeal before the Intellectual Property Appellate Board. (The applicant can invoke the writ jurisdiction against the decision of the Appellate Board). If the trademark application is accepted, it will be published in the Trademarks Journal. 

An opposition to the registration of a trademark may be filed before the Registrar by any person or through an authorized representative/agent within 4 months from the date of the publication. In the absence of an opposition, the relevant certificate of registration will be issued.

In case of an opposition, the Registrar - after hearing both sides- would give his decision. Either of the parties may file an application to review the Registrar’s decision within one month from the date of such decision. After such review or without applying for such review, any party may make an appeal to the Intellectual Property Appellate Board within 3 months from the Registrar’s decision. 

After the registration of the trademark, plea for cancellation of the trademark pleading that the registration of the trademark is invalid should be prosecuted before the Appellate Board. 

A trademark registration is valid for 10 years as of the date of filing the application and renewable for periods of 10 years perpetually. 

An application for the renewal of the mark should be made within 6 months before expiration. The mark can also be renewed by paying surcharge within 6 months after the expiry date. If not renewed within the said 6 months, the mark would be removed from the register of trademarks. An application for restoration and renewal can be filed within one year from the date of the expiration of the registered trademark. If no action is taken within the said one-year period, a fresh application for the registration of the mark is to be filed. 

The assignment of a trademark can be recorded while an application for the registration of the mark is pending, or after the mark is registered. In case of registered marks, unless an assignment has been entered against the trademark in the register, the assignment cannot be enforced. 

Assignment can be made in respect of either all goods or services in respect of which the trademark is registered, or of some of those goods or services. If the assignment of the trademark is without the transfer of the goodwill of business, it has to be registered with the Trademarks Registry within 6 months from the assignment deed; otherwise the assignment shall not take effect. 

Use of marks in India is not compulsory for filing applications or necessary for maintaining registrations in force. However, a registration is vulnerable to cancellation on the submission of an application by any aggrieved person, if the trademark has not actually been used during the 5 years immediately preceding the application for cancellation, or that the trademark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him, and in fact there has been no bona fide use of the trademark in relation to those goods or services up to a date 3 months before the date of the application for cancellation. 

Unauthorized use of a trademark registered under the law or an imitation of such trademark applied on goods and services of the same class, or sale, storing for the purpose of sale, or exhibiting for sale of goods and services bearing a counterfeited mark, or using a mark duly registered under the law by another person to serve the purpose of unauthorized promotion of goods or services of the same class are offenses punishable under the law. 

Well-known trademarks in the international market whether registered in India or not and known to the substantial segment of the public, which uses or receives such goods, are recognized by the law. 

India IP Procedures & Filling Requirements

Patents

Filling Requirements

1. A simply signed Power of Attorney; this can be filed after filing the application.

2. A declaration signed by the inventor(s) or a notarized copy of the assignment from the inventor(s) to the applicant(s); this can be filed after filing the application.

3. In case of national phase application under the PCT, international application number, title of the invention and the applicant(s) in India and any amendments filed to the international application. If the international application or WIPO publication was not in English, a certified/notarized English translation is required.

4. In case of convention application under the Paris Convention, one copy of the specification including claims and drawings, a certified copy of the basic application or its notarized copy. If the certificate is not in English, a certified/notarized English translation is required. If it is not readily available, the application can be filed based on the basic application number, date of the application and country of the application.

Notes:

1. Computer programs with technical applications to industry or a combination with hardware are patentable.

2. Additional fee is payable, if the specification exceeds 30 pages and the claims exceed 10 pages.

3. Applications for patents can be filed without a Power of Attorney or the inventor’s declaration and these would be required once the office action commences.

4. Annuities are paid only after the grant of the patent, but annuity from the date of the application has to be paid.

5. All documents should be in English, or a certified /notarized English translation is needed.

6. Pursuant to the latest amendments in the Patent Rules (with effect from January 1, 2005), the official fees have been increased substantially. Patent specifications in excess of 30 pages and claims in excess of 10 attract excess fees. Grant fee (sealing fee) in respect of a patent is no longer payable.

7. The latest amendments have really revamped the patent system in India and cut short procedural delays considerably.

8. According to the said amendments, the Request for Examination has to be filed within 36 months from the date of the priority. The "First Office Action" is generally issued within 3 months from filing the "Request for Examination" and within 6 months from the date of the "First Office Action." The application should be put in order after complying with all the requirements. An extension of 3 months for putting the application in order would be available on payment of a late fee, which is considerably high.

Assignment Applications

1. A simply signed Power of Attorney.
2. Patent application number and a copy of the patent certificate in case of patents granted.
3. A notarized copy of the assignment deed signed by the assignor and the assignee.
4. Name, address, nationality and profession or nature of business of the assignee.

Change of Name Applications

1. A simply signed Power of Attorney.
2. A notarized copy of the change of name certificate issued by the competent authority.

 

FAQ

P1: Can a patent search be conducted?
No official search is conducted.


P2: Can convention priority be claimed under Paris Convention and Patent Cooperation Treaty (PCT)?
Yes.

P3: What are the time periods for national phase entry under chapters I and II of PCT ?
It is 31 months from the date of earliest priority in respect of both the chapters.
P4: Can a registration be obtained for pharmaceutical products?
Yes.

P5: What is the term of protection of a patent and from which date is it calculated? Can it be extended?
20 years from the date of filing. In case national phase applications under PCT, the period starts form the date of International Application. It cannot be extended.

P6: Is there a novelty requirement? Is it local or worldwide?
Yes, worldwide.

P7: Is one year period allowed for commercial exploitation before filing a patent application?
No.

P8: Are utility models granted protection in India under the current law?
No.

P9: Is patent protection available for software alone, or must the software be coupled with computer hardware in order to permit patent application?
Computer programs with technical applications to industry or a combination with hardware are patentable.

P10: Can the specifications or claims be amended?
Yes.

P11: Should annuity payments be made before the granting of the patent?
No.

P12: In what language should specifications and claims of the patent be filed?
English.

P13: Is working of the invention required to keep protection in force and, if so, can the working requirements be satisfied by importation or nominal working?
Working of the invention by the patentee or a licensee will do.

P14: What are the conditions that might lead to a compulsory license?
Non-use for three consecutive years after grant of patent and any national urgency.

P15: Must assignments be recorded within a certain period?
No.

P16: Does the Patent Law provide for licenses or registered users?
Yes.

P17: Does the Patents Office publish the patent applications in the Official Gazette?
Yes.

Summary

Under the Paris Convention, an application should be filed in India within 12 months from the date of the basic application filed in the home country of the applicant.

For national phase entry under the Patent Cooperation Treaty (PCT)- as against the minimum period of 30 months prescribed by the PCT- the Indian law allows 31 months to enter into National Phase from the earliest priority date. Amendments made to the international application in response to the Search Report or Preliminary Examination Report can be considered as amendments made to the patent's specifications at the option of the applicant(s).

All applications are published after 18 months of the priority date or filing date of the application whichever is earlier. In case of national phase applications under the PCT, they are published immediately after filing, as 18 months from the priority date would have been generally over. An applicant can request for an early publication too.

A request for examination has to be filed within 48 months from the date of priority.  Patent applications are examined in the order of filing request for examination with respect to compliance with the formalities and patentability requirements. Novelty is not limited to India. A novelty examination generally takes into consideration any specification previously lodged with the Patent Office, any patent previously granted in various countries and any other materials an examiner treats as relevant. The Patent Office may ask to make amendments that it deems necessary to conform to the requirements.

An applicant has to put the application in order for acceptance removing all the objections within 12 months from the date of the First Examination Report. There is no provision for extension of time under any circumstance. Once an application is accepted, it would be granted a patent and published in the Official Journal of the Patent Office.

There are provisions for both pre-grant and post-grant opposition. In case of pre-grant opposition, after publication but before grant, any person may file a representation by way of opposition with the Controller of Patents on the ground of patentability including novelty, inventive step and industrial applicability or non-disclosure or wrongful mentioning of source and geographical origin of biological material used in the invention in complete specification, and anticipation of invention by the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere. Rights of an opponent are limited here as the law prescribes that an opponent shall not become a party to any such proceedings only for the reason that he has made such representation.

Post-grant opposition is elaborate. Any interested person may give a notice of opposition within one year from the date of publication of the grant of the patent. In addition to the grounds mentioned above in pre-grant opposition, post-grant opposition can be on the grounds of prior use in India, insufficient explanation of the invention or the method of manufacture, application in India after the prescribed period for claiming priority, etc. The Controller constitutes an Opposition Board to decide the matter after going through the materials furnished by both parties and statements made during the hearing, if any.  

A patent is valid for 20 years from the date of filing the application. In case of national phase applications under the PCT, international application date is treated as the date of the application. Though convention applications get priority under the Paris Convention, for such applications, the 20-year period commences from the date of application in India.

A patent will remain valid subject to the payment of the prescribed annuity (annual fees). The annuity is to be paid only after the issuance of the patent.
The right to a patent may be assigned, licensed or transferred through succession. The assignment of patent applications or granted patents must be made in writing.

Working of patents is an official requirement in India. In case the owner or the licensee(s) of a patented invention fails to satisfy the stipulated working requirements of the country within 3 years as of the date of grant, the patent will be subject to compulsory licensing under the provisions of the law.

The rights conferred by a patent on the registered patentee expire on the lapse of the protection period as prescribed by the law, lawful assignment of the patent rights, final court decision to this effect or nonpayment of the annuity fees.

In a suit for infringement, a court may grant an injunction and damages or an account of profits.

 The Indian Patents Act, 1970 was amended in 2014 with effect from February 28, 2014. The official amendments can be downloaded from this link. The main highlights are as follows:

1. A new category of applicant in the form of  “small entity”. Thus, the applicants are classified as – individual, small entity and other entity.

2. The official fee of “small entity” is half of the official fee for an “other entity”. 

3. A new Form 28 is to be submitted to claim the benefits associated with the applicant’s status of  “small entity”.

4. The official fee is doubled.

5. 10% surcharge on official fee for documents which are not filed electronically.

6. A new Form 7A for filing of pre-grant opposition.

How to determine whether an applicant is a small entity or other entity?

a. When the applicant is engaged in the manufacture or production of goods, where the investment in plant and machinery does not exceed INR10 million, the applicant will be considered as a Small Entity.

b. When the applicant is engaged in rendering services, where the investment in equipment does not exceed INR5 million, the applicant will be considered as a Small Entity.

c. When the applicant is engaged in the manufacture or production of goods where the investment in plant and machinery exceeds INR10 million, the applicant will be considered as an Other Entity.

d. When the applicant is engaged in rendering services, where the investment in equipment exceeds INR5 million, the applicant will be considered as an Other Entity.

e. When we claim Small Entity status, we need to submit proper documents to establish the status.

For claiming the status of small entity, we must file Form 28 along with the relevant documents at the Indian Patent Office. If the applicant is a “small entity”, the supporting documents must be provided to establish the status of the applicant.

Copy Rights

Requirements

1. A simply signed Power of Attorney.

2. Four copies of the work.

3. A document supporting the right of the applicant in the work, in the event the applicant is not the author.

4. Name, address and nationality of the applicant.

5. Name, address and nationality of the author; if the author is deceased, the date of his decease.

6. Copies of the notice of the application which has been sent to every person who has any interest in the subject matter of the copyright. 

7. Title, language and brief description of the work.

8. Whether the work is published or not; if published, year and country of first publication; name, address and nationality of the publisher; years and countries of subsequent publications if any, as well as names, addresses and nationalities of the publishers.

9. Names, addresses and nationalities of the owners of the various rights comprising the copyright in the work and the extent of rights held by each, together with the particulars of assignments and licenses, if any.

FAQ

C1: Is copyright protected in India?
Yes.

C2: What types of items are protected by copyright law in India?
All types.

C3: What is the length of protection of a copyright in India?
The duration of protection in respect of published literary, dramatic, musical and artistic works is the lifetime of the author plus sixty years following his/her death. It varies in respect of other works.

C4: Is registration of a copyright compulsory?
No.

C5: What kind of sanctions does your copyright law provide against infringers?
Civil and criminal.

C6: Are there any limitations of copyright in your jurisdictions?
In most cases no.

C7: Must transfer agreements be recorded?
Not compulsory, but recommendable. No consequences.

C8: Must license agreements be recorded?
Not compulsory, but recommendable. No consequences.

C9: Are there any consequences of non-recordal of agreements?
No.

Summary

The Copyright Act of 1957 governs the protection of copyright in India. Protection covers original literary, dramatic, musical and artistic works, cinematograph films and sound recording.

Registration of a copyright is optional and is a property flowing naturally from the act of creation without the formality of registration provided the subject matter is in some permanent form. This right is enjoyed by the residents of all member countries of the Berne Convention and the Universal Copyright Convention, to the extent of protection given by these countries to Indian residents.

Those seeking registration of copyrightable works shall have to deposit four copies of the work with the Registrar of Copyrights. The duration of protection is the lifetime of the author plus 60 years following his/her death.

Infringement of copyright is both a civil and criminal offence. A copyright owner can seek remedies from the court.

India is a member of the Berne Convention for the Protection of Literary and Artistic Works and the Universal Copyright Convention.

Design

Requirements

1. A simply signed Power of Attorney; this can be filed after filing the application.

2. A document supporting the right of the applicant in the design, in the event the applicant is not the creator.

3. Specify the novel aspects of the design.

4. The article(s) covered by the design and the material used in producing these items.

5. The class in which the design is to be registered.

6. Four sets of the representations of the design.

7. A certified priority document or a copy of it duly notarized, if priority is to be claimed. If the certificate is not in English, a certified/notarized English translation is required. If it is not readily available, the application can be filed based on the basic application number, date of the application and country of the application. A copy of the priority document can be submitted within two months of filing the application.


Assignment Applications

1. A simply signed Power of Attorney.

2. Design application number or a copy of the design registration certificate in case of registered designs.

3. A notarized copy of the assignment deed signed by the assignor and the assignee.

4. Name, address, nationality and profession or nature of business of the assignee.

Change of Name Applications

1. A simply signed Power of Attorney.

2. A notarized copy of the change of name certificate issued by the competent authority.

FAQ

D1: Are designs registrable in India?
Yes.

D2: Should the design application be filed under the form of drawings and/or photographs, the size thereof and the number of views?
Yes.

1-  Four copies of the design shall be exactly similar to drawings, photographs, tracings or other representations of the design or shall be specimens of the design.

2-  When a design is to be applied to a set, each representation accompanying the application shall show all the various arrangements in which it is proposed to apply the design to the articles included in the set.

3-  Each representation of the design whether to be applied to a single article or to a set, shall be on durable paper of A4 size (and not on cardboard) and shall appear on one side only of the paper. The figure or figures shall be placed in an upright position on the sheet. When more than one figure is shown, these figures shall, where possible, be on one and the same sheet, and each shall be designated (e.g. perspective view; front view, side view).

D3: What are the novelty requirements for a design application to be valid?
New, original and should not have been disclosed anywhere in India or any other country by publication or by use.

D4: Can convention priority be claimed in India (Paris Convention)?
Yes.

D5: Does India use the international classification?
Yes.

D6: Are there any goods for which a design cannot be registered?
No.

D7: Is the assignment of the creator compulsory for a design application?
No.

D8: Is there any deadline to apply for the publication of a secret filing of a model/design?
Not applicable.

D9: Are there any special advantages in filing a model or a design in a secret form?
Not applicable.

D10: Is it possible to file more than one design in the same application? If yes, are there any advantages in doing so?
No.

D11: What is the term of protection of a model or design in India? Can this term be extended?
10 years plus 5 years (total of 15 years).

D12: Is use required to maintain a registration of a model or design in India?
No.

D13: Are designs/models protected by copyright law as well?
No.

D14: Are there provisions in your law to oppose a model/design registration?
No.

D15: Is it possible to apply for cancellation of a registered model/design?
Yes.

Summary

As per the Paris Convention, an applicant can claim priority of up to 6 months in India. The International Classification for Industrial Designs under the Locarno Agreement (32 Classes) is implemented in India, although India is not a party to the Agreement. Industrial designs are protected in India through registration with the Patent Office.

Once a design application is filed, the examiner shall examine the application for novelty and other legal requirements. The design should be new, original and should not have been disclosed anywhere in India or any other country by publication or by use prior to the filing date or priority date. A certificate of registration is issued in respect of a design application accepted by the Controller and published in the Official Gazette. Any person interested may present a petition to the Controller for the cancellation of the registration of the design at any time after the registration of the design for lack of novelty or for not fulfilling any other requirement under the law.

Upon a design registration, the registered proprietor shall have a copyright in the design initially for a period of 10 years starting of the registration date. The period of copyright can be extended for a second period of 5 years from the expiration of the original period of 10 years on payment of the prescribed fee. There is no provision in the design law of India for compulsory working with respect to designs.

Piracy of a registered design is a civil offence and the proprietor can claim damages in addition to seeking injunction.

The Indian Designs Act, 2000 was amended in 2014 with effect from December 30, 2014. The official amendments can be downloaded from this link. The main highlights are as follows:

1. A new category of applicant in the form of  “small entity”. Thus, the applicants are classified as – individual, small entity and other entity.

2. The official fee of “small entity” is half of the official fee for an “other entity”. 

3. A new Form 24 is to be submitted to claim the benefits associated with the applicant’s status of  “small entity”.

4. The official fee is doubled.

How to determine whether an applicant is a small entity or other entity?

a. When the applicant is engaged in the manufacture or production of goods, where the investment in plant and machinery does not exceed INR10 million ($1,626,016), the applicant will be considered as a Small Entity.

b. When the applicant is engaged in rendering services, where the investment in equipment does not exceed INR5 million ($813,008), the applicant will be considered as a Small Entity.

c. When the applicant is engaged in the manufacture or production of goods where the investment in plant and machinery exceeds INR10 million ($1,626,016), the applicant will be considered as an Other Entity.

d. When the applicant is engaged in rendering services, where the investment in equipment exceeds INR5 million ($813,008), the applicant will be considered as an Other Entity.

e. When we claim Small Entity status, we need to submit proper documents to establish the status.

For claiming the status of small entity, we must file Form 28 along with the relevant documents at the Indian Patent Office. If the applicant is a “small entity”, the supporting documents must be provided to establish the status of the applicant.

Domain Name

Requirements

An application form which can be submitted by mail, email or fax.

Note: Regarding the files required in original form, you must send scanned copies of the documents by email for confirmation before sending them by mail.

Summary

Domain names with the following extensions can be registered in India:

Top-Level Domain

.in:  Country Code Top-Level Domain


Second-Level Domains

.co.in:  commercial enterprises
 
.net.in:  involved in Internet infrastructure
 
.org.in:  non-profit organizations

.gen.in:  general companies/organizations/firms, etc.

.firm.in:  firms in general

.ind.in:   individuals

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