Ten Tips about Indian trademark practice to assist US brand owners to protect their  brands in India    

  1. Indian trademarks law allows filing and registering a mark on the basis of  “intention to  use” the mark in India. Thus unlike US trademark practice, brand owner is not required to  show actual use of the mark before a mark is registered or within 6 months of registration.
  2. At the time of renewal of the mark, no affidavit with evidence of use of the mark in India is  required. Thus marks can be renewed on the basis of a request for renewal accompanied  by official fees.
  3. The class heading as provided in Nice Classification is not permitted to be registered.  However a wide specification of goods identifying the actual goods of interest for which a  brand owner is using or intends to use the mark can be applied for registration.
  4. The trade mark office database is available online and brand owners can  check the  availability of a mark and  assess the risk of using and registering it. It is advisable to  search the register and conduct common law searches to avoid conflict and expense on  launch of a product.
  5. The  online sale of goods and if such goods are available for sale to people in India is  sufficient to claim use of the mark in India even if the online store is located outside India.
  6. Recordation of a license with Trademark office is not mandatory. In other words, the  registered proprietor or the owner of a mark can enter into a license agreement in writing  and such use would accrue to the benefit of the proprietor even if such a license is not  registered with the authorities. The Indian law gives credence to the concept of “permitted  use” and has widened its scope to include unregistered licensing arrangements as well.
  7. There are no restrictions on amount of  royalty payment to a licensor or a Joint venture  partner on use of trade marks by the Indian partner/company.
  8. For assignment of a mark in India, it is necessary to mention in the assignment deed as to  whether a) assignment of mark is with or without goodwill of the business b)  actual  monetary consideration-the expression “for a valuable consideration” is not acceptable c)  assignor must acknowledge the consideration amount d) date on which assignment is  effective specified. 
  9. India is a signatory to the Madrid protocol and the applications can be filed at WIPO with  India as a designated country. However, no application through Madrid has yet been  examined by the Indian TM Registry. For now this does not seem to be the preferred  route.
  10. A registered mark can be cancelled on the ground of “non-use” if the mark has not been  used in India for a continuous period of 5 years from the date such a mark is physically  placed or entered on the register. This date appears as the sealing date on the registration  certificate.