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Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
An agent filing to register a mark on behalf of the owner requires a simple executed power of attorney stamped under the Stamp Act 1899. No legalisation is required. Since the introduction of the new e-filing portal, the power of attorney must be submitted at the time of filing the application.
What information and documentation must be submitted in a trademark registration application?
The following information and documentation must be submitted in a trademark registration application:
- the applicant’s name and address;
- the state or country of incorporation;
- a description of the trademark;
- a representation of the trademark;
- a list of the relevant goods or services;
- the power of attorney;
- the dates of first use – if use is claimed, an affidavit of use and documentary evidence must be filed electronically;
- a statement of intention to use;
- the official filing fee;
- a priority claim and documents, where priority of an earlier application is claimed; and
if the applicant is not domiciled in this jurisdiction, a local service address must be provided.
What rules govern the representation of the mark in the application?
Rule 26 of the Trademark Rules 2017 governs the representation of the mark in the application. It states that:
“Every application for the registration of a trademark, shall contain a clear and legible representation of the trademark of size not exceeding 8 cm x 8 cm. Where an application contains a statement to the effect that the applicant wishes to claim combination of colours as a distinctive feature of the trademark, the application shall be accompanied with reproduction of the trademark in that combination of colours.”
Are multi-class applications allowed?
Yes. Multi-class trademark applications are allowed in India.
Is electronic filing available?
The Trademark Registry allows the comprehensive e-filing of trademarks, which enables the online filing of trademarks, including the entry of the details set out above and the uploading of relevant documents.
Further details regarding the filing of trademark applications can be accessed on the Indian Trademark Registry’s website.
Under the recently notified Trademarks Rules 2017, the official fee for e-filing a trademark application is 10% lower than the fee for physical filing.
What are the application fees?
Rules 10 and 11 of the Trademark Rules govern the filing of trademark applications in India. The forms, along with the requisite fee for filing them, are set out under Schedule 1.
Under the Trademarks Rules the official fee for e-filing a trademark application is 10% lower than the fee for physical filing.
How are priority rights claimed?
Where a person who has applied to register a trademark in a convention country applies to register a trademark in India within six months of the date on which the application was made in the convention country, if accepted, the registration of the Indian trademark will be backdated to the date on which the application was made in the convention country.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Although not mandatory, it is advisable to conduct a trademark search before applying to register a trademark. Trademark searches in India can be conducted for word marks and device marks.
The Trademarks Registry provides a free online trademark search on its website.
What factors does the authority consider in its examination of the application?
The examiner may refuse to register the trademark while examining the application based on absolute or relative grounds.
Absolute grounds Section 9 of the Trademarks Act provides the following absolute grounds for refusal of a trademark:
- The trademark is devoid of any distinctive character – that is, it is incapable of distinguishing the goods or services of one party from those of another.
- The mark consists exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or time of production of the goods or rendering of the service or other characteristics of the goods or service.
- The mark consists exclusively of marks or indications which have become customary in the language or established practices of the trade.
- The mark is of such nature as to deceive the public or cause confusion.
- The mark comprises of material likely to hurt the religious susceptibilities of a class or section of Indian citizens.
- The mark comprises or contains scandalous or obscene matter.
- Use of the mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950.
- The mark consists exclusively of:
- the shape of goods which results from the nature of the goods themselves;
- the shape of goods which is necessary to obtain a technical result; or
- the shape which gives substantial value to the goods.
However, a trademark which may initially be refused on absolute grounds can be registered if it acquires a distinctive character or secondary significance as a result of extensive and continuous use.
Relative grounds Section 11 of the Trademarks Act provides the following relative grounds for refusal of a trademark:
- A mark cannot be registered if there is a likelihood of confusion due to:
- its identity with an earlier mark for similar goods or services;
- its similarity to an earlier mark for identical or similar goods or services.
- A mark cannot be registered if it is identical or similar to an earlier trademark and is to be registered in the name of a different owner for goods or services which are different from those for which the earlier mark is registered if the earlier mark is a well-known mark in India.
- A mark cannot be registered if its use in India is liable to be prevented by virtue of any law.
Does the authority check for relative grounds for refusal (eg, through searches)?
Yes. The Trademark Registry checks for relative grounds of refusal during the examination stage and cites earlier registrations and applications.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
Pursuant to the issuance of the examination report, the applicant must file an appropriate reply along with the required documents to overcome the objections raised against a trademark by the registry.
The Trademark Rules 2017 provide for a 30-day period from the date of receipt of the examination report to file a reply to the office action or request a hearing. In the absence of such response, the application will be deemed to have abandoned on the grounds of non-prosecution.
The applicant can also limit the application in respect of goods or geographical region, or can accept conditions as directed by the examiner.
Can rejected applications be appealed? If so, what procedures apply?
If a mark is refused, Section 91 of the Trademarks Act states that an appeal must be filed with the Intellectual Property Appellate Board within three months of the order of refusal.
When does a trademark registration formally come into effect?
Once registered, the registration of a mark is backdated to the date on which the application was filed. However, for the purpose of non-use cancellation, the trademark registration date is the date when it was entered into the Trademarks Register under Section 47 (b) of the Trademarks Act.
What is the term of protection and how can a registration be renewed?
In India, the term of protection for a trademark is 10 years from the date of application, renewable every 10 years on payment of the requisite fee.
What registration fees apply?
The Trademarks Registry charges no registration fees.
What is the usual timeframe from filing to registration?
For a straightforward application, the usual timeframe from filing to registration is 10 to 12 months.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
The Trademarks Act prescribes that any person can file a notice of opposition against a trademark within four months of the date on which the trademark application is advertised or re-advertised in the Trademarks Journal.
The opponent need not have an application or registration in India in order to oppose a trademark.
A trademark can be opposed on:
- absolute grounds of refusal as provided under Section 9 of the act – that is, the trademark is not distinctive or is incapable of distinguishing the goods or services of the applicant from those of others;
- relative grounds of refusal as provided under Section 11 of the act – that is, the trademark is phonetically, visually, conceptually, confusingly or deceptively similar or identical to the opponent’s trademark; and
- other relevant grounds depending on the facts of the matter – that is, the applicant’s trademark is well known, protected by copyright or constitutes a geographical indication.
The following procedure applies after a notice of opposition is filed:
- The registrar will serve a copy of the notice of opposition on the trademark applicant within three months of the date of receipt.
- Within two months of receiving the notice of opposition, the applicant must file its counterstatement specifying the facts as alleged in the notice of opposition which it admits.
- The applicant can file the counterstatement once the notice of opposition has been uploaded on the Trademark Registry’s website. In such case, the registry serves no notice of opposition on the applicant.
- If the applicant fails to file its counterstatement within two months of service of the opposition, its trademark is deemed to have been abandoned for non-prosecution under Section 21(2).
- If the applicant files the counterstatement, the opposition will proceed to the evidence stage.
The evidence stage is as follows:
- Evidence in support of opposition:
- The registrar will serve a copy of the counterstatement on the opponent within two months of date of receipt.
- Within two months of receiving the counterstatement, the opponent must file its affidavit by way of evidence in support of the opposition, alongside the exhibits, and forwards a copy to the applicant. Alternatively, the opponent can rely on the facts stated in the notice of opposition by writing to the registrar and the applicant.
- If evidence or a reliance letter is not filed with two months, the opposition is deemed to have been abandoned.
- Evidence in support of the application:
- Within two months of receiving the affidavit in support of the opposition, the applicant must file its affidavit in support of the application, along with exhibits, and must forward a copy to the opponent. Alternatively, the applicant can rely on the facts stated in the counterstatement by writing to the registrar and the opponent.
- If evidence or a reliance letter is not filed with the statutory two-month period, the application is deemed to have been abandoned.
- Evidence in reply by the opponent:
- Within one month of receiving the affidavit in support of the application, the opponent may provide the registrar with an affidavit in reply, including exhibits.
The hearing stage is as follows:
- After hearing the parties and considering the evidence, the registrar will decide whether the trademark can be accepted for registration.
- The applicant or opponent cannot seek more than two adjournment, and each adjournment cannot be more than 30 days.
What is the usual timeframe for opposition proceedings?
The usual timeframe for opposition proceedings in India is 18 to 24 months.
Are opposition decisions subject to appeal? If so, what procedures apply?
The registrar’s decision in opposition proceedings can be challenged by filing an appeal before the Intellectual Property Appellate Board.
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