How to Register a Trademark in India: A Step-by-Step Guide
What is a trademark and why register it?
A trademark is a sign — a word, logo, label, shape or combination — that distinguishes the goods or services of one business from those of another. Registration under the Trade Marks Act 1999 gives the owner the exclusive right to use the mark for the registered goods or services and a statutory basis to take action for infringement.
While unregistered marks may have some protection through the common-law action of passing off, registration provides stronger, clearer and more easily enforceable rights.
What can and cannot be registered?
A mark must be distinctive and capable of distinguishing your goods or services. Marks are generally refused if they are:
- Devoid of distinctive character or purely descriptive of the goods;
- Identical or deceptively similar to an earlier registered mark;
- Likely to deceive or cause confusion;
- Contrary to law, or barred by the prohibitions in the Act.
Before adopting a brand, it is prudent to confirm that the mark is available and distinctive.
What are the steps to register a trademark?
The registration process broadly follows these stages:
- Trademark search: search the Trade Marks Registry database to check for identical or similar existing marks.
- Classification: identify the correct class or classes (under the international NICE classification of goods and services).
- Filing the application: file online with the Registry, with the applicant details, the mark, and the goods/services. A filing receipt gives you a date of priority.
- Examination: the Registry examines the application and may issue an examination report raising objections, to which a reply is filed.
- Publication: if accepted, the mark is published in the Trade Marks Journal.
- Opposition: third parties may oppose within the prescribed period; if opposed, the matter goes through pleadings and a hearing.
- Registration: if there is no opposition or the opposition is decided in the applicant's favour, the mark proceeds to registration and a certificate is issued.
How long does registration last and how is it maintained?
A registered trademark is valid for ten years from the date of application and can be renewed for successive ten-year periods, in principle indefinitely, on payment of the renewal fee. A registration can be vulnerable to removal for non-use, so the mark should be put to genuine commercial use.
The ® symbol may be used only with a registered mark; the ™ symbol may be used to assert rights in a mark that is pending or unregistered.
How are trademark rights enforced?
A registered owner can take action for infringement, and the owner of an unregistered mark with goodwill can sue for passing off. Remedies include injunctions, damages or an account of profits, and delivery up of infringing material. Such actions are brought before the civil courts, including the commercial divisions of the High Court of Madras where applicable.
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