A Trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights. It is a brand or name associated with a service or product of an individual or company. It is a unique mark through which the consumers identify a product or service. It differentiates the product manufactured or service provided by an individual or an entity.

There are 7 different types of Trademarks that are registered in India:

1. Product Mark
2. Service Mark
3. Collective Mark
4. Certification Mark
5. Shape Mark
6. Pattern Mark
7. Sound Mark

One of India’s most substantial types of Trademarks is the Product mark. It is a mark linked to the products or goods, but it does not include services. The use of product marks is to recognize the source of a product and differentiate the products manufactured and sold by one person from the others.

Service mark is a mark linked to the services and not the products or goods. A service mark is used to recognize the source of assistance. A service mark differentiates the services of one person from that of another. It signifies the services offered by a company and is used in the service business where the definite goods are not traded under the Trademark as provided by the Trademark Act 1999.

The mark used by the group of companies and protected by the group collectively is termed collective marks. The effect is used to represent or inform the public at large about the unique idea of the product. It is used to promote certain products with specific characteristics in that field.

A certification mark is used to describe the standards of the goods or services. It safeguards the consumers of the goods or services that such product encounters the safety and other set standards. The certification mark on the product signifies that the product has gone through the quantified standard tests. It safeguards and assurances the consumers that manufacturers have assumed or gone through an audit process to safeguard the anticipated quality of the products.

A mark used to indicate the shape of goods, their packing, etc., are termed Shape Mark as provided by the Trademark Act. It is used only when it is likely to present the product’s shape. These shape marks make it different from the other products. If the form has some distinctive features, such effects can be registered under the Trademark Act.

A mark that comprises a pattern capable of identifying the product or services that originate from a particular undertaking and can be distinguished from the other project can be termed the Pattern Trademark as provided by the Trademark Act. The method of evaluation is similar to other Trademarks.

A sound mark is a mark used when a specific sound performs the purpose of uniquely classifying the source of a product or a service; it is termed as sound mark. In such cases, such sound is connected with a company or its products or services. It is provided by the Trademark Act.

Benefits of registering a Trademark:

1. Trademark registration allows a person the right to sole use of the mark in regards to the services or goods. In addition, the most important purpose in registration of a Trademark comprises powerful answers against any unauthorized use. Trademark registration allows the proprietor to begin litigation against infringement.
2. Trademark registration also prevents others from using similar marks by making a mark easy to find when searching for Trademark availability searches. This also prevents problems before they arise.
3. Trademark registration safeguards against Trademarks that may sound too confusing.
4. Trademark registration designates the mark on the use of the application date, which is important in a system where the first use wins. Your rights are restricted to a geographic area.
5. Trademark registration affords national notice of ownership, stopping others from claiming a subsequent adoption of the mark. 
6. A registered Trademark may be designated as a security, which means that the Trademark may be pledged as collateral to obtain loans in the same way other properties may be bonded.
7. Regarding tangible property, your Trademark is considered a valuable, intangible asset. Trademark registration entails the attachment of goodwill and reputation to a product.

A TM (™) sign denotes an unregistered Trademark, which is a symbol often used to advertise or brand products when they have applied for Trademark registration. Companies may use the Trademark superscript, (™), after text, pictures, or other content they claim as their own but have not been formally registered with a regulatory authority. Occasionally, businesses will use ™ to indicate their first usage or that they have applied for registration. From a business perspective, it suggests that an individual selling a particular product or service believes that its identity is unique.

The R (®) symbol on a product indicates that it is a registered Trademark. This means that the logo enjoys legal protection as per the Trademarks Act, 1999. Trademark registrations carry a validity of ten years with a possibility for an extension by following the renewal process. If a person or business utilizes the registered name, logo, or symbol without the owner’s prior consent, they may be prosecuted for Trademark infringement.

Trademark applications can be submitted filed physically at the Front Office Counter of the Indian Patent Office or filed online through the e-filing gateway available at the official website www.ipindia.nic.in.

The Trademark is registered for ten years by the Registrar. Hence, following the date of registration indicated in the registration certificate, a Trademark registration will be valid for ten years. The Trademark registration must be entered into the Register of Trademarks by the Registrar when it is issued.

By submitting a Trademark renewal application to the Registrar prior to the initial registration expiry, the Trademark owner can extend the Trademark registration for an additional 10 years.

Under the Trademark Act 1999, the duration of Trademark registration in India is ten (10) years. The renewal for a further 10-years period will require prescribed renewal fees.

You’ll have to decide if you want to renew or not before the expiration date. Anyone can claim your Trademark after 10 years if not renewed.

India has been following the Nice Classification system for trade mark registration. The Nice Classification comprises Class Headings, Explanatory Notes and an Alphabetical List of Goods and Services. The Class Headings indicate, in a general manner, the nature of the goods or services contained in each of the classes. Each class has Explanatory Notes which describe the type of product or service included, or not included in a class. The Alphabetical List sets out specific items of goods and services in alphabetical order, along with the appropriate class. 

Classes 1-34: For Goods

Classes 35-45: For Services

Yes, Trademarks are territorial in nature and must be filed in the countries the applicant seeks for protection.

Section 9 of the Trademarks act, 1999 provides absolute grounds, and section 11 provides relative grounds for refusal of registration of India. Trademark laws mandate Trademarks to be distinctive and non-descriptive in order to get registered. The rationale behind this provision is that non-distinctive or descriptive marks can’t be granted monopoly being generic to the trade and are open for public use without any exclusive rights over the same.

If it is a word it should be easy to speak, spell and remember. The best Trademarks are invented words or coined words or unique geometrical designs. Please avoid selection of a geographical name, common personal name or surname. No one can have monopoly right on it. Avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super etc.) It is advisable to conduct a market survey to ascertain if same/similar mark is used in market. Trademark shall be unique and distinctive. It shall not be same in any manner like phonetically, descriptively and in appearance. Trademark creating confusion with other existing or applied trademark is undesirable. Adding prefix or Suffix also doesn’t create uniqueness and will always is objected by the department.

Yes Corrections can be made in trademark application, but the basic principle is that the Trademark applied for should not be substantially altered affecting its identity. Subject to this changes are permissible according to rules detailed in the subordinate legislation. Four credentials cannot be changed in existing application, 1. Applied trademark; 2. Owner Name; 3. Class of trademark; 4. Logo (only minor variations are allowed in logo).

It can be removed on application to the Registrar on prescribed form on the ground that the mark is wrongly remaining on the register. The Registrar also can suo moto issue Notice for removal of a registered Trademark.

Yes! You can get as many Trademarks as required under one GST or business as there is no
relation between the two. However, you should note that each Trademark application has to be
filed separately and with separate registration fee for each application. For example, Patanjali
Ayurveda Limited has over 140 Trademarks in just one class of Trademark with different names
or logos for all of its products.

A registered company’s name is protected against use by any other company or LLP for their business, but a third party can still get a Trademark registered in that name. But on the other hand, if you get a Trademark for the name, the name can neither be used by a company, LLP nor any individual for any purpose under the class that you have registered. Therefore, protection by a Trademark supersedes the protection of name by incorporating a company. But Existing entity can apply to commercial court for infringement of Intellectual Property Rights.

Trademark Registration consists of 2 types. Word and Device.

• If you want to register your brand name only, then you can choose a Word type.
• If you want to register your brand name and logo, then you can choose a Device type. The cost of Trademark registration includes the logo registration.

No, Trademarks are valid for a period of 10 years. After the completing of 10 years, one can file application for its renewal and paying the renewal fee. If it is not renewed, it will be marked abandoned and will be available for anyone to use. Even after the death of owner of Trademark, the same can be transferred to his legal heirs.

No, Trademark registrations are territorial in nature, which means they are valid only in the country of their registration. For protection in various countries, you need to file separate applications in all those countries.

Yes, to file a Trademark application, a DSC is required. In addition, the applicant also needs to create an account on the Trademark Registry. It is advisable to consult a Trademark attorney who can help you with the Trademark registration and hence you will not need to get a DSC. Physical Application can also be filed but that’s much troublesome as compared to online application.

It is during the initial stages of the Trade Mark registration process that the status on the Trade Mark Registry website shows as “Send to Vienna Codification”. This is one of the first steps taken for any Trademark that comprises any figurative element or logo. This codification is done to facilitate Trade Mark Code for an artwork or logo.

Yes, the Trademark can be registered online through the e-filing gateway available at the official website. However it can also be filed physically at the front office counter of the respective office or can be sent by post.

By following the below given steps you can Check Trademark Status

Step 1: Access IP INDIA Website. https://tmrsearch.ipindia.gov.in/eregister/

Step 2: Select National/IRDI Number.

Step 3: Provide Trademark Application Number.

Step 4: View Trademark Application Information on clicking on application number reflecting as hyperlink.

A Trademark search can be conducted in India on the Indian Trademark registry at public search link provided below:

Step 1: Visit the official website of Intellectual Property India at

https://tmrsearch.ipindia.gov.in/tmrpublicsearch/

Step 2: Under the dropdown menu in the “Search type” select ‘Wordmark’

Step 3: Here three options are available

• ‘Start with’ which display all the search results that start with the data you have entered;
• ‘Contains’ which display all the search results that contains the data you have entered;
• ‘Match with’ which display all the search results that exactly matches the data you have entered there.

Step 4: Enter the applicable class, class can be ascertained from http://euipo.europa.eu/ec2/ by mentioning Search term and clicking on search button at right side of the browser;

Step 5: Click on search and list of trademark registered or application for registration of trademark will be displayed.

Trademark searches refer to any action taken for the purpose of determining whether and/or a Trademark is used in commerce. Trademark searches can be narrow in scope or can include results from every avenue for Trademark protection for every mark is remotely similar to the mark that is the subject of the search. An appropriate search strategy will consider the nature of the mark, the nature of the goods/services the mark covers, the timeline for bringing the mark to commerce, and the applicant’s allocation of resources.

After all the prerequisites have been met, the next step in the Trademark registration process would be the filing of the Trademark application. The application is submitted online to the relevant intellectual property office, requesting an examination and approval of the mark. It includes crucial details such as the applicant’s information, a representation of the mark, and the specified class of goods or services for which it is intended to be used. Accuracy and completeness are paramount at this stage to ensure a smooth progression through the Trademark registration process step by step.

Once the application is filed, the process for Trademark registration necessitates the payment of requisite fees. These fees cover the costs associated with processing the application, conducting examinations, and other administrative functions. Applicants need to be aware of the fee structure applicable to them, based on the type of entity and the number of classes their Trademark is being registered in. Fee with respect to particular forms can be checked from https://ipindia.gov.in/form-and-fees-tm.htm

This stage involves a meticulous review of the proposed Trademark by the intellectual property office to assess its uniqueness and availability. The objective is to ensure that the mark meets the criteria for distinctiveness, non-descriptiveness, and adherence to other legal formalities. An examination report is prepared by the Examiner, highlighting any objections that may cause hindrance in the Trademark registration process. Majorly the trademark objections are in class 9 and class 11 or rule 25 if user date is earlier to application date.

Addressing objections raised during the examination stage is extremely crucial to take the Trademark registration process further. The applicant must respond to the objections meticulously within 30 days from the date on which they were raised. If the examiner is satisfied, they will proceed to the next stage. However, if unsatisfied, the examiner may summon a show cause hearing to resolve the issue.

Upon settlement of the objections, the approved Trademark application moves to the publication stage. The mark is published in the Trademark journal, a publicly accessible document inviting potential third-party oppositions. Third-party oppositions may arrive on grounds like the similarity of the mark with other marks. These need to be settled before the application is finally processed for Trademark Registration.

In instances where third parties raise objections or oppositions during the specified period, resolution becomes a critical aspect of the Trademark registration process. This step involves negotiation, settlement, or legal proceedings to address the concerns raised by opposing parties. Only after a successful resolution of all public oppositions, the department will consider proceeding with the application.

The last milestone of the Trademark registration process step by step is achieved when the applicant is granted a Trademark Certificate. This official document serves as tangible proof of the exclusive rights conferred to him. Once issued, it remains valid for 10 years from the date of application. Throughout this period, the Trademark remains protected against unauthorised use and plagiarism.

Trademark protection is not perpetual, Trademark owners must proactively renew their Trademarks to maintain their rights. Failure to renew before the expiry may result in the loss of its protection. The renewal process is almost similar to the original registration process. Moreover, there is no restriction on the number of times a Trademark can be renewed.

No use of mark prior to registration is not mandatory in India. Trademark that are proposed to be used can also be registered in India. But it is always suggestable to mention the user detail.

A mark shall not be registered as a Trademark if-

1. the mark is likely to deceive the public or cause confusion;
2. the matter contained or comprised in the mark is likely to hurt religious susceptibilities of any class or section of the citizens of India;
3. it contains or comprises of scandalous or obscene matter;
4. its use is prohibited under the Emblems and Names Act, 1950.

The government fees for Trademark registrations are as under:

• Where applicant is Individual/Startup/Small Enterprise the fees for E-Filing would be 4500 whereas for the physical filing fees would be 5000.
• In all other cases fees for E-Filing would be 9000 and for physical filing fees would be 10000

Documents required for trademark registration are as follows:

1. Name of owner of trademark;
2. Address of owner of trademark;
3. Nature of business – name of products or services specifically;
4. Trademark/ Logo;
5. Using date of trademark;
6. Mail ID;
7. Mobile Number.
8. MSME/ Startup registration certificate

Yes, The TM symbol is used when an application for Trademark is made with the Trademark registry. The TM symbol is thus used to indicate the fact that a Trademark application exists with respect to the Trademark and serves as a warning for infringers and counter-fitters.

Trademark Registration is a lengthy process and it takes around 18-24 months to obtain registration in a straight-forward case, without any objections or oppositions. However, the Trademark application number is usually issued within one or 2 days after filing.

Trademark registration is a long process which has to pass through various steps. Trademark watch provides the services of keeping a close watch at the each stage of the Trademark registration process and even after that and do the needful as and when needed to prevent the client from missing out on any important stage which can affect the registration of the Trademark.

To understand the remedies for the refusal of the application, it is essential to know the grounds on which the Trade Mark Application was rejected. For this purpose, the applicant should request a copy of the grounds for refusal. Once the copy is received, within 30 days of the refusal notice, the applicant can file a review petition.

Section 127 (C) of the Trade Marks Act 1999 empowers the Registrar, on an application made in the prescribed manner, to review their own decision regarding the registration. This review application must be filed in form TM-M within one month from the date of the application or within an additional one month as allowed by the Registry. The review application should be accompanied by a statement setting out the grounds for the review.

The review of the decision is generally considered by the same officer who passed the initial decision. After giving the parties an opportunity for a hearing, the Registrar will then dispose of the review petition, either allowing the Trademark to be advertised in the journal or maintaining the refusal. If the applicant is still unsatisfied with the outcome, they can appeal to the Intellectual Property Division of the High Court.

A Trademark has to have one basic feature that is it should be unique and create a brand identity for a product. So if a Trademark is such that does not create any brand for a product can’t be Trademarked.

In general,

• Generic words can’t be Trademarked. For example you can’t Trademark the words like TV, Fridge, scooter, car etc.
• The names of the cities and countries cannot be Trademarked.
• The names of Gods and Goddesses and the names of religious books cannot be Trademarked. For example you can’t Trademark Lord Ram or Ramayana
• Surnames cannot be Trademarked under normal circumstances. For Example you can’t Trademark Sharma
• Names of Constitutional Posts or Government posts can’t be Trademarked. For examples you can’t Trademark Prime Minister of India
• Words which denote illegal or Immoral acts can’t be Trademarked. For example you can’t Trademark *Let’s cheat or Let’s grope
• Words which are prohibited under names and emblems act can’t be Trademarked. For example, you can’t Trademark the official sign of Government of India.

Following is the step-wise guide for Trademark Registration in India:

• Step 1: Trade Mark Search:

This step is of utmost importance before filing a Trademark application, as it aids the owner in determining whether their Trademark is unique and distinctive and whether there exists another Trademark that closely resembles the owner’s mark. Merely having a unique brand name in mind does not guarantee that it is not already registered by another business, making the Trademark search an essential and unavoidable process. This search can be conducted either through the Trademark Office or via the Online Portal. On the Online Portal, you can select a specific class and search the database accordingly.

• Step 2: Prerequisite Documents: The following are the documents required during Trademark Registration:

1. Name of owner of trademark;
2. Address of owner of trademark;
3. Nature of business – name of products or services specifically;
4. Trademark/ Logo;
5. Using date of trademark;
6. Mail ID;
7. Mobile Number.
8. MSME/ Startup registration certificate 

• Step 3: Examination of Trade Mark Application: After the submission of the Trademark Application, the Examiner must submit an examination report which may or may not include any objections that can be absolute, relative or procedural.
• Step 4: Respond to the Examination Report: Within 30 days of receiving the examination report, you must file a reply to assert the arguments in favor of the application and address any objections that may have been raised. This period provides ample opportunity to address objections and resolve any concerns raised during the examination process. If the application is not yet accepted after fulfilling the conditions, then a hearing can be requested. If the examiner believes that the Trademark should be registered then, it will be published.
• Step 5: Acceptance and Publication: After a thorough examination, the Trade Mark is published in the Indian Trade Mark journal. The purpose of this advertisement and publication is to invite objections from anyone who may oppose the registration of the Trade Mark, providing a fair opportunity for such opposition. In case of opposition, the applicant is required to present a case justifying why the registration should be granted to them. Upon receiving an opposition, a counter-statement must be filed within two months using Form TM-O.
• In the event of a refusal, the examiner declines to register the Trade Mark.

                                                                OR

• If the Trade Mark Registrar approves the application without any objections, a Trade Mark Registration Certificate will be issued, bearing the Trade Mark Registry Seal

Before making application for registering the mark, one must check the name availability.

Following are the steps to check it:

Step1 : Go to the official website of Trademark registry for Public Search from the link given herewith: 

https://tmrsearch.ipindia.gov.in/tmrpublicsearch/

Step 2: Choose the search type “Wordmark”

Step3: Choose the search parameter, such as “starts with, “contains, or “phonetically similar;

Step4: Enter the proposed trademark name in the search box;

Step5: Enter the relevant class you want to applied for;

Step6: Click on the search button;

The search results will show you that the proposed mark you want to registered is whether already registered by someone else or not, or if yes then the possibility of getting the same mark is less because it will likely to conflict with already registered mark. One shall use all possible permutation and combination while making search for best results.

Any person can check the status of Application from the site of Trademark Registry, you just need the Application Number for the same.

Following are the steps for checking the status of Application:

Step1: Go to the Official site of Trademark Registry from the link given herewith: 

https://tmrsearch.ipindia.gov.in/eregister/

Step2: Click on the Trademark Application /Registered Mark option;

Step3: Select the National/ IRDI Number;

Step4: Enter the Trademark Application number and captcha code and click on the view button;

Step5: Click on the Trademark number;

Step6: On the top left side, you can see the status of your application.

Goods and services are classified from Class 1 to 45 for Trademark. You can check within which class your Goods or Services falls  from the website given herewith:

https://euipo.europa.eu/ec2/

Following are the steps to check it:

Step 1. Go to the website as above mentioned;

Step 2. Once you reached the website, Click on the “Classification Resources” tab which is shown on the top interface of the page;

Step 3. After that, click on the “Nice Class Headings”

Step 4. Class wise list of terms will be displayed on the page;

Step 5. Enter the name of Goods or Services in the “Search bar” you want to search;

Step 6. After that you will get the List of terms under which your searched item falls.

In the initial stage while examining the application if applicant defaults in filing proper documents or essential information, registry sends a notice regarding this and the application made by the applicant faces the formality check fail.

When after examination, the registry establishes that the applicant has passed all the basic checks, the trademark status shows ‘formalities check pass.’ The trademark registry checks basic requirements, such as uploading the POA, translation, and applicant details.

The following are some reasons behind an application faces the Formality check fail:

• Incorrect Class– Trademark is divided into 45 classes. The appropriate class need to be selected after checking the list of items a particular class covered. If the class is not correct, your applicaton will not proceed futher and marked as “Formality check fail” in Trademark by the department.
• Improper Information- The name, address, state and other details must be as per power of attorney; category of mark, class, product description, agent registration number, etc. all the relevant information must be filled.
• Improper Documents- Power of Attorney, User Affidavit must be properly notarized, If applicant opt for MSME/ Start-up benefit in Trademark, then in such a case MSME/ Start-up Registration certificate must be attached with the application. Also on POA & User Affidavit appropriate amount of stamp duty shall be made as per Schedule I of Stamp act of respective state.
• Inappropriate goods or services description- Description must be provided accordingly for the goods or services applicant is dealing with.

MIS F is reply to formality check.  Applicant can file a Formality check from the tab “miscellaneous reply” by selecting “reply to formality check (MIS-F)” and providing an application number.

If your application status is showing “Marked for Exam”, it shows that your application will be revieved by the examiner to determine its registrability. Examiner will check whether the application made by you qualifies for registration or not. Trademark examiner will also check the documents and informations submitted by you.

When Trademark examiner serves an Examination report containing objection under Section 9 (absolute grounds) and Section 11(relative grounds), the trademark application status shows Objected with an alert- awaiting for reply to examination report.

If the examiner examines the trademark application and, after hearing the applicant’s response to the objection, he/she refuses the application, the trademark status shows ‘refused.’

The trademark status can also show ‘refused’ in cases when a third party is able to oppose the trademark application successfully.

The following are the reasons for refusal of Trademark Registration:

• Lack of Distinctiveness;
• Similarity to existing Trademarks;
• Deceptive or Misleading in nature;
• Improper Classification;
• Lack of proper description of Goods or Services;
• Misrepresentation in respect to false statements of ownership, user detail of trademark;
• Similarity to well-known Trademarks;
• Offensive or Immoral Trademarks;
• Failure to respond to Trademark registry actions;
• Infringement of existing Trademarks;
• Misleading Trademarks which are likely to deceive people;
• Lack of evidence of use;

If the registration is refused the applicant has the final option of appealing to the Intellectual Property Appellate Board (hereinafter referred to as IPAB). An appeal to the IPAB must be filed within three months of the date of issuance of the refusal order by the registrar.

If any trademark is added to the trademarks journal and advertised there, the status of the trademark application shows ‘Advertised before accepted.’ Any third party can oppose such trademark application within 4 months of being advertised.

If no opposition is lodged against the trademark, the trademarks officer has to accept the trademark application before issuing the certificate. Once the certificate is issued, the status changes to ‘advertised and accepted’ and later changes to ‘registered.’

The simple motive behind the publication of Trademark in the TM Journal is to give general public a window of 4 months to raise their objection on the applied Trademark if the said mark is likely to create conflicts or unnecessary trouble to their already applied/ registered marks.

The Indian Trademarks Office publishes the Trademark Journal of India and contains information on trademarks registered or applied in India. It is a public record that anybody can occasionally inspect and raise public opposition if needed.

When a third party opposes the application within 4 months from the advertisement date, then the trademark application status shows as ‘opposed.’ A third party is most likely to file an opposition only if the trademark application is not  similar to another trademark already in use.

The trademark application status shows as “Abandoned” when the applicant failed to respond within the stipulated time period prescribed under the act.

The following are some reasons, why an application is abandoned:

• No response has been filed to an examination report within the stipulated period of one month from receipt of examination report;
• If the applicant forgets to file a counter statement within 2 months of receiving the notice of opposition, the trademark status will change to ‘abandoned;
• Show-cause hearing has not been attended when the hearing was scheduled;

A trademark application requires a minimum of 18-24 months to get approval if the application is accepted without any opposition or objection. However, if any opposition or objection is raised against the application, it might take more than 24 months to approve your trademark application . However, the trademark application number is usually issued within one or 2 days after filing.

Even though a TM can be used without filing application for registration but using it without registering will not provide legal protection against its infringement, and your competitors can still copy your logo.

Trademark examiner will reject the application if the class you have applied and the description is not matching or can issue formality check fail notice. Trademarks are divided into different classes, and if your trademark is not in the appropriate class, it may be rejected.

The best solution to avoid the unnecessary delaying in registration is to consult with a trademark attorney to ensure that your application is filed in the appropriate class with appropriate goods or services description.

To register a Trademark, owner needs to go through the following steps:

1. Trademark Search;
2. Filing an Application;
3. Examination Process;
4. Post Examination Procedures;
5. Publication of the Trademark Application;
6. Notice of Opposition;
7. Filing of Counter Statement against Notice of Opposition;
8. Registration;

The response to office objections mentioned in the examination report, should be submitted by the applicant or applicant’s authorised agent concerned, as the Reply to Examination Report.

In case the applicant/applicant’s authorised agent has a level III digital signature he may send the Reply to Examination Report online through the gateway provided at the home page of the office website www.ipindia.nic.in

The Reply to Examination Report may also be submitted at the Head Office/appropriate office of the Trade Marks Registry, personally or by post.

 Any affidavit and supporting documents may also be submitted along with the Reply to Examination Report

In case of objections as to formality requirement(s), the applicant should comply the requirements as desired by the office. The applicant may however submit to establish that as per Trade Marks Act and Rules the formality requirement(s) called by the office are not necessary. For example if the office may has called for consent of the person whose portrait appears on the trademark, the applicant may state that portrait appearing on the trademark is not of a particular person, but it is general picture of a man or woman.

In case of objection to the effect that goods or services mentioned in the application do not fall in the class mentioned in the application, the applicant may file a request for amendment of the application by correcting the class; the applicant may however submit that as per classification of goods or services published by the Registrar, goods or services have been rightly classified. In case of objection to the effect that some goods or services mentioned in the application do not fall in the class, the applicant may file a request for amendment of the application by deleting items that do not fall in the relevant class. the applicant may however submit that as per classification of goods or services published by the Registrar, all items fall in the class mentioned in the application.

In case of objections on relative grounds of refusal because of identical or similar trademarks in respect of similar goods or services, existing on records, the applicant may submit to the effect that trademarks cited as conflicting marks in the examination report are different than the applicant’s trademark; or goods or services mentioned in the application are different than those covered in marks cited as conflicting in the examination report. The applicant may also produce consent/No objection from the proprietor of marks cited as conflicting in the examination report

In case the office objections to acceptance of the application for registration cannot be waived even after considering the applicant’s response to examination report, the matter is set down for hearing through the system.

This hearing commonly known as show cause hearing is scheduled and conducted at the appropriate office of the Trade Marks Registry.

A hearing notice shall be sent to the applicant/agent/attorney concerned, intimating him about the Application No. & Date of Hearing. The hearing notice shall be sent approximately 15 days before the date of hearing.

It is shown when Trademark registry had sent a Notice for Hearing and the hearing date is scheduled. The Hearing Officer shall patiently hear submissions of the applicant or applicant’s authorised agent concerned and peruse all other documents submitted or referred to during the course of hearing.

Section 9 describes “absolute grounds for refusal of trademarks” which are not prima facie “capable of distinguishing” the goods/services of one person from those of another person are devoid of distinctive character.

In order to overcome office objections raised under Section 9(1) the applicant may submit the mark has acquired a distinctive character by virtue of its prior use.

The use of trademark must be established by adequate evidence. Under section 129 of the Act, ‘in any proceeding before the Registrar, evidence shall be given by affidavit. But the Registrar may, if he thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit’.

Section 11 sets out “relative grounds for refusal”’ by reason of conflict with prior trademarks and well-known marks, however under Section 12 a mark could be registered on the basis of “honest concurrent use” when supported by evidence to that effect.

Objections raised under Section 11 can be overcome by the applicant by :

• Removing the conflicting goods/services by way of amendment;
• obtaining consent from the proprietor of the cited mark(s) under Section 11(4);
• filing evidence to establish honest concurrent use to secure registration under section 12;
• By securing rectification of register excluding such goods/service of the same description from the specification of the cited mark, under section 57;

If the applicant or his authorized agent is not prepared or is unable to appear for hearing and files an application for adjournment of hearing, the Hearing officer may allow the request for adjournment and then a next date will be fixed for hearing. However no adjournment will be given on frivolous grounds. Hearings may also be adjourned and may be fixed on another date due to administrative reasons. In all adjournments of hearing, a fresh hearing notice fixing hearing on another date shall be issued to the applicant/agent/attorney concerned.

After duly considering the evidence of use of the mark, the distinctive nature of the mark, existence of earlier similar marks, if any, the nature of goods/services covered under the application and other relevant facts, the Hearing Officer may accept the application for registration or he may accept the application with condition as to use of the trademark or limitation as to area of trade, as he thinks fit; or he may propose the application to be advertised before acceptance or may refuse to register after giving reasons of refusal.

During the course of hearing the applicant may desire to withdraw the application, or the authorised agent of the applicant may desire to withdraw the application on  behalf of the applicant. In such circumstances, the Hearing officer will require the withdrawal letter to be submitted in writing. The withdrawal letter will be uploaded in the system.

The genuineness of withdrawal letter as well as the authority of the person withdrawing the application shall be verified by the Hearing Officer on the basis of records of the application. If withdrawal of application is done by the competent person, the Hearing officer concerned will treat the application as withdrawn, enter his remarks in the system to this effect and update the status of application accordingly.

If the Hearing Officer is not convinced with the materials produced & submissions made in the course of hearing and he may refuse the application for registration after giving appropriate reasons.

A communication letter shall be generated through the system, in respect of all types of orders passed by the Hearing Officer. The said letter shall be sent to the applicant/applicant’s authorised agent concerned, latest within one week of the order.

The trademark journal contains –

• Public Notices and notifications, if any, issued by the office;
• Trade Mark applications which are accepted or ordered to be advertised before acceptance;
• Re -advertisements of applications, if ordered by any competent officer;
• Corrigenda or further notification in respect of earlier published application;
• List of trademarks, which are registered, renewed, removed, application withdrawn, etc;
• Post registration changes including Assignments/transmission recorded;
• International non -proprietary names as published by WHO from time to time;
• Other information as considered necessary to be published from time to time.

MIS-R (Miscellaneous R) is used to file the objection reply. Following are the documents attached as reply:

• A copy of examination report reply with appropriate submissions;
• A power of attorney that the applicant duly signs;
• Documented proof against the objection. This can be anything like affidavit, permission, etc.

There is no fee associated with the reply. However, as you will need the assistance of a professional for this process, they will charge you a nominal fee. Before the submission, you, as a client, would check if the reply is correct.

Once the reply has been submitted, there is a waiting time of 15 days. After this time, you will get either a positive or negative response. A positive reaction will advertise your trademark in the journal. A negative one will prompt you to appear in a trademark hearing.

The Trade Marks Act, 1999, provides for the renewal of a registered trademark for a period of ten years from the date of expiration of the original registration or the last renewal. To initiate the renewal process, the registered proprietor must apply to the Registrar of Trademark in FORM TM-R along the fees of INR 9,000 (in case of e-filing) , within one year before the expiration of last registration of the Trademark. Upon receiving the application and payment of the prescribed fee, the Registrar will renew the registration for another ten-year term.

There is no limit on the number of times you can renew your Trademark. You must remember that with every renewal, validity is extended for another ten years.

Following are the easy steps for renewal of Trademark:

Step 1: Filing of Application for Trademark Renewal;

Step 2: Verification and Examination;

Step 3: Publication in Trademark Journal;

Step 4: Issuance of Renewal Certificate;

Submit a renewal application to the Trademark Registry in Form TM-R. Include the following details:

• Trademark registration number;
• Current status of the trademark;
• Applicant’s contact information;

The Registry will verify the application and examine the trademark for any potential conflicts. It will also assess the renewal eligibility based on the validity period of the trademark and compliance with renewal requirements. If a conflict is found, the registry will raise objections and seek clarifications from the applicant. The clarification must be filed within the prescribed time frame.

No the renewal application is not published in TM Journal for opposition.

Upon successful completion of the publication period and resolution of any opposition or if no opposition arise, then the Registry will issue the Trademark Renewal Certificate. This certificate confirms the renewed validity of your trademark for the next 10 years.

The application for renewal may be made by a person who is proprietor of the registered Trademark or by a person who is his duly authorized agent.

If someone else is representing the trademark owner, a Power of Attorney is necessary.

The application for Trademark Renewal must be filed before its expiry.

You may be able to file the trademark renewal application one year prior to the expiry of its registration.

 In case the registration of the trademark has lapsed as it was not renewed before its expiry, it can be renewed within six months after its expiry with an additional surcharge in government fee of trademark renewal.

If the trademark application is not renewed, before its expiry or with additional fee within six months after the expiry date, then the trademark registration gets cancelled. A cancelled trademark can be restored if an application is filed within six months of cancellation.

The government fee for Trademark Renewal is Rs 10,000 (for offline filing) and Rs.9,000 for (for online filing) if the application for the renewal is filed before the expiry of the trademark. If the application is filed within 6 months after the expiry, the applicable surcharge over and above the renewal fees would be Rs.4,500 per class (for e-filing) and Rs.5,000 per class (for offline filing).

Yes, we can file a single application under multiple classes mentioning the proposed class and their description in the application. The procedure for filing a multiclass trademark application is similar to the procedure of filing an application under a single class. It should be noted that the government fee for filing a multiclass application is to be paid per class.

A person (including a legal entity):

• who is a citizen of India, or domiciled in India, or
• who has a real and effective industrial or commercial establishment in India, and
• who has got a registration of a trademark or whose application for registration of trademark is pending in Indian office ,

may make application for international registration of his trademark.

You can file international application of Trademark either offline (physical submissions) or through online mode from the site given herewith https://www.ipindia.gov.in/.

You must already have – or have applied for – a national trademark registration (known as your “basic mark”) through your home IP Office (“Office of origin”) before you can file an application for an international trademark registration.

Form MM-2E is used to file application for international registration of trademark under the Madrid System.

Application must be filed through the gateway for online filing of International applications made available at the official website https://www.ipindia.gov.in/

The Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. File a single international trademark application and pay one set of fees to apply for protection in up to 130 countries. Modify, renew or expand your global trademark portfolio through one centralized system.

Having regard to the practical difficulty in filing applications for registration of trademark in each country, with different laws, languages and fee payment in different currencies, an international agreement gave birth to the Madrid Protocol administered by a specialised agency of the United Nations, called the World Intellectual Property Organisation (WIPO). This protocol facilitates international registration of trademark and provides a means for securing protection to such marks in one or more member countries under the Madrid System.

You can use the Madrid System if you are a national of or have a domicile or business in any of the 130 countries covered by the Madrid System’s https://www.wipo.int/export/sites/www/treaties/en/docs/pdf/madrid_marks.pdf

The Madrid Union is made up of Contracting Parties to the Madrid Protocol.

The office of the Contracting Party in which you apply for or register your basic mark is referred to as the “Office of Origin“. In your international application, you can select Contracting Parties in which you would like to protect your mark, or you can expand the geographical scope of your international registration under the Madrid System at a later time.

Yes, Trademark registration is subjected to territory where it gets registered. When a trademark is registered in India, the registration provides protection only within India. A trademark owner needs to obtain international trademark protection for its protection outside India. When trademark owners have national registration/application is filed for such registration of Trademark, they can apply the mark outside India and ensure that third parties do not apply for the same trademark in the global market.

The Trademarks Act, 1999 was amended to comply with the Madrid system after India became a member of the Madrid Protocol. On 21 September 2010, the Trademarks (Amendment) Act, 2010 was passed, and the international trademark registration under the Madrid Protocol was introduced in India.

With the expansion of International trade and commerce, the need to obtain protection of trademark becomes very important for commercial enterprises to register not only in one’s own home country but also in other countries. 

Basic application means an application filed under section 18 of Trademark Act, 1999 for the registration of Trademark in one’s own country which is used as a basic necessity for applying for an international trademark registration.

Basic registration means the registration granted under section 23 of Trademark Act, 1999 in one’s own country which will be used as a basic necessity for getting international registration of trademark.

Following are the requirements to be fulfilled before making application for international trademark registration:

• The applicant should be domiciled in India, be an Indian national or has an effective and real business or commercial establishment in India.
• The applicant must have a trademark registered with the Indian Trademarks Registry or must have applied for a national trademark application in India. The national trademark application/registration acts as the basis of the international application.
• The applicant should apply for an international application for the same trademark for which the national trademark registration is obtained or mentioned in the national trademark application.
• The list of goods and services in the international application should be the same as on the national trademark registration or application.
• The applicant must choose one or more Madrid Protocol member countries where they wants protection in the international application.

Any person can make application for registration of trademark internationally only if he had applied for registration or is registered owner of the trademark in their own country. After that, applicant or the registered owner may make an international application in the form prescribed by the common regulations for international registration of that trademark.

Form MM-2E is used to file application for international registration of trademark under the Madrid System. The applicant must specify all the countries in which they seek registration which are known as designated contracting parties.

The term “Contracting Party” denotes any country as well as any inter-governmental organization (the European Union, for instance) which is party to the Madrid Protocol.

The Office of Origin is the office of the Contracting Party through which the applicant derives entitlement to file the international application. It is the Office in which the basic application will have been filed or the basic registration will have been recorded.

Yes application made by the applicant for international registration be first checked by the Trademark registry. If the international application does not meet the requirements, the registrar shall not forward it to the International Bureau. A notice to comply with the requirements shall be sent to the applicant by the registry of trademark. Application will be forwarded to WIPO only after such compliances have been made within the period specified in the notice.

The Registrar of Trademarks (office of origin) will process and verify the application. After verification, the Registrar will forward the international application within the time period of two months from the date of receipt of the said application to the International bureau for registration, which scrutinizes International application received from the office of origin.

[International Bureau means office of World Intellectual Property Organisation (WIPO)].

The applicant must file the international trademark application electronically through the official IP India website and pay the handling fee. The site link is given herewith for your reference. https://ipindiaonline.gov.in/trademarkefiling/user/frmLoginNew.aspx

While scrutinizing the application by the International Bureau, if they discovered any irregularities in the application, the comments made by them will be communicated to the office of origin and the applicant’s authorised representative, who must rectify the irregularities within the prescribed period.

After completion of all the formalities, the trademark is registered in the International register. The trademark will be published in the WIPO Gazette of International Marks, and Certificate of registration will be issued.

The International bureau will subsequently notifies the designated contracting party about the International registration.

No, there is no need to file multiple application for registration of trademark, The Madrid System allows for registration in multiple jurisdiction without the need for multiple individual applications.

Applicant needs to only specify the countries where they seek registration.

Once the application is filed, the international bureau of WIPO reviews it to ensure that it complies with the Madrid System’s requirements. If the application is approved, the international bureau forwards it to the national trademark office for examination and registration.

The national offices have upto 18 months to decide whether to approve or reject trademark registration. If the trademark is approved, it is registered in each country where protection is sought.

The applicant must do a Trademark search before applying for international trademark registration.The applicant can conduct a trademark search on the WIPO’s Global Brand Database to determine if any similar or identical registered trademark exists. Website link is given herewith for your reference. https://www.wipo.int/reference/en/branddb/

The applicant must ensure that no similar or identical registered trademark exists in any of the Madrid Protocol countries where he/she is planning to apply for trademark registration. If a similar or identical trademark exists, the application will be rejected.

The WIPO will issue a notification regarding the international trademark application to each Madrid Protocol member country where the applicant chooses to obtain registration. The member countries will examine the international registration application as per the trademark regulations and rules applicable to them.

The member countries will submit the examination report and notify the acceptance or refusal of the application to the WIPO within 12 to 18 months of receipt of trademark registration application.

A handling fee shall be payable to the registrar for certification and transmittal of international application to the International Bureau and fees shall be paid in Indian rupee electronically along with the application.

The international registration of trademark at the International Bureau shall be valid for a period of ten years and may be renewable  for further ten years upon payment of the required fees to the WIPO.

An international registration remains dependent on the mark registered or applied for in the Office of origin, for a period of five years from the date of its registration.

If the basic registration cease to have effect or the basic application is refused or withdrawn or treated as abandoned within the five-year period, the international registration will no longer be protected.

The list of members can be found at –

https://www.wipo.int/export/sites/www/treaties/en/docs/pdf/madrid_marks.pdf

The list of members is also available on Form MM 2E, the application for international registration of mark.

The following is the procedure to file an application for international registration of trademark:

• Application must be filed only through the gateway for on line filing of International applications made available at the official website [email protected],
• The Trade Marks Registry (TMR) verifies the eligibility of the applicant and contents of the International Application vis-à-vis basic registration/application;
• When the International Application is not proper, the TMR sends a deficiency letter to the email of the applicant. The applicant shall prepare a reply to the deficiency letter and upload it along with supporting documents, if any, through the gateway;
• When the International Application is proper the TMR certifies and transmits such applications to the International Bureau of WIPO;
• The fee for international application and the individual fee/Complementary fee for designated countries wherever applicable is to be paid directly to the International Bureau of the WIPO, in Swiss Francs;
• The IB of WIPO examines such applications for formalities;
• In case of any irregularity (regarding the classification of goods or services, for instance) is found, the IB communicates such irregularities to the TMR as well as to the applicant;
• If the International Application is found to be proper by the IB of the WIPO. It is registered with the IB, published in the WIPO gazette and transmitted to the offices of the designated Contracting Parties.

On April 8th of 2013, the Hon’ble Minister of Commerce & Industry, the Government of India, deposited the instrument of accession to the Madrid Protocol, with the Director General of the WIPO and accordingly, the provisions of international registration under the Madrid Protocol came into effect in India since July 8th of 2013.

Provisional refusal means a declaration by the Office of origin, outlining the grounds on the basis of which protection cannot be granted to the international application made by the applicant.

Some common grounds for provisional refusal in India include conflicts with existing trademark registrations or applications, descriptive or non-distinctive trademarks, and marks that are against public policy or morality.

When the Indian trademark office issues a provisional refusal, it provides a detailed explanation of the grounds for refusal and a deadline for the applicant to respond.

A reply to provisional refusal is to be filed within 30 days from the date of receipt of provisional refusal. An extension of one month can be sought for replying to the provisional refusal. The reply must be filed by the authorised representative competent to practice before Indian TM Registry or by Applicant if it is having an office/address for service in India.

If you receive a provisional refusal for your trademark application in India, you have the right to respond to the refusal. Here are the steps you should follow to respond to a provisional refusal in India:

• Review the grounds for refusal: Carefully review the provisional refusal notice to understand the reasons for the refusal. This will help you to prepare a well-crafted response.

• Analyse the refusal: Based on the grounds for refusal, analyse your trademark application and assess whether there are any issues that need to be addressed. You may need to provide additional evidence, arguments or amendments to your application to overcome the grounds for refusal.

• Prepare a response: Based on your analysis, prepare a detailed response that addresses the specific issues raised in the provisional refusal. Your response should be in writing and include all the necessary evidence and arguments to support your trademark application.

• Submit your response: Submit your response to the Indian Trademark Office within the deadline specified in the provisional refusal notice. Failure to respond within the deadline will result in the abandonment of your trademark application.

• Attend a hearing, if required: In some cases, the Indian Trademark Office may require a hearing to be held to discuss the issues raised in the provisional refusal. If a hearing is required, attend the hearing and present your case.

The basic fee for filing international application for registration of trademark, which is consists of either 653 Swiss francs for a mark in black and white, or 903 Swiss francs for a mark in colour. This fee is for payment to the International Bureau.

 It is recommended that the applicant use the electronic Fee Calculator, which is available on the Madrid system website at the following address:

http://www.wipo.int/madrid/en/fees/calculator.jsp

You can renew your international trademark registration at the earliest six months before the ten-year term of protection expires, or within the six-month grace period following its expiry. Important! Surcharges apply if you renew during the grace period.

The applicant may directly pay the fees to the International Bureau in Swiss France or through the trademark registry.

If he opt to pay the fee directly to the International Bureau then in such scenario, the applicant had to firstly notify the Director General for the same.

The international application may be in English, French or Spanish, according to what is prescribed by the Office of origin.

The Office of origin is entitled to restrict the choice of the applicant to just one language, or to two languages, or indeed, the Office may permit the applicant to choose between any of the three languages.

Thus, the applicant should ascertain from the Office of origin which language or languages must or may be utilize, in advance of the filing of the application through that Office.

Yes, you can mention an additional address for correspondence. Where the applicant requires that that communications be sent to an address other than that as mentioned in the application form, field of “Address for correspondence” is filled.

Yes, two or more applicants may jointly file a single international application, provided that the basic application or the basic registration is jointly owned by them.

Where there is more than one applicant, the name and address of each applicant should be given, if necessary using a continuation sheet.

The following documents are required for making an international application of trademark:

• Identity proof;
• Address proof;
• Business Registration( CIN, Partnership, MSME);
• International Application Form MM-2E;
• Copy of Trademark- Word or Logo;
• Trademark Registration Certificate/Application Master Page proof (if application is pending) in Domestic country.

You need to keep the following things in mind when applying for International Trademark Registration-

• Ensure that the trademark is not yet registered in the countries you are seeking registration.
• Make an International trademark search on WIPO’s broad database to check all registered trademarks. Search can be done from the link attach herewith https://branddb.wipo.int/
• The search can be performed using the text, image or class of goods or services.
• You must get the trademark in your home country before applying for international trademark registration.
• Your country must be a part of the Madrid System
• You can choose multiple countries when applying for international trademark registration, so decide beforehand which country you are going to apply and accordingly the fee will be applicable.

By following the below given steps you can Check Trademark Status –

Step 1: Access IP INDIA Website. 

https://tmrsearch.ipindia.gov.in/eregister/

Step 2: Select International Registration Number.

Step 3: Provide Trademark Application Number.

Step 4: View Trademark Application Information on clicking on application number reflecting as hyperlink.

 Before submitting your international application, double-check to ensure that your mark will not infringe on any existing trademark anywhere in the world. Of course, you can file without conducting the background check, doing so puts you at risk of being sued for trademark infringement.

The most reliable source of this kind of information is the global brand database of WIPO itself. You can conduct any trademark search by text or pictures and view the displayed results https://branddb.wipo.int/

International Classification of Goods and Services also known as the Nice Classification

It is updated every five years. Class 1 to 34 include goods and Class 35 to 45 embrace Services. Link is given herewith from where you can reach the Nice Classification.

https://nclpub.wipo.int/enfr/

Form MM-11 is filed for filing the application of renewal of international trademark.

You can renew your international trademark registration at the earliest six months before the ten-year term of protection expires, or within the six-month grace period following its expiry. Important! Surcharges apply if you renew during the grace period.

Trademark proprietors can transfer trademarks similarly to how they can transfer physical properties. One of the ways to transfer a trademark is through an assignment.

Assignment means transferring rights, interests, titles and benefits from one person to another. Assignment of a trademark means to transfer the owner’s right in a trademark to another person.

Here Assignment means absolute transfer.

A trademark license is a legal agreement that grants permission from the owner of a trademark (the licensor) to another party (the licensee) to use the trademark in connection with specified goods or services, according to terms and conditions outlined in the agreement. This permission allows the licensee to utilize the trademark for commercial purposes while maintaining the ownership rights with the licensor. The terms of the license typically include provisions regarding the scope of the permitted use, quality control standards, duration of the license, royalties or fees, and any limitations or restrictions on the use of the trademark.  

A trademark assignment is the transfer of an owner’s property rights in a given mark or marks. Such transfers may occur on their own or as parts of larger asset sales or purchases.

Trademark assignment agreements provide both the records of ownership & transfer and protect the rights of all parties.

As with other forms of intellectual property, a trade mark belongs to the registered owner. To assign ownership to another party, there needs to be an agreement between the current owner (the ‘assignor’) and the proposed owner (the ‘assignee’). This agreement will need to be signed by an authorised person and to be registered with registrar.

In the context of trademark assignment, an authorized person is someone who has the legal authority to act on behalf of the owner of the trademark. This authorization may be explicitly granted in writing, such as through a power of attorney or a formal resolution. An authorized person could include an attorney, an executive within the company, or another representative who is empowered to execute and manage the trademark assignment on behalf of the owner. It’s crucial to ensure that the person conducting the assignment has the proper authorization to do so.

The transferring party is called the assignor, and the receiving party is called the assignee.

Some of the benefits of Trademark Assignment are:

• The trademark assignment enables the owner of the trademark to encash the value of his brand.
• With the help of a trademark assignment, the assignee can obtain the rights of an already established brand.
• If a Trademark is registered but the owner is not able to monetize or move forward the business, he can assign the rights to another person for a good price and earn money out of his trademark, rather than having a Registered Trademark that cannot be monetized upon.
• In case of any dispute, the trademark assignment agreement would enable the assignor or the assignee to establish the legal right.

The following documents must be submitted to the registrar of trademark along with Form TM-P (Assignment of Trademark) :

• Trademark assignment deed.
• Trademark registration certificate.
• NOC from the assignor.
• Identification documents of the assignor and assignee.

The notarization of the assignment is to the benefit of the assignee. Also, notarising is important so that it is established that there is no possibility of wilful document fraud relating to the assignment. And so the assignment must be notarised on the right stamp duty. Further, the assignor must also submit an affidavit which is notarised mentioning that the trademark is truly theirs.

Licensing under trademark offers several benefits:

1. Revenue Generation: The licensor can generate additional income by charging licensing fees or receiving royalties from the licensee.
2. Brand Expansion: Licensing allows the brand to reach new markets or product categories without the need for direct investment, helping in brand diversification and market presence.
3. Risk Mitigation: Licensees bear certain business risks associated with the licensed products, reducing the overall risk for the trademark owner.
4. Brand Exposure: Licensing can increase brand visibility and exposure as the trademark is used in different contexts and markets.
5. Strategic Alliances: Licensing can facilitate strategic partnerships and alliances, fostering collaborative efforts for mutual benefit.
6. Flexibility: Trademark licensing offers flexibility for the licensor to adapt the changing market conditions or trends without direct involvement in new ventures.
7. Global Presence: Licensing enables the trademark owner to extend their brand globally through partnerships with international licensees.
8. Customer Loyalty: The availability of licensed products can enhance customer loyalty and satisfaction by offering a broader range of choices within the brand.

It’s important for licensors to carefully structure licensing agreements to protect the brand’s integrity and maintain control over its use.

Trademark licensing allows businesses to grant permissions for others to use their trademarks under specified conditions. Owners can generate additional revenue streams, enhance brand visibility and enter new markets through licensing agreements. Trademark Licensing serves several purposes:

• Economically beneficial for both the licensor and licensee;
• It helps in expanding business;
• It increase geographical reach;
• It increase the reputation of the goods or services;
• Ownership remains with the TM owner;
• Enhances brand promotion and Marketing.

The TM owner/holder/proprietor of the registered Trademark, (known as the licensor) has the authority to grant the trademark license to another party,(known as licensee). This license allows the licensee to use the trademark under certain conditions specified in the licensing agreement and mutually agreed consideration be paid by licensee to licensor.

A licensing agreement under trademark is a legal contract between the owner of a trademark (licensor) and another party (licensee) that grants permission for the license to use the trademark under specified terms and conditions. These agreements outline the scope of the license, including the permitted uses of the trademark, duration of the license, quality control measures, and any financial arrangements such as royalties or licensing fees.

In India, various types of licensing arrangements under trademarks can be established, including:

1. Exclusive License;
2. Non-Exclusive License;
3. Sole License;
4. Sub-License.

Exclusive Licensing grants exclusive rights to the licensee for the use of the trademark within a specified territory, for particular goods or services. Even the licensor is restricted from using the trademark in the designated manner. The licensor is also restricted to grant further licenses of the  same trademark. However, licensor retains the right to exclusively own the trademark.

In non-exclusive license, the licensee is just one of the users of the Trademark. The licensor retains his right to use and can grant further licenses as well to other parties. Even in this case, exclusive right to own the trademark lies with the licensor only.

It is similar to an exclusive license, but the licensor retains the right to use the trademark alongside the sole licensee. Both the licensor and the sole licensee are the only parties authorized to use the mark.

The licensor and the licensee both have the right to use and grant further licenses of the trademark to third parties ( sub-Licensee). The sub-licensee operates under the terms set by the original licensee.The Licensor, however is the sole and exclusive owner of the trademark.

Whether a licensee can sublicense the rights granted to them depends on the terms of the License agreement. It is important to review the agreement to determine if sub-licensing is allowed and under what conditions.

The royalties associated with trademark licensing depends on the specific agreement. These financial aspects are typically negotiated between the licensor and the licensee based on factors such as the scope of the License, exclusivity, market size, and the value of the trademark.

The duration or term of a Trademark License deed is determined by the parties involved and is specified in the agreement. It can vary from a few years to an indefinite period, depending on their mutual agreement.

In case of a violation, the licensor as well as the licensee can pursue legal remedies such as terminating the License agreement, seeking damages for breach of contract, or obtaining injunctive relief to prevent further unauthorized use of the trademark. The specific legal remedies will depend on the circumstances and the provisions outlined in the agreement.

The granting of the TM License is not considered as sale. Licensing only transfers the right to use the trademark while the ownership of the trademark rests with the proprietor himself. The rights granted are limited rights with respect to time and can range from right to uses the trademark, sell the products etc. The TM License can be an exclusive or non – exclusive one.

Step1When it is proposed that a person (Licensee) should be registered as a registered user of a trade mark, the registered proprietor (owner of trademark) and the proposed registered user shall jointly apply in writing to the Registrar in Form TM-U , and every such application shall be accompanied by—

a. the agreement in writing or a duly authenticated copy thereof, entered into between the registered proprietor and the proposed registered user with respect to the permitted use of the trade mark;

b. an affidavit made by the registered proprietor or by some person authorised to the satisfaction of the Registrar to act on his behalf,—

1. Giving particulars of relationship between the registered proprietor and the proposed registered user including showing degree of control by the proprietor over the permitted use over the trademark.
2. stating the goods or services in respect of which registration is proposed;3.
3. stating the conditions or restrictions, if any, proposed with respect to the characteristics of the goods or services, to the mode or place of permitted use, or to any other matter;
4. stating whether the permitted use is to be for a period or without limit of period, and, if for a period, the duration thereof; and

c. such further documents or other evidence as may be required by the Registrar.

          Step 2 When the above requirements has been complied with, the Registrar, if satisfied with the submissions shall register the proposed registered user in respect of the goods or services. 

          Step 3 The Registrar will publish it in the Journal and send intimation to both the trademark owner and the other registered users of the same trademark. In case, the Registrar is not satisfied with the contents of the application, a hearing can be appointed where the parties can together correct the deficiencies.

The application for registration of trademark license shall be made within 6 months from the date of formation of the agreement between the parties. The Trademark Office (TMO) will then register the user if it finds everything satisfactory. The user will then become a “Registered User” of the trademark.

No. the Licensor does not lose its exclusive right as the owner to the registered trademark when the Licensor enters into a Licensing Agreement as the Licensor only grants the Licensee the right to use its registered trademark, not transferring its exclusive trademark right to the Licensee under a Licensing Agreement.

The term assignment means to transfer all the rights and title of the said property to the other person. Assignment involves aabsolute transfer and does not allow the holder to keep back anything. The person assigning is called the Assignor and the person to whom the assignment is done is called the Assignee.

The word License means to authorize or permit someone to do something. It contains a permission which may be limited by number of uses, or territory where to use, or purpose for which it is to be used, or even the period for which it may be used.

For both licensing and assignment, there is a need to have an agreement between the parties. The Licensing Agreement is between the licensor and licensee while the Assignment deed is between the assignor and the assignee.

There are 4 types of assignments:

1. Complete Assignment;
2. Partial Assignment;
3. Assignment with Goodwill of Business;
4. Assignment without the Goodwill of Business;

In this case, all the rights that are vested in the registered trademark are assigned to a third party. The assignee then enjoys all the rights that the original trademark owner had. The assignee would then be the sole owner of the trademark having rights to assign, trade, and market it and also to stop others from using it without authorisation.

The trademark proprietor assigns the trademark to another person with respect to only specific services or goods. The transfer of ownership in the trademark is restricted to specific services or products.

When an assignment is made with goodwill, the rights and value associated with the trademark are given for using the mark for the products and services already being sold by the assignor.

The trademark proprietor assigns to the assignee rights and entitlements in a trademark with respect to the products or services that are not in use. The assignor restricts the transfer of the rights in the trademark in the case of assignment without goodwill. The assignor assigns with the condition that the assignee is not entitled to use the trademark relating to the goods or services already in use by the assignor.

The transmission of a trademark typically refers to the transfer of ownership rights in situations where the original owner passes away or there is a change in the ownership due to legal proceedings, inheritance or other circumstances. Transmission may occur through the distribution of assets in a will, the settlement of an estate or a court order.

The granting of the TM License is not considered as sale. Licensing only transfers the right to use the trademark while the ownership of the trademark rests with the proprietor himself. The rights granted are limited rights with respect to time and can range from right to uses the trademark, sell the products etc. The TM License can be an exclusive or non – exclusive one.

Section 38 of Trademark Act,1999 govern the Assignment and Transmission of Registered Trademark. It states that a registered trademark can be assigned and transmitted, with or without the goodwill of the business associated with it. This can apply to all the goods or services covered by the registered trademark or only to a specific subset of goods or services.

Section 39 of the Trademark Act, 1999 governs the Assignment and Transmission of Unregistered Trademark. It states that an unregistered trademark can be assigned and transmitted, with or without the goodwill of the business associated with it.

When a trademark owner dies, the fate of the trademark depends on various factors such as estate planning, succession and applicable laws.

If a trademark owner dies, the rights to the trademark are transmitted to the heirs or beneficiaries according to the owner’s will or under the law of intestacy if there is no will. The heirs or executors must then follow legal procedures to record the transmission with the trademark office to ensure continued protection and enforceability of the trademark.

Section 2(1) (zg) defines well known trademarkas:

A well-known trademark in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to the other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first- mentioned goods or services.

The recognition and protection of well-known trademarks in India are governed by the Trademark Rules, 2017.

It enables the Registrar to declare a specific brand to be “well known”. In accordance with the new regulation, a trademark owner may submit a form TM-M application with a request to the Registrar for the designation of the mark as “well-known”.

The rule aim to strengthen the protection of well-known trademarks and prevent their unauthorized use. Popular trademarks are acknowledged in India based on their reputation on a national, international, and cross-border level.

Section 11(6) of the act specifically lays down the various factors to be taken into account by the registrar while determining whether a trademark is well known trademark:

1. the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;
2. the duration, extent and geographical area of any use of that trade mark;
3. the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
4. the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent that they reflect the use or recognition of the trade mark;
5. the record of successful enforcement of the rights in that trade mark, in particular the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.

Section 11(9) provides that the registrar shall consider the following conditions for determining a “Well known Trademark”

1. that the trade mark has been used in India;
2. that the trade mark has been registered;
3. that the application for registration of the trade mark has been filed in India;
4. that the trade mark-                      A. is well-known in; or                       B. has been registered in; or       C. in respect of which an application for registration has been filed in, any jurisdiction other than India, or
5. that the trade mark is well-known to the public at large in India.

As per Rule 124 of Trademark Rules, 2017 any person may file a request for determination of a trademark as well-known along with an official fee of INR 1,00,000. This fee is for one mark only.

Any person may, on an application in Form TM-M and after payment of fee as mentioned in First schedule (i.e.INR 1,00,000), request the registrar for determination of a trademark as well-known. Such request shall be accompanied by a statement of case along with all the evidences and documents relied by the applicant in support of his claim.

Before determining a trademark as well-known, the registrar may invite objections from the general public to be filed within 30 days from the date of invitation of such objection.

When trademark registry determined the trademark as well-known, the mark shall be published in the Trademark Journal and included in the list of well-known trademarks maintained by the Registrar.

The Registrar may, at any time, if it is found that a trademark has been erroneously or inadvertently included or is no longer justified to be in the list of well-known trademarks, remove the same from the list after providing due opportunity of hearing to the concerned party.

The applicant can make appeal to the Intellectual Property Appellate Board from any decision of the Registrar of Trademark. The appeal shall be made within 3 months from the date of such decision (when registrar remove your name from the list of “Well known Trademarks”.

The Trademark Act, 1999 provides protection to well-known trademarks at two levels:

• Against the registration of any similar mark
• Action against any misuse of well-known trademark

A trademark agent is a professional authorized to represent individuals or businesses in matters related to trademarks. A Trademark agent specializes in trademark matters and supposed to have extensive knowledge about trademarks. They assist in the registration protection and management of trademarks ensuring compliance with relevant laws and regulations. . A Trademark Agent deals with all the possible legal aspects of a brand, from its registration to appearing in court cases relating to the trademark.

Yes, Trademark agents are registered with Registrar of Trademarks. The Registrar of Trademarks shall maintain a Register of trademark agents wherein the name, address of the place of residence, address of principal place of business, the nationality, qualification and date of registration of every registered trademark agents is entered.

A person shall be qualified to be registered as trademark agent if he-

• is a citizen of India;
• is not less than 21 years of age;
• is a graduate of any university in India, orpossesses an equivalent qualification and has passed the examination prescribed in rule 148 (i.e. exam of Trademark Laws and Practices); or

            is an Advocate within the meaning of the Advocate Act, 1961; or

            is a member of the Institute of Company Secretaries of India;

• is considered by the Registrar as a fit and proper person to be registered as a trademark agent.

A person shall not be eligible for registration as a trademark agent if he-

• has been adjudged by a competent court to be of unsound mind;
• is an undischarged insolvent;
• being a discharged insolvent has not obtained from the court or the appropriate forum as the case may, a certificate to the effect that his insolvency was caused by misfortune without any misconduct on his part;
• has been convicted by a competent court or the appropriate forum as the case may be;
• being a legal practitioner has been guilty of professional misconduct by any High Court in India;
• being a registered trademarks agent has been held guilty of professional misconduct by the Registrar.

Every person desiring to be registered as a trademark agent shall make an application in Form TM-G with fees of Rs 5000 (for physical filing) or Rs. 4500 (foronline filing). The applicant shall furnish such further information bearing on his application as may be required of him at any time by the Registrar.

If the registrar considers that the applicant is eligible and qualified for registration as a trademark agent, he shall enrol the candidate as a registered trademark agent &shall issue a certificate in Form RG-4.

The registrar shall remove the name of Trademark agent from the register of trademark agents in the following situations :

• who has not paid the annual fee on the expiry of three months from the date on which it becomes due.
• who is not a fit and proper person as declared by registrar of trademark
• whose name has been entered in the register by an error or on account of misrepresentation or suppression of material facts.

The registrar may, on an application made in Form TM-G with fee of Rs 5000 (for offline filing) or Rs 4500 (for online filing), within 3 years from the date of removal of the name of the person from the register of trademarks agent, restore his name to the register of Trademark Agents.

The restoration of the name to the register of trademark agent shall be notified in the Journal and shall be communicated to the person concerned.