Trademark Law - Lawyers for Trademarks in India
A Trademark is a sign of serious commercial intent and protects/increases the goodwill of the owners business It is seen as an evidence of ownership and gives the owner legal recourse against its illicit use. Trademarks are granted not only to Indian citizens; applicants of any nationality can apply. The symbol is an alert to the users/public that the mark bearing this symbol is being used in commerce, and/or that an application for registration of the mark is pending at the Trademarks Registry. The symbol, however can only be used against marks which have already been registered by the Registry. The use of this symbol on a mark which is unregistered constitutes a criminal offence. Trademark applications are filed in the name of the owner of the said mark, who can be an individual, partnership, body corporate, society, trust or any other body, which uses or controls the use of the mark, and which determines the nature and quality of the goods/ services for which the trademark is to be used. The owner of the trademark has rights only in the country which has granted it. However, some countries an Indian trademark registration as the basis for registering that particular mark in its territory.
Legaleye Associates is a leading law firm in India, which offers a wide spectrum of trademark registration services to our domestic and international clients at affordable price in India & across the globe. The Firm is gradually earning the reputation of being regarded the best law firm in India for IPR related works. Legaleye Associates provides full breadth of services for registering trademark in India & across the globe.
Our trademark registration services include
- Preparation and filing of your trademark application,
- Notifying acceptance of the objections or application by the trademark office,
- Counseling the publication of application in trade marks journal
- Providing status of trademark registration/ scope of trademark protection
- Renewal, opposition, rectification of trademarks,
- Trademark infringement analysis/ opinion,
- Action of infringement and passing off,
- Trademark watch & litigation,
- Trademark licensing and transmission,
- Drafting Deed Form,
- Assignment, licenses and transmission, drafting deed form, consequent registration of assignment, etc
- Consequent registration of assignment, and
- Trademark Portfolio Management
Legaleye Associates is rapidly being recommended as one of the best trademark law firms in India. The Firm counsels clients regarding the best branding strategy for enhancing and developing strong trademark rights worldwide, including proper selection and use of marks and prosecution of trademark applications and registrations in the India and worldwide through our comprehensive international network of lawyers. We devote focused attention to enforcing those rights on behalf of clients through various means, such as cease-and-desist activities, trademark oppositions, cancellations, domain name arbitrations, seizures, and litigation before courts and the International Trade Commission. We are prepared to protect and enforce various types of trademark rights, including word marks and logos, as well as color trademarks, product packaging, and product configurations.
Legaleye Associates offers trademark litigation services as well as defending clients in trademark administrative proceedings before the India Patent and Trademark Offices Trademark and Appeal Board (TTAB). Our team has a practical, business-oriented approach to handling every type of trademark issue our clients may encounter. The Firm is equipped to manage large international trademark portfolios for large corporations, and assist emerging companies in developing unique and protectable trademarks.
Filing Application For Trademark Registration in India
Application for registration:
An application for registration of trademarks may be made by any person claiming to be the proprietor of a mark but only as regards the particular goods or service in respect of which he/she is using or proposing to use such mark. The proprietor must have the intention to use the mark himself/herself or though a registered user at the time of filing the application.
Foreigners and nationals not living in the country:
May also be recorded as being registered proprietors of trademarks but they must provide to the Registry an address for service in India, else, they must appoint a registered agent or representative.
Kind of marks - The law provides for association trademarks, the registration of certification marks, defensive marks and collective marks.
Registrability - In order to be registrable, a trademark application must include or consist of the following essential particulars:
- The name of a company, individual or firm represented in a special or particular form/ manner;
- The signature of the applicant for registration or some predecessor in his or her business;
- One or more invented words;
- One or more words having no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name, or a surname, or a personal name, or any common abbreviation thereof, or the name of a sect, caste or tribe in India;
- Any other distinctive mark.
Duration of registration of trademark is 10 (ten) years and is renewable for further periods of ten years likewise. Renewal fees should be paid before but not more than six months before the date of expiry of the last registration; a mark may be restored within one year from the last date of renewal upon application to the Registrar, either completely or subject to such conditions and limitations as he/ she may think fit to impose. A trademark that has been removed from the Register for non-payment of renewal fees could be cited against an application for registration during a period of 1 (one) year from the date of such removal.
No trademark shall be registered in respect of analgin, aspirin, chloropromazine, ferrous sulphate, piperazine and its salts such as adipate, citrate and phosphate or for a new single ingredient drug first introduced in India. The Indian national flag, the name or pictorial representation of Mahatma Gandhi, Jawahar Lal Nehru, Chatrapati Shivaji, or the Prime Minister of India and the names and emblems of certain international organizations may not be registered as trade marks. In the case of portraits, the name of the person depicted must be stated.
Service marks are registerable in India in 8 (eight) classes
Priority may be claimed from the earliest corresponding application in a convention country, however, provided that an application is filed in India within six months of the priority date. Multiple and partial priorities are allowed in given cases.
Classification - The international classification of goods is applicable and used and separate applications should be filed for goods falling in different classes. Classes 1 to 42 are available.
Examination - All trademark applications are examined to ensure that they comply with the requirements of the law and that they do not conflict with marks that may be already registered, or which are the subjects of earlier pending applications.
Amendments - An application may be amended provided the amendment proposed does not constitute a major alteration of the mark.
Hearing may be sought with regard to applications which the Registrar proposes to refuse and an appeal may be made to the High Court against any orders passed at such hearing.
Grounds for refusal - Registration may be refused in respect of marks that are scandalous or obscene, or which are likely to deceive, cause confusion, or offend religious susceptibilities, or which are contrary to the law or morality, or which would otherwise be disentitled to protection in a court, which are accepted chemical names or which are identical to other marks for the same goods or description of goods. In cases of identical marks, registration however, may be allowed upon sufficient proof that the mark was being used concurrently and in good faith.
Opposition Trademark applications that are accepted are advertised in the Trade Marks Journal and opposition may be filed within three months of the date of advertisement; an extension of time of one month for filing opposition may be obtained upon an application made for extension. The Register was earlier divided into two parts wherein Part A contained the marks already registered under the Trade Marks Act 1940 and all marks which were distinctive or had acquired distinctiveness (satisfactory evidence to this effect must be produced) could be registered in Part A of the Register. Part B contained marks which could not be registered in Part A or which were not distinctive but were capable of distinguishing the goods of the applicants. Since 2003 this distinction has been removed and now only a single register.
Assignment of a registered trademark is permissible and can be duly assigned with or without the goodwill of the business concerned. An unregistered trade mark is not assignable without the goodwill of the business concerned except if it is used in the same business as a registered trademark and assigned to the same person and along with a registered trademark covering the same goods.
Registered user - the Central Government may refuse the registration of a registered user if it is against the public interest or the development of industry, trade or commerce in India. Before doing so the Central Government ought to disclose the facts and circumstances on the basis of which it proposes to refuse the registration of a registered user and also afford to the applicant an opportunity of being heard on a hearing.
Rectification for non-use - the Register may be rectified (removal of a mark) in respect of a registered mark and one of the grounds for applying for rectification is the non-use of a mark for a period exceeding five years and one month before filing of such rectification application unless there are special circumstances excusing non-use of the mark.
Infringement suit may be filed against any infringement of registered marks, and, in any suit, registration may be regarded as valid in all respects even years from the date of registration. Unregistered trademarks with reputation in India or internationally well-known trademarks, could be protected against misuse in a passing off action.