Trade Mark Laws and Regulations India 2024

1.1       What is the relevant trade mark authority in your jurisdiction?

The Controller General of Patents, Designs and Trade Marks is the head of the Trade Marks Registry in India.

1.2       What is the relevant trade mark legislation in your jurisdiction?

The Trade Marks Act, 1999 (“Act”), read with the Trade Marks Rules, 2017, is the relevant trade mark legislation.

2.1       What can be registered as a trade mark?

A mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others can be registered as a trade mark.  A device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof, as well as a sound mark, can also be registered as such.

2.2       What cannot be registered as a trade mark?

The following types of marks cannot be registered:

• A mark that does not have a distinctive character.
• A mark that describes the goods or services and gives the consumer an idea about the quality, quantity or geographic origin of the particular goods or services.  Descriptive trade marks cannot be registered.
• A mark that has become customary in the current language.
• A mark that causes confusion and deception.
• A mark that is likely to hurt religious sentiments.
• A mark that contains obscene or scandalous matter.
• A mark that is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
• A mark that exclusively contains the shape of goods resulting from the nature of the goods themselves or that is necessary to obtain a technical result or gives substantial value to the goods.
• A mark that is identical/similar to a well-known mark.
• A mark that is prevented by copyright law.
• If a law of passing off protects an unregistered trade mark, such marks cannot be used or registered by other persons as trade marks.

2.3       What information is needed to register a trade mark?

The following information is required to file a trade mark application:

• Exact representation of the mark.
• Name and address of the applicant.
• Legal status of the applicant.
• Relevant Nice Classification along with a description of goods/services for which the mark is to be registered.
• Priority details, if claiming priority; the certified copy of priority documentation along with its certified English translation.
• The exact date of the first use of the mark in India in date/month/year format.  If the mark is in use in India, the affidavit of use must be filed along with the supporting evidence.  If the mark is not in use, the application will be filed on a proposed-to-be-used basis.
• If the mark contains non-English and non-Hindi characters, a translation or transliteration, respectively, in English.
• A Power of Attorney if the application is being filed by an attorney/agent.

2.4       What is the general procedure for trade mark registration?

An application for registration of a trade mark can be filed online or offline with the Trade Marks Registry by the applicant or its authorised attorney.  Upon an application being filed with the Trade Marks Registry, it is checked to see whether all procedural formalities have been complied with.  Once it passes through this phase, it goes through a substantial examination on absolute and relative grounds for refusal.  In the event that objections are raised, a response must be filed within one month of receipt of the Examination Report.  However, even if, after reviewing the response, the Examiner maintains the objections, a hearing is scheduled to hear oral arguments in support of the application.  If the Examiner is satisfied with the response, the mark is advertised in the Trade Marks Journal, and the mark is open to third-party opposition for a period of four months.  If no opposition is filed by any third party within four months from the date of publication, the mark proceeds towards registration.

2.5       How is a trade mark adequately represented?

A trade mark is said to be adequately represented if it is represented graphically with a high-resolution digital version.

2.6       How are goods and services described?

Goods and services are described on the basis of the Nice Classification.

2.7       To the extent ‘exotic’ or unusual trade marks can be filed in your jurisdiction, are there any special measures required to file them with the relevant trade mark authority?

An unusual/non-traditional trade mark in the form of a colour mark, motion or animated mark, sound mark or shape mark can be filed in India as below:

• Colour as a trade mark can be applied for registration by submitting a reproduction of the mark in that colour or combination of colours with colour codes.
• Where a mark contains a shape of the goods or its packaging or is a three-dimensional mark, the reproduction of the mark shall contain different views of the trade mark and a description as to the nature of the mark in words.  If the representation of the trade mark provided by the applicant does not clearly show all the features of the trade mark, the Registrar may require up to five further views of the trade mark.
• In case of a sound mark, a sound recording must be submitted in MP3 format, not exceeding 30 seconds in length, and recorded on a medium that allows easy and clear audible replay with a graphical representation of its notation.
• In the case of a motion mark, an appropriate representation of the mark clearly showing the motions must be filed.

2.8       Is proof of use required for trade mark registrations and/or renewal purposes?

No; however, if the trade mark application is filed claiming the date of first use, documents showing the use of the trade mark under cover of an affidavit are required to be submitted at the time of filing.  If the application is filed on an intent-to-be-used basis, no documentary proof is required at the time of filing.  No proof of use is required for renewal purposes.

2.9       What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?

Protection of a trade mark is granted only within the territory of India.

To read more visit the Chapter first published by: ICLJ.com here

Authors: Manisha Singh and Ritika Agarwal