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20 Suggestions for Overseas Trademark Applicants

Trademark rights are territorial in nature i.e., recognized and protected in the country in which it has obtained registration. In order to obtain trademark rights and protection outside the home country, it is imperative to register the trade mark in each country, in which you are seeking protection of your mark.

With respect to INDIA, a trademark application can either be filed directly with the Trademark Registry, India or can be filed through WIPO’s Madrid System by designating India.  Be it direct filing in Trade Marks Registry (TMR), India or through Madrid Protocol, this article focusses on some of the fundamental yet crucial recommendations for overseas trademark Applicants.

  1. Any foreign Applicant having place of business in India, can directly file application at the appropriate office of Trade Marks Registry, India.  However, if there is no place of business in India, the foreign Applicant can file a trademark application in India only through an Indian Trade Mark Agent and/or Attorney.
  2.  https://ipindia.gov.in/trade-marks.htm is the Official website of Intellectual Property India and provides a comprehensive information of the entire process from trademark filing to registration.  It is a forum for trademark proprietors seeking to protect their trademarks in India.
  3. Who can apply for the mark in India: – Any person[1] claiming to be the proprietor of a mark (either ‘in use’ or ‘proposed to be used’) can apply for registration of the trademark in India.[2]  It should not be the case that the mark is registered by some proprietor whereas used by another proprietor (unless a registered user). 
  4. Joint Proprietors: Two or more persons (be it an individual/companies/firms/LLP/entities etc) can make an application jointly for registration of same mark as a ‘Joint Proprietors’ or ‘Joint Owners’ of the mark.  The trademark shall be registered in favour of those entities/parties jointly.[3]
  5. Coin the Mark: –Mark can be a word, signature, name, device, label, numerals or combination of colours[4]. A separate application must be filed for word mark and logo.  A word mark is a standard character without any claim to font style, size or colour.  However, the word mark should be distinctive and not descriptive in nature. Coined and invented marks are best eligible for registration. 
  6. Logos/Device marks: – The mark filed in the form of logo has to be used exactly in the same manner as filed in the trademark application. The mark in the form of coloured logo restricts the proprietor to that particular colour only whereas filing the device mark in black and white, gives rights in all colours.  Having said so, the coloured logo adds to the distinctiveness of the mark and shall be taken into consideration by the tribunal having to decide on the distinctive character of the trademark[5].
  7. Identify the appropriate class:  The Indian Trade Marks Registry follows the 10th Edition of Nice Classification of Goods and Services. There are 45 classes in the Nice classification out of which, classes 1 to 34 classify goods or products and classes 35 to 45 are services.  The Applicant should aptly identify the goods and/or services to be covered in its application.  No additions to the specification of goods and/or services are permitted post filing of the mark. Deletion of goods is however permitted by paying appropriate fees and making application in the prescribed form. There are no limits of the words in class description.
  8. Prohibited marks: – Before filing a trademark application in India, it is important for the Applicant to ensure that the mark to be registered is not excluded from protection under the Indian trademark law or under the Emblems and Names (Prevention of Improper Use) Act, 1950[6]. Section 13 of the Trade Marks Act prohibits registration of mark if it consists of the international non-proprietary name for a pharmaceutical substance.  Once it is established that the registration of the trademark is prohibited by any provision of the Trade Marks Act or any other law or Government direction, it shall not be accepted for registration, even if the Applicant adduces ample evidence of use of the trademark. 
  9. Conduct searches before filing: – Post identification of the classes, it is important to conduct searches. One of the most common reasons trademark applications are rejected is because the applied trademark is too similar to an already registered mark in the database of Trade Marks Registry and there’s a likelihood of confusion. In order to avoid such kind of rejection of the marks, conduct searches to check whether anyone else has already registered or is using a similar mark. Free searches are available at IP India Public Search for Trade Marks https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx
  10. Don’t delay filing: –Once search is conducted, it is advisable not to delay the filing of trademark. In our experience, it is noticed that many Applicants conduct search and file application after considerable time has lapsed. In such cases, the search conducted may get redundant, as in the meantime there is a possibility that some other proprietor may file application for the same or similar trademark.
  11. Filing single class/multi-class application: In India, the fees for filing trademark application is per mark per class. So, even for a muti-class application, the official fee will remain the same as filing a separate application in each class.  It is advisable to file single separate application for each mark each class, as the biggest drawback associated with filing a multiclass trademark application is that the objection/opposition raised in one single class would block or delay the registration of the entire multi class application in the remaining classes.  
  12. First-to-use: – India follows the “first to use” system.  It means that the rights of a prior user of a trademark are legally superior and take precedence over those of a registered proprietor who obtained registration later.  The use of the mark in trade and commerce for the relevant goods and service determines the ownership rights or use in trademark. Thus, it is advisable for the Applicants to establish the use of the mark in India.
  13. “USE” of the mark: – An application for registration of a trademark in India can be filed by either claiming ‘USE’ of the trademark in India and if there is no use of the mark in India, the Trade Marks Registry provides for filing the mark on a ‘proposed to be used’ (intent to use) basis.  If the mark is filed on proposed to be used basis, in such case the proof of usage of the mark in India is required for the grant of registration of the trademark.  If the mark is filed claiming use, in such case it is a mandatory requirement to submit the Affidavit of use[7].  The usage claimed in the application needs to be bona-fide and supported with documentary evidence of usage.
  14. Power of Authorization: – If the Application is being filed by a Trademarks Agent/Attorney, it is mandatory to file a Power of Authorization signed by the Applicant[8]. If Applicant is a company, the POA can be signed by the Authorized Signatory of the Applicant. No notarization or legalization is required in India.
  15. Base application requisite for Madrid filing: – An international application  is based on an existing application or registration (basic trademark) in a contracting party to the Madrid Protocol. The international application must have the same owner(s) as the identical mark and cover the same, or some of the goods and/or services as the basic trademark. An international application may have more than one basic trademark.  If filing through Madrid, the Applicant should ensure that the base application in the foreign country is valid and existing.  Although, registration of the base mark is not mandatory, it is highly recommended.  
  16. For Madrid Filing, check for Provisional Refusal: – For Madrid application, designating India, keep check on objections by the Trade Marks Registry, India in the form of Provisional Refusal.  On receiving objection, the Applicant will have file their response to the Provisional Refusal within one month of the notification of refusal or else the Provisional Refusal will be confirmed. The Foreign Applicant will have to appoint an Indian Trade Mark Agent and/or Attorney for filing response to the provisional refusal. It is therefore highly recommended to hire the agent immediately, as the time period for responding the office action is one month from the receipt of the Notification of the Provisional Refusal.  The due date is extendible maximum up to one month by paying prescribe fees and filing an appropriate application prior to the expiry of the deadline before the Trade Marks Registry, India. Similarly, in case of oppositions received for the mark filed through Madrid application designating India, the Foreign Applicant will have to appoint Indian Trade Mark Agent and/or Attorney for handling the Opposition prosecution.
  17. File a convention application to claim priority: The Foreign Applicant can also opt for filing a convention application[9] in India. Such applications must be filed within six months of its trademark filing date in the home country. In this, if the mark gets registered in India, it shall deem to have been filed as of the date on which the application was made in the convention country.
  18. Translations and/or transliterations if any required in English. If the mark to be registered is in language other than English/Hindi and/or characters other than Roman/Devnagari characters, the Applicant must file an English/Hindi translation and/or transliteration in support of the trade mark application.
  19. Watch on the published trademarks: – Mere obtaining registration certificate is not enough. It is imperative to keep a watch in the Trade Marks Journal published weekly, and file oppositions against the mark of the potential infringers for using mark that may be confusingly similar to the registered mark.  Also, keep a watch in the market and take proper enforcement action.
  20. Renewals:- The registration of trademark in India shall remain valid for a period of ten (10) years[10], and it can be renewed from time to time in accordance with the law. Ensure proper docketing system so that your files to reflect the due dates of renewals.  The ten (10) years renewal date is calculated from the date of filing of an application. Trademarks can be renewed on the basis of a renewal request accompanied by official fees. Provided that the records are up to date, renewals can be affected within one week. The registered proprietors need not provide any affidavit for any evidence of use of the mark at the time of renewal of the mark.

Although providing use of the mark in India is not mandatory at the time of registration or at the time of renewal, the registered proprietor must ensure bonafide use of the mark in India as the lack of bonafide use may render the registration vulnerable to a cancellation action[11] from any aggrieved third parties on the grounds of non-use. Thus, mere registration without intention to use the mark does not give any exclusivity over the mark.

Update the Records

If any details of the trademark application or registered mark have been amended, it is important to keep the trademark portfolio updated. E.g., If the mark has been assigned, take proper steps to bring the assignment on record. If the name of the registered proprietor or its address has changed, ensure that the trademark records is properly updated. Also, if there is a change in Advocates/Trade Marks Agent of the Application, it must be recorded, and the service address must be updated with the Trade Marks Office to ensure that all correspondence from the Trade Marks Office reaches the Applicant through its attorney or agent.   

Check trademark status.

Keep a check on the trademark registry’s official website of India to check the status of the application and registration.

Please feel free to consult us at tm@stratjuris.com  for a legal advice to assist and guide you with the trademark filing in India.


[1] A ‘person’ includes Natural Person, Body Incorporate, Partnership Firm, Joint Proprietors, Trust, Society. 

[2] Section 18(1) of the Trademarks Act, 1999: Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark.

[3] Section 24 of the Trademarks Act, 1999: (1) Save as provided in sub-section (2), nothing in this Act shall authorize the registration of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors thereof.

[4] Section 2(1)(m) of the of the Trademarks Act, 1999 states that a mark comprises a device, brand, heading, label, ticket, name, signature, word, letter, numerical, form of products, packaging, or combinations of colours or any combination thereof. Section 2(zb) of the Trade Marks Act 1999: Trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours;

[5] Section 10(1) of The Trade Marks Act, 1999 – A trade mark may be limited wholly or in part to any combination of colours and any such limitation shall be taken into consideration by the tribunal having to decide on the distinctive character of the trade mark.

[6] Section 9(2)(d) bars registration as a trademark if “its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950)

[7] Rule 25 of Trade Marks Rule, 2017- Statement of user in applications— (1) An application to register a trademark shall, unless the trademark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of all the goods or services mentioned in the application.

In case, the use of the trademark is claimed prior to the date of application, the applicant shall file an affidavit testifying to such use along with supporting documents.

[8] Section 145 in The Trade Marks Act, 1999:  Agents—Where, by or under this Act, any act, other than the making of an affidavit, is required to be done before the Registrar by any person, the act may, subject to the rules made in this behalf, be done instead of by that person himself, by a person duly authorised in the prescribed manner, who is—

(a) a legal practitioner, or

(b) a person registered in the prescribed manner as a trade marks agent, or

(c) a person in the sole and regular employment of the principal.

[9] Section 154 of the Trade Marks Act, 1999 is special provisions with respect to applications for registration from citizens of convention countries.

[10] Section 25 (1) of The Trademarks Act, 1999: (1) The registration of a trade mark, after the commencement of this Act, shall be for a period of ten years, but may be renewed from time to time in accordance with the provisions of this section.

[11] Section 47 of The Trade Marks Act, 1999Removal from register and imposition of limitations on ground of non-use. —

(1) A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the Registrar or the Appellate Board by any person aggrieved on the ground either—

(b) that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trademark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being:

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