Trademark Registrations

A trade mark is used to distinguish the goods and services of one trader from those of another.

A trade mark is a right that is granted for a letter, number, word, phrase, sound, smell, shape, logo, picture and/or aspect of packaging. A registered trade mark is legally enforceable and gives you exclusive rights to commercially use, license or sell it for the goods and services that it is registered under.

Trademark Search:

We kindly request you to provide us the representation and name of the mark before drafting the application. This will enable us to conduct a thorough search in Trademark Office, public search to avoid any conflict in the course of interest.

Trademark application can be filled in two categories:

Ordinary trademark application:

Ordinary trademark applications are applications without claiming priority. Ordinarily a Trademark can be filled in India (on form TM-1(Single class application) and TM-51(multi class application). However the Indian trademark act also lays down provision regarding the filling of priority application where in priority of the mark can be claimed in the said mark been filed in a convention country.

Convention/priority Trademark application:

A Priority Trademark application can be filled in India within six months after the date of which the application was made in the convention country. In this, certified copy of the priority Documents need to be filled with in two months from the date of filling of conventional application in India.

  1. Any person claiming to be the proprietor of a trademark shall apply in website http://www.ipindia.nic.in/ for the registration of his trademark.
  2. A single application may be made for registration of a trademark for different classes of goods and services and fee payable therefor shall be in respect of each class.
  3. Subject to the provision of Trademarks act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.
  4. In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.

Once the applications are filed, the Intellectual Property Office will issue a filing receipt having the filing number and the date filed on, with other relevant details. We will provide you with the copies of such receipts as and when they are issued.

And, there will be an examination process to determine that the mark is acceptable, and does not conflict with any existing registrations or applications.

Since marks are generally examined in the order of application numbers, applications may remain pending for several months and, in some cases, several years before they are examined.

After the examination process is completed, the mark is published in the Official Gazette. The purpose of the publication is to give notice to the public that the mark is about to be registered and to allow any interested parties to oppose the registration. The opposition is essentially a hearing at the Intellectual Property Office where both parties are provided with an opportunity to submit arguments and supporting documents. The period open for opposition parties to file an objection will be within 6 months. In case of any opposition, we would be pleased to represent you and file the response on your behalf.

Providing expertise and capacity in trademark management

Trademarks play an increasingly vital role in today's global economy. They are essential in preserving brand and corporate identity and must be intelligently created, rigorously protected and carefully maintained. As the leading provider of intellectual property services for over 4 years, we offer a comprehensive range of trademark solutions.

Whether you're a law firm or a trademark owner, in coordination with clients' legal counsel, where required, Eeva provides solutions across the entire trademark lifecycle from the selection and adoption of marks, to supporting prosecution driven tasks, through to enforcement and trademark maintenance. Leveraging our trademark expertise, we create your valuable IP.

Trademark registration is territorial in nature. Separate applications need to be filed in each country where you wish to register your trademark.

If you plan to sell and market internationally, it is essential to register your trademarks in those countries. Usually, the party who first registers a mark owns it. Therefore, it is significant to register your trademarks in each country your company considers to be a potential and key market. A national trademark registration stops at the border and does not afford rights to the owner of the trademark outside the country in which it is registered.

Most companies expanding into other countries often realize the value of registering their trademarks abroad once it is too late, that is, once they are faced with counterfeiters/imitators or once they are accused of infringing the rights of others. The risks of doing so are very high and the consequences may be extremely costly and detrimental to a company’s entire business and export strategy. It can be a severe financial liability to invest in a brand, promote it in the local market, then find that the brand cannot be registered and used internationally and have to finally abandon that investment.

  1. Registering a trademark abroad renders the company an exclusive right to commercialize its products in those markets.
  2. This not only provides a solid foundation to stop counterfeiters but also ensures that the company enjoys exclusive rights over what may be one of its most valuable business assets.
  3. Registering a trademark abroad also provides the opportunity to license the trademark to others or may be the basis for a company’s franchising or merchandising strategy.

Thus, the benefits of international registration and protection of one's trademark clearly outweigh the costs of such registration.

International Application under Madrid Protocol

India has joined the Madrid protocol with effect from 8th July 2013. The Madrid system for the international registration of trademarks provides one single and cost-effective procedure for the registration of a mark in several territories.

At present, there are 91 countries which are members of the Madrid protocol. The following link shows the members of the Madrid system:

http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf

In order to file an international application under the Madrid protocol, there should be a corresponding trademark application filed in India.

In a single international application under the Madrid protocol, several countries may be designated which are members of this system. The fees will depend based on the number of classes and countries designated.

The fees can be calculated using the online tool by choosing Office of origin as India, selecting the number of classes and specifying whether the mark is in colour.

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

In addition, a handling fee of Rs. 2,000/- is payable to the Indian Trade Mark Registry.

Upon filing the application, the mark is examined by each designated member country where registration is sought and then proceeds to registration.

An international registration under Madrid protocol is however dependent on the corresponding Indian application for a period of five years from the date of international application.

If you wish to obtain registration in a country which is not a member of the Madrid protocol, separate national trademark application has to be filed directly in the respective country.

Back to Top
Get Quotation