News & insights

India: Trademark Insights

April 2, 2015

India is the seventh-largest country by area and the second-most populous country with over 1.2 billion people in the world. The country shares borders with Pakistan, China, Nepal, Bhutan, Burma, and Bangladesh.

India’s GDP, the fourth in the world, is estimated to be $4.99 trillion, whereas GDP per capita is $4,000. Services account for 56.9 percent of the GDP composition, followed by 25.8 percent for industry, and 17.4 percent for agriculture. Industries in India include the production of textiles, pharmaceuticals, and software. India mainly exports petroleum products, precious stones, metals, machinery, chemicals, vehicles, and most notably apparel. Imports to India include crude oil, minerals, precious stones, machinery, fertilizer, and chemicals.

India joined WIPO in 1975 and has acceded to several treaties and conventions. The Indian trademark law protects trademarks as per the Trademark Act, 1999, amended in 2010. India follows the 8th edition of the Nice classification and a single application may include several classes.

The main features of trademark registration are as follows:

Filing Requirements

1. Power of attorney, simply signed. A general power may be used for subsequent filings.
2. Copy of priority document, if priority is claimed, certified.
3. Proof of first use of the mark in India (or a declaration showing the intention of use).
4. 15 prints of the mark for each application.

Items 1 and 3 must be submitted at the time of filing. Document 2 may be submitted within 6 months from filing date.

Opposition

Trademark applications accepted by the Registrar are published in the Trademarks Journal. Oppositions may be filed within 3 months from publication date.

Extension of Time

Extension of time for oppositions/counter-oppositions or for responding to office actions is possible.

Protection Term

Trademark registrations are valid for 10 years from filing date and are renewable for like periods. There is a grace period of 6 months for late renewals with payment of a surcharge.

Documents required for renewal: Power of attorney, simply signed; and copy of the certificate of registration of the mark.

Use Requirements

Use of a trademark is not required for registration or renewal of a mark. However, a trademark is vulnerable to cancellation by any interested party if there has been no effective use of the mark for a period of 5 consecutive years preceding the date of filing for cancellation.

Search

An official search may be conducted for word marks and devices. It takes approximately 2 to 3 working days for the results to be available. A single application may include several classes. The search report discloses similar and identical trademarks.

Assignment

Registered trademarks may be assigned with or without the goodwill of the business concerned.
Documents required: Power of attorney from the assignee, simply signed; and deed of assignment, notarized.

Change of Name/Address

Documents required: Power of attorney, simply signed; and certificate of change of name/address of the applicant, notarized. For a change of address, only a simply signed power of attorney showing the new address is required.
 
Licensing

License recordal is compulsory but advisable in order to be effective against third parties.

Documents required: Power of attorney from licensor, simply signed; and license agreement, notarized.

Marking

Marking is not compulsory.

Cancellation

A trademark is subject to cancellation before the Court by any interested party within 5 years from registration date.

Registration Time Frame

The time frame for completing the registration process is 3 to 4 years.

Three Dimensional Trademark Applications

Admissible.

Should you have any questions, or require any additional information, please contact us at info@sabaip.com