India: What Steps Should The Trademark Owners Take In Order To Avoid Any Future Litigation?

Last Updated: 10 October 2018
Article by Samridh Ahuja

The owner of a trademark can do so much at the preliminary stage itself to avoid future litigation and/or conflicts. The following steps are advisable in order to safeguard the trademark:

STEP 1: Do your Research and Search!

The selection of trademark is one of the most crucial steps for creating an interesting corporate identity or a brand. One should try to have a "storyboard" with objective reasoning for selecting a particular trademark. Often such storyboards along with reason for creation or selection of a particular trademark / logo are helpful while establishing proprietary over the mark. While application of mind is important in creation or selection of a trademark, at the same time, one should be very careful of not (even accidently) infringing existing trademarks in the relevant service or product fields. Before choosing a trademark, one must first check whether the mark already exists in the market or not. An official trademark search should be conducted on the "" website. Putting the class description and the mark in the given space, one can get to know about preliminary objections based on visual and phonetic similarities. This information can prove to be help in streamlining the decision to use a particular mark, logo and/or word as a trademark.

Grey Area: There can be a situation where the above website does not display any similar marks, but there still exists a mark that is being used by a proprietor who did not get the mark registered. This is the grey area that needs some additional research and investigation since the ownership of a mark or trademark is decided based on prior use.

STEP 2: Avoid the use of Descriptive/Common words as Marks

A well-known practice in Trademark Law is to not use descriptive words/ common words as trademarks. When one is well aware that the word "BAG" is a very common word in the public domain, using it as a Trademark is an act of 'self-sabotage' and must not be adopted. "BAG" is an example of descriptive mark as it describes the goods produced under a particular trademark.

Exception: The exception to above practice can be scenarios where the mark has acquired distinctiveness by way of long and extensive use in the market.

Further, as a matter of practice in Indian legal fraternity, a trademark owner has the choice of using "CONDITIONS AND LIMITATIONS" on the use of a particular Trademark at the time of filing an application in support of the registration of a trademark. Such a practice is common in the United States of America as well, where they use "DISCLAIMERS" to waive off any rights in relation to the descriptive part of the mark.

In India, this technique can help minimize frivolous future litigation.

Example: This is an extract from a trademark registered in the Indian Trademark Journal:


STEP 3: Follow up and the Renewal of a Trademark

A Trademark owner, through its Attorney, must conduct a thorough follow up routine during the pre-registration stage and check the status page on the Trade Mark Registry website on a constant basis as an ideal process. There could be situations where an 'Objection' could be raised in the Examination Report by the Registrar, and accordingly a reply needs to be filed in response to the same; or there could be a situation where the mark gets published in the Official Trademark Journal and is later 'Opposed' by a third party, and then, a counterstatement would be needed to be filed in response to the Notice of Opposition. A routine follow-up would help the trademark owner meet deadlines and may eventually help in the registration of the trademark.

However, a trademark owner's vigilance does not stop with obtaining the trademark. Once the trademark is registered, the protection is not granted for an infinite period. The Indian Trademark Registry grants protection for a particular trademark for a period of up to 10 years. Trademark owners must therefore, be aware of the deadlines and must file renewal applications on a timely basis. The trademarks must be renewed well in time to avoid any abandonment claims.

Under the New Trademark Rules, 2017, a trademark owner can file an application for the renewal of the trademark as early as one year before its expiration date.


In conclusion, the importance of Intellectual Property Rights, especially w.r.t trademarks has evolved over the past few years in India. Hence, awareness in this field is of utmost priority. The steps as listed above give a description of the basics of filing and tracking of trademark in India in easy language. A trademark owner must be aware of these basics in order to have a smooth trademark filing process.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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