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Results: 4 Answers
Trademarks
3.
Registration procedure
3.1
Which governing body (ie, trademark office) controls the registration process?
 
India
Statutory protection of trademark rights in India is administered by the Office of the Controller General of Patents, Designs and Trade Marks, a government agency which reports to the Department of Industrial Policy and Promotion, under the Ministry of Commerce and Industry.

For more information about this answer please contact: Essensee Obhan from Obhan & Associates
3.2
What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
 
India
Rules 10 and 11 of the Trade Marks Rules, 2017 govern the fees and forms for the purpose of trademark application, prosecution and registration in India. The relevant forms are to be accompanied by the prescribed fees and the requisite documents, as mentioned in the Trade Marks Act, 1999 and under the First Schedule of the Trade Marks Rules, 2017. The official fees are currently as follows:

Particulars Physical filing
(in rupees)
E-filing
(in rupees)
To file a new application on behalf of a company, trust or partnership 10,000 9,000
To file a new application on behalf of an individual or start-up or small enterprise 5,000 4,500
To file a renewal application for each class 10,000 9,000
To include a trademark in the list of well-known trademarks Not allowed 100,000

For more information about this answer please contact: Essensee Obhan from Obhan & Associates
3.3
Does the trademark office use the Nice Classification scheme?
 
India
As stated under the Trade Marks Act, 1999, the registrar shall classify the goods and services in accordance with the Nice Classification.

For more information about this answer please contact: Essensee Obhan from Obhan & Associates
3.4
Are ‘class-wide’ applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
 
India
The registration of an application with class headings, as provided in the Nice Classification, is prohibited. Although a ‘class-wide’ specification of goods may be applied for, it is advisable that an applicant limit the specifications of the goods and services that are of specific interest to its business, to avoid any objections on the broad nature of the specifications.

For more information about this answer please contact: Essensee Obhan from Obhan & Associates
3.5
Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
 
India
A trademark may be filed on a ‘proposed to be used’ basis. However, once the trademark proceeds to registration, the trademark is liable to be cancelled on the grounds of non-use. A third party may file for a cancellation action on the grounds that a trademark has not been used in India for a continuous period of five years up to the date three months immediately preceding filing of the cancellation application. (For instance, a trademark is registered on 1 January 2018 on a proposed to be used basis. but is not used until 31 December 2023. By March 2024, the trademark is liable to be cancelled on the grounds of non-use by a third party.)

For more information about this answer please contact: Essensee Obhan from Obhan & Associates
3.6
Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
 
India
Once a trademark reaches the examination stage, objections may be raised on two grounds: absolute and relative. Under Section 11 of the Trade Marks Act, 1999, a trademark application is examined on relative grounds. A trademark may be refused registration if it is:

  • similar or identical to an earlier trademark for the same or similar goods or services; or
  • similar or identical to an earlier trademark in respect of different goods or services.
For more information about this answer please contact: Essensee Obhan from Obhan & Associates
3.7
What types of examinations does the trademark office perform other than relative examination?
 
India
Besides relative grounds, a trademark application may be refused on absolute grounds for refusal, as follows:

  • The mark is devoid of any distinctive character;
  • The mark consists exclusively of marks or indications which may serve in trade to designate the kind, quantity, intended purpose, values, geographical origins or the time of productions of the foods or rendering of the service or other characteristics of the goods or services; or
  • The mark consists exclusively of the shape of goods which results from the nature of the goods, or which is necessary to obtain a technical result or gives substantial value to the goods.
For more information about this answer please contact: Essensee Obhan from Obhan & Associates
3.8
Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
 
India
Apart from absolute and relative grounds for refusal, including confusion with an earlier trademark, descriptiveness or genericness, a trademark may not be registered under Section 9(2) of the Trade Marks Act, 1999, in the following circumstances:

  • The mark is of such a nature as to deceive the public or cause confusion;
  • The mark contains or comprises any matter which is likely to hurt the religious susceptibilities of any class or section of the citizens of India;
  • The mark comprises or contains scandalous or obscene matter; or
  • The mark’s use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
For more information about this answer please contact: Essensee Obhan from Obhan & Associates
3.9
Is there a separate or supplemental register on which descriptive marks may be registered?
 
India
Judicial precedent has held that a descriptive word that lacks inherent distinctiveness may be refused registration under the Trade Marks Act, 1999.

However, considering that a descriptive trademark proceeds to registration on the basis of acquired distinctiveness, there is no separate or supplemental register for descriptive marks. According to Section 6 of the Trade Marks Act, 1999, only a single record - the Trademarks Register - is to be kept at the head office of the Trade Marks Registry, containing details of all registered trademarks, including:

  • the names, addresses and description of the owner;
  • notifications of assignment and transmissions;
  • the names, addresses and descriptions of registered users; and
  • conditions, limitations and such other matters as may be prescribed.
For more information about this answer please contact: Essensee Obhan from Obhan & Associates
3.10
Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
 
India
The Trade Marks Act, 1999 provides that a third party may object to the registration of a trademark once the trademark has been advertised in the Trademarks Journal.

For more information about this answer please contact: Essensee Obhan from Obhan & Associates
3.11
Must the applicant use the trademark commercially in order to obtain a registration?
 
India
Trademarks may be filed and registered on the basis of intent to use (i.e., ‘proposed to be used’ basis). Therefore, a trademark need not be used commercially prior to registration. However, registered trademarks may be cancelled by third parties if they have not been put to commercial use in India for a continuous period of five (5) years up to the date three (3) months immediately preceding filing of the cancellation application.

For more information about this answer please contact: Essensee Obhan from Obhan & Associates
3.12
How much time does it typically take from filing an application to the first office action?
 
India
The first office action in a trademark application is usually issued in the first two (2) months from the date of filing of the application.

For more information about this answer please contact: Essensee Obhan from Obhan & Associates
3.13
How much time does it typically take from filing an application to publication?
 
India
It takes approximately four (4) to six (6) months for a trademark application to proceed from filing to publication, if no serious objections are raised. The time may vary if a ‘show cause’ hearing is scheduled for an application after the examination stage and prior to the publication stage.

For more information about this answer please contact: Essensee Obhan from Obhan & Associates