Answer ... 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.

Answer ... 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:

Answer ... As stated under the Trade Marks Act, 1999, the Registrar of trade marks shall classify the goods and services in accordance with the Nice Classification.

Answer ... 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.

Answer ... The Applicant must have a bona fide intention to use the trademark. 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 should the same not be put to use in due course. 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.)

Answer ... 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 involving searches for earlier conflicting marks. A trademark may be refused registration on relative grounds 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.

Answer ... Besides relative grounds, a trademark application may be refused on absolute grounds for refusal under section 9 of the Act, 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 marks or indications which have become customary in the current language or in the bona fide and established practices of the trade;
• The mark if of such nature as to deceive the public or cause confusion, or it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India, or it comprises or contains scandalous or obscene matter, or its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950;
• 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.

Answer ... 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.

Answer ... 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.

Answer ... 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.

Answer ... Trademarks may be filed and registered on the basis of intent to use (ie, ‘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 years up to the date three months immediately preceding filing of the cancellation application.

Answer ... The first office action in a trademark application is usually issued in the first two months from the date of filing of the application.

Answer ... It takes approximately four to six 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.