Under Indian trademark law, any person claiming to be the proprietor of a trademark may apply to register the trademark. The trademark may either be in use or proposed to be used. Generally, the person who uses or controls both the use of the trademark and the nature and quality of the goods or services to which it is affixed, is considered the owner of the trademark.
When filing a trademark application in India, several documents and information are required to be submitted before the Trade Marks Registry. The primary form is Form TM-A, which may be filed with the Trade Marks Registry physically or online through the Intellectual Property India website (www.ipindiaonline.gov.in).
Details of the Applicant
The details of the Applicant to be submitted with Form TM-A include their name, address, and nationality. If the Applicant is a company, then the country or state of incorporation along with the complete address need to be mentioned, and if the application is filed by a partnership concern, then the name of all the partners along with the complete address of the company must be provided.
Description of goods and services
The trademark application must include a description of goods and services (based on the NICE Classification of goods and services) being offered under the trademark for which the registration is sought. This helps ascertain the relevant classes to include in the application.
Start-up or Small Entity
Trademark applications can be filed by an individual, a start-up, or a small enterprise. If the application is filed by a start-up or small enterprise, it must be accompanied by supporting certificates issued by the relevant Government authority. These include, for instance, a start-up certificate issued by the Department for Promotion of Industry and Internal Trade under the Start-up India Initiative, or a Micro, Small, Medium Enterprise (MSME) certificate, issued by the Ministry of MSME (Udyam/ Udyog Aadhar Registration). For more on this, please see here.
A foreign entity can also apply under the status of a small enterprise or a start-up by registering as an MSME under the MSME Development Act, 2006, if it is registered and incorporated in India under the Companies Act, 2013, and is engaged in the manufacture of goods and services as specified in the first schedule of the Act.
A trademark application can be filed either claiming usage from a date prior to the date of filing the application, or on a "proposed to be used" basis. In the case of the latter, no supporting documents of use are required. If the application claims prior usage of the trademark in India, then an affidavit along with supporting documents substantiating such use will also have to be filed. The affidavit must be signed by the authorized signatory and duly notarized.
The term 'use' in India has an extensive meaning and does not necessarily mean physical presence of the goods and services in India. Advertisement of the trademark in foreign journals having circulation in India or sales invoices, on letterheads, etc., bearing the trademark, may also constitute 'use' of the trademark in India. Courts in India have also been inclined to accept online presence in India via official website as use. This is particularly useful for foreign entities seeking to enter the Indian market, who already have a brand presence abroad.
Power of Attorney
If the trademark application is being filed by an agent, a Power of Attorney must accompany the application at the time of filing. It is a prescribed document signed by the authorized signatory of the Applicant with the name and designation of the agent clearly mentioned. The document need not be legalized or notarized.
If the application claims priority from an application filed earlier in another jurisdiction, then the details of that application are required when filing in India. These details include the corresponding foreign application number, filing date, country, and goods/services. A certified copy of the priority document or its duly notarized copy must also be submitted to the Trade Marks Registry in original within two months from filing the Indian application. If the priority document is not in English, then its certified and notarized English translation must be submitted to the Trade Marks Registry.
These are the essential documents that are required while filing a trademark application in India. If these documents are not submitted, the trademark application is liable to be rejected outright. The Registry may also seek clarifications on submissions made in these documents, by way of a First Examination Report. Having all these documents prepared in advance would ensure that the application proceeds smoothly to the next stage of the application 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.