In India, trademark registration and related proceedings are administered by the Controller General of Patents, Designs, and Trademarks, operating under the Ministry of Commerce and Industry. The Trade Marks Act, 1999, governs the procedures and processes for trademark registration. A key element in trademark registration is the jurisdiction of the Trademark Office, which determines where an application should be filed and how proceedings are handled.
India has five regional trademark offices with specific jurisdictions based on the applicant's location. Each office caters to different states or regions of the country. Understanding which trademark office has jurisdiction over a particular application is crucial for ensuring that filings and legal proceedings are done correctly.
Trademark Offices in India
There are five principal trademark offices in India, located in the following cities:
- Mumbai
- Delhi
- Kolkata
- Chennai
- Ahmedabad
Each office is responsible for processing applications based on the applicant's principal place of business, residence, or the location of their legal representative.
Determining Jurisdiction
The jurisdiction of a trademark office is determined by the location of the applicant's principal place of business or residence. If the applicant is represented by a trademark attorney or agent, the jurisdiction may be based on the location of the attorney's/agent's office. For the foreign applicants, the office that has jurisdiction is based on the location of the local agent or attorney representing applicant in India.
Here's a breakdown of the territorial jurisdiction of each trademark office:
- Mumbai – Maharashtra, Madhya Pradesh, Chhattisgarh and Goa.
- Delhi – Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Uttarakhand, Delhi and Union Territories of Chandigarh.
- Kolkata - Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim, Tripura, Jharkhand and Nagaland, Union Territories of Andaman & Nicobar Islands.
- Chennai - Andhra Pradesh, Telangana, Kerala, Tamil Nadu, Karnataka and Union Territories of Pondicherry and Lakshadweep Island.
- Ahmedabad - Gujarat and Rajasthan and Union Territories of Daman, Diu, Dadra and Nagar Haveli.
Jurisdiction for Foreign Applicants
Foreign applicants without a principal place of business or residence in India must appoint a trademark agent or attorney in India. The trademark office with jurisdiction will then be determined based on the location of the local agent or attorney. For example, if a foreign entity appoints an attorney based in Goa, the Mumbai Trademark Office will have jurisdiction over their trademark.
Jurisdiction in Legal Proceedings
Jurisdiction also plays a role in opposition and rectification proceedings. Any opposition to a trademark application or rectification of a registered trademark must be filed in the office that originally processed the trademark application. The same office will handle any hearings, responses, and decisions related to such proceedings.
Online Filing and Centralized Processing
With the introduction of online filing systems for trademarks in India, applicants can submit applications electronically regardless of the jurisdiction of the trademark. However, the application is assigned to the relevant trademark office based on the applicant's or agent's location, and physical hearings, if required, will be conducted by the office that has territorial jurisdiction.
The digital system allows the Trade Marks Registry to streamline processes while still respecting the regional jurisdiction for hearings, oppositions, and other administrative tasks.
Conclusion:
Trademark Office jurisdiction in India is primarily determined by the applicant's principal place of business, residence, or the location of their principal representative in case of foreign applicants. Despite of the ease of online filing, understanding the regional jurisdiction is important for the seamless handling of applications and related proceedings.
Disclaimer: This article was first published in the S&A Law Offices - 'Intellectual Property (IP-Tech)' newsletter in October 2024.
