The Trademark Act, 1999 in India aims to regulate the registration of trademarks applied for in the country, provide better protection for trademarks used for products and services, and prevent fraudulent use of trademarks. According to the Act, a trademark refers to a mark that can be graphically represented and is capable of distinguishing one person’s goods or services from those of others.

Trademark Administration in India

The Trademark Registry under the Controller General of Patents, Designs, and Trademarks (CGPDTM) is responsible for trademark administration. Its headquarters is located in Mumbai, with branch offices in Ahmedabad, Chennai, New Delhi, and Kolkata. After India joined the Madrid Protocol for the international registration of trademarks, an International Registration Division was established at the Mumbai headquarters.

Non-Registrable Marks

To be eligible for registration, a trademark must be distinctive, should not infringe upon copyrights or other prior rights, and must not be identical or similar to trademarks already registered within its designated goods or service categories. If a mark is identical or similar to a well-known trademark, it cannot be registered in any goods or service category.

Protection Period for Registered Trademarks

The protection period for a registered trademark in India is 10 years from the date of registration, and it can be renewed every 10 years thereafter. After the expiry of the protection period, there is a 6-month grace period during which renewal applications can be submitted. If the trademark is not renewed within the grace period, a restoration application can still be filed within an additional 6-month period.

Application Methods

There are two ways to obtain a valid registered trademark in India:

• Directly applying to the Trademark Registry (TMR).
• Designating India through the Madrid Protocol for international trademark registration.

Under the Paris Convention for the Protection of Industrial Property, applicants who first file a trademark registration in China can enjoy priority rights if they file the same trademark application with the TMR within 6 months.

Procedure for Direct Trademark Registration with the TMR

Trademark registration applications in India can be filed in Hindi or English, and the basic application procedure includes the following steps:

Filing the Application
The applicant submits the trademark registration application to the Trademark Registry.

Examination
The examination of trademark registration applications is centralized at the Mumbai headquarters of the TMR. Examiners determine whether the mark in the application is capable of distinguishing the applicant’s goods or services, whether it is prohibited from registration under current laws, and whether it is identical or similar to already registered trademarks, which could cause confusion or deception.
If the examiner finds grounds for rejection, the examination report is sent to the relevant office, which then informs the applicant. Upon receiving the rejection notice, the applicant can amend the application materials. The amended materials are reviewed by the respective local office to determine whether they meet the requirements for trademark registration.
If the issues raised by the examiner are not resolved, the application will be rejected.

Publication and Opposition
If the examiner finds no grounds for rejection or the issues raised have been resolved, the TMR will publish the trademark application in its Trademark Journal.
From the date of publication, there is a 4-month opposition period during which anyone may file an opposition against the trademark application.
Under the opposition procedure, the TMR will provide the applicant with a copy of the opposition notice. The applicant must submit a counterstatement within 2 months, failing which the application will be considered abandoned. The applicant’s counterstatement will also be forwarded to the opponent, and both parties may submit evidence supporting their claims. After the evidence stage, the TMR will hold a hearing, and the hearing officer will issue a decision.

Registration
If no opposition is filed during the opposition period or the opposition is dismissed, the trademark will be registered. The application date is considered the registration date for the trademark.

Appeals
If the applicant is dissatisfied with the decision of the Intellectual Property Office (IPO), they may file an appeal with the Intellectual Property Appellate Board (IPAB).

The IPAB, established in 2003, hears appeals against decisions related to trademarks, patents, designs, and other intellectual property matters. It has appellate benches in Chennai, Ahmedabad, New Delhi, Mumbai, and Kolkata.