How to register a trade mark in

India
Guest Post October 31, 2024

This article is written by Haridya Iyengar and further updated by Shreya Patel.
This article acts as a comprehensive guide on how to register a trade mark in
India. The article also throws light on the advantages of registering a trade mark
and the kinds of trade marks which can be registered.

Introduction
One of my college mates came up with a brilliant name for her new
business. It was trendy, catchy, and very unique in nature. The name
represented the business perfectly. She has also designed a creative logo
for her brand along with the website. Months after her business started,
she received a cease and desist letter (a document which states the receipt
party to stop an activity as it infringes the right of the sender) from a
company.

The letter stated that she was using their logo and brand name without
permission and infringing their rights. These kinds of trade mark issues
occur more than you think on a daily basis. In the blink of an eye, the
whole business can come to a halt. You can avoid this from happening by
registering your trade mark from the start itself.

In this article, we have a detailed discussion on the entire procedure of

registering a trade mark in India. We will discuss who can register a trade
mark, what types of trade marks can be registered, along with some
crucial points on what to do after the trade mark has been registered.

Before walking through the process of trade mark registration, let’s take a
look at how the trade mark and its related laws and rules have evolved
during these years.

What is trade mark and trade mark registration

A trade mark is a mark that is unique in nature and helps the consumers
identify the goods or services of one entity from another in the market.
The origin of the goods and services can be identified by looking at their
trade mark. A trade mark can be a symbol, mark, logo, sign, etc. Section
2(1)(zb) of the trade marks Act, 1999 (hereinafter mentioned as the ‘Act’)
defines a trade mark as a mark which can be graphically represented and
is also capable of distinguishing the goods and services of one party from
another.

The process of acquiring the legal right to use a mark, logo, or symbol in
relation to a specific goods or services is called trade mark registration.
With the trade mark registration, the owner can get the exclusive right to
use a trade mark and can sue parties that use the registered mark without
prior permission.

Advantages of registering a trade mark

Why is registering a trade mark given so much importance? Below are

some of the key advantages which will make us understand as to why we
should register our trade mark in India.

Trade marks make it easier for your customer base to find you.
Trade marks distinguish your services and products from those of
your competitors.
A trade mark helps in identifying you as the source and indicates a
consistent level of quality of your services and products.
Trade marks also increase brand awareness and goodwill.
Trade marks are economically efficient tools which create a face value
in the market among competitors; they give your business a
monopoly over the brand name.
When a trade mark is registered, it gives the owner an exclusive right
to use the trade mark.
Trade mark registration acts as a low-cost protection. The trade mark
registration has to be done only once. Then it only needs a renewal
every 10 years.

We have understood the advantages of registering a trade mark in India.

Now let’s move on to the next crucial step in trade mark registration,
which is who all can register a trade mark in India?

Registration of trade mark in India

A trade mark is one of the significant intellectual properties for all kinds
of business in India. In India, there are various types of trade marks
which can be registered, such as word marks, device marks, service
marks, collective marks, or certification marks. In order to register any
type of trade mark, a registration procedure is laid down by the trade
marks office in India.

We will now delve into how to register a trade mark in India. We will first
start with who can register a trade mark in India, as before proceeding to
the registration process, one should know whether they can register a
trade mark in India or not.
Who can register a trade mark in India

Section 18(1) of the Act states that any person who asserts the ownership
of the trade mark can file the trade mark in India.

A trade mark can be registered by the following:

Natural person
Association of persons
A body incorporate
Hindu Undivided Family
Trusts
Proprietorship firms
Societies
Joint owners of a company
Partnership firms
Limited Liability Company

Where to register a trade mark in India

Trade mark applications are handled by the Office of the Controller

General of Patents, Designs, and trade marks. The office has its branches
available in Mumbai, Kolkata, Ahmedabad, Delhi, and Chennai. The
application must be filled as per territorial jurisdiction. The trade mark
application can be filed online by visiting the official website of the Office
of the Controller General of Patents, Designs, and Trade marks, or offline
by visiting the trade mark office which comes under your jurisdiction. A
trade mark cannot be registered anywhere else.

How to register trade marks in India

India is a ‘first to use’ country when it comes to trade mark registration,
which means that the party that uses the trade mark first will get an
upper hand. Hence, registering the trade mark before you start to use it is
very vital. This way you can protect your trade mark and brand name
and avoid any third party claiming that you are infringing their trade
mark as they have been using it before you were. Therefore, it is
important to apply for registration as soon as possible.

To register a trade mark in India, the following steps must be followed:

Select a trade mark agent in India

A trade mark application is allowed to be filed only if the place of

business is in India. If this is not the case, the applicant must file a trade
mark application through an agent or attorney. An individual can file a
trade mark application on their own, but it is recommended to hire an
agent or attorney for it. The agent or attorney usually takes care of the
formalities such as searching, preparing, filing, and prosecution of the
trade mark.

Choosing the mark and trade mark class

The next step in the trade mark registration is to choose and finalise the
mark or symbol by taking into consideration all the requirements which
are laid down in the Act and Rules. Sections 9, 11, 13, and 14 of the Act
talk about grounds of refusal and other restrictions on the registration of
the trade mark. Hence, it is very vital to choose a mark which does not
violate any of the sections mentioned.
After a distinctive mark is chosen, an appropriate trade mark class is to be
decided under which the trade mark will be registered. Having a trade
mark class is important as it will be used throughout the registration
process. For instance, a company manufacturing dolls wants to register
their trade mark. Such a mark will be registered under class 28 of trade
marks.

Finding the eligibility and availability of the trade mark

The agent usually starts the registration process by determining whether

the trade mark is eligible for registration and conducting a public search
to see if there is a similar mark in the Office of the Controller General. A
public search shows all the trade marks which are registered or
unregistered. A trade mark will only be applied for registration if it is
distinctive in nature; if there are any other similar or identical marks
already registered or are in the process of registration, then such an
application will be rejected.

Conducting a prior trade mark search helps in saving the applicant’s time
and money. If any similar or identical trade mark is already in use or
proposed to be used, then the applicant can still make changes in his
mark and then register it.

Filing the trade mark application

The next step, after conducting the trade mark search and deciding on the
appropriate trade mark class, is that the trade mark application can be
filed in the trade mark office under the appropriate jurisdiction. Section 18
of the Act talks about the application of the trade mark. The trade mark
application is to be made in writing to the registrar. A single application
can be filed for different trade mark classes for a trade mark.
The application can be accepted fully or with some amendments as per
the discretion of the registrar. For filing an application for a trade mark,
Form TM-A is to be filed by visiting the office or on an online portal.
Along with the application form, there are other important documents
which are to be attached, and a fee is to be paid for the same. The fees for
both online and physical filing are different for different categories.

Online filing Physical filing Type of entity

₹ 4500 ₹ 5000 Small enterprise/individual/startup
₹ 9000 ₹ 10,000 Other entities

If the trade mark application is being filed through a trade mark agent or
the attorney, then the power of attorney is to be filed through Form TM-
48, and they can further file the application form on behalf of the real
owner. The form will require details such as the name and address of the
proprietor, a description of the goods and services associated with the
mark, whether the mark is in use, and a copy of the mark.

Documents for trade mark registration

The applicant has to ensure that all documents are attached in order to
avoid any delays in the registration process. All the documents are to be
uploaded along with the trade mark online when the application is filed.
The documents which are required along with the trade mark application
are:

Aadhar card
Form TM-48 (if the trade mark agent or attorney is filing the
application)
Affidavit (if the mark is already being used priorly by the applicant)
Other documents as per the requirement
Graphical representation of the mark
Proof of name and address in case of company, partnership, or LLP
Pan card
Company’s incorporation certificate
MSME certificate (if applicable)

Examination of trade mark application by registrar

The trade mark office reviews the application after it is filed. This review
by the examiner is compulsory in nature. The review is done to see if the
application is complete, all documents are submitted, and if the mark is in
compliance with the Act and Rules. The examination report must include
all the similar registered trade marks along with the ones which are
currently in the registration process which the registrar finds
identical/similar. All marks along with their vital details, are to be
included in the examination report for the applicant to know. After this,
they issue an examination report within a period of one month.
The applicant has to revert this report, answering all the objections with
evidence and argument. At the time of examination of the application, an
application number is allotted. If the trade mark is registered, this number
becomes the registration number. At this stage the status of the trade
mark registration will be shown as ‘Awaiting reply to examination report’
which will change after the reply to examination report is submitted
within a month.

Reply to examination report

A reply to the examination report is to be given in writing within 30 days

from the date on which such report was delivered. The report consists of
all the objections raised, any clerical mistakes, similarity, or lack of
distinctiveness in the trade mark. The reply consists of answering the
objections raised by the examiner. A comprehensive and clear report is to
be filed as a reply to the examination report, along with the addition of all
the evidence which can back your arguments made in the reply. If the
reply is not submitted on time, it may lead to the application being treated
as abandoned.

Objection to trade mark

The trade mark register determines if the application is barred from

registration either on absolute or relative grounds for refusal as prescribed
in the Act. The examiner can object to the trade mark application under
Sections 9 and 11 of the Act. Section 9 of the acts talks about absolute
grounds of refusal. If a trade mark is not capable of distinguishing the
goods and services of one entity from another, it can be refused to get
registered under the absolute grounds of refusal. A trade mark will be
refused by the registrar if the mark includes any specification related to
the kind of the product/ services, the place of origin or any of the key
characteristics of the goods/services in question.

There are also other relative grounds of refusal for a trade mark
registration:
 If the mark has some possibility of being misunderstood with other
registered marks, then such a mark might get refused.
If a mark is very identical in nature, then it may get refused.
If the mark that is applied for registration is similar to a very famous
or well known trade mark, then it will be refused.

The trade mark can be objected under any of the above mentioned
absolute or relative grounds.

Depending on the examination report, the registrar of the trade mark

determines whether the application must be accepted, rejected, or put up
for ‘show cause’. During a ‘show cause hearing’ subject to the facts, an
application might be rejected, accepted, or accepted with certain
limitations. Rule 33 talks about the objection to acceptance, examination,
and hearing of the trade mark application which is filed for registration.

Preliminary approval and publication of trade mark

Once the trade mark registration application is approved by the registrar,

the next stage is advertisement of the trade mark and publication of the
same in the Trade mark Journal. This publication is done for a period of 4
months. The manner of this advertisement is mentioned in Rule 39, which
says that all the applications are to be advertised as per Section 20(1) and
re-advertised as per Section 20(2) of the Act.

After the absolute or conditional acceptance of the trade mark, the same is
published along with the conditions mentioned by the registrar as per
Section 20(1). In certain cases, the trade mark is also advertised before
acceptance if the registrar has reasons to believe that it is expedient in
nature. If there are any changes or corrections made in the trade mark,
then also the trade mark gets advertised again. For making changes in the
trade mark application, one has to fill TM-M Form. Applicants, along
with the other third parties, can view the trade marks Journal on the
website; it gets published on every Monday.

Trade mark opposition

After the application for registering the trade mark is published in the
journal, an aggrieved party can oppose such registration if they feel that it
infringes their trade mark and its exclusive use. In order to file the notice
of opposition, TM-O Form is to be filed by the party that is opposing the
registration. The applicant then has to file a counter-reply statement
replying to the notice of opposition. This reply consists of arguments and
evidence which prove how the applicant is not trying to infringe the trade
mark of the opposing party. A hearing also takes place where both the
parties have to be present; if the opposing party gets satisfied with the
reply, then the registration can move forward, or else further hearings
take place.

As similar to trade mark applications, while opposing the registration or

replying to it, certain fees are to be paid as well. The fees are prescribed
below:

Online Filing Physical Filing

₹ 2700 ₹ 3000

Within the term of four months of publication in the Trade marks Journal,
if not opposed by a third party, the trade mark will proceed for
registration, and the trade mark authority will proceed to give a
registration certificate. A trade mark usually takes 18-24 months to get
registered, if the trade mark is not being opposed by a third party.

Trade mark registration

The last and the final stage towards the registration process is the trade
mark registration. After conquering all the stages in the entire process, the
trade mark is registered after objection and opposition. It is registered for
10 years.

Nature of trade mark registration

Territorial jurisdiction

If I want to file a trade mark application for my company, how will I

know in which trade mark office to file the same? This is where the
jurisdiction comes into play. Jurisdiction is basically the power of the
court to determine or hear a case which is vested before it.

As per Section 134 of the Act, the registered proprietor can institute a case
in the District Court within whose limits he carries on the business, is
residing, voluntarily, or personally works for the gains. Jurisdictions are
more important, especially in the case of trade marks, because they
include the selling or buying of goods and services.
The trade mark registration is territorial in nature, which means the trade
mark will be protected only in the jurisdiction it registered. If the trade
mark is registered in India, then it will only be protected in India.
Registration of trade marks in India does not entail that they are protected
in other countries as well. All countries have their own established criteria
for registering a trade mark. If the trade mark owner wants to protect the
trade mark in other countries as well, then he will have to register the
same in those countries as well.

In order to make this a little easier, the Madrid Protocol was adopted in
the year 1989.

Madrid protocol

The Madrid Protocol helps the trade mark applicants in registering the
trade mark in more than 120 countries using only a single application for
trade mark registration. The Madrid Protocol is also referred to as
international trade mark registration. This method of registration is a cost
effective and time saving process for registering a trade mark.

For a detailed understanding of the Madrid Protocol and how to register

an international trade mark, you can visit this link.

Timeline for trade mark registration

Stage Particulars TM Time period
 forms
There is no such specific time period to carry out the trade mark. As
soon as the individual or the company decides that they want to use a
Trade mark
1 specific word or symbol as their trade mark, they can conduct a trade
search
mark search and see whether any mark similar to theirs is registered or
not.
This step should be conducted as fast as possible in order to avoid any
Trade mark
other party registering the same mark as you. After the trade mark
application
2 TM-A search is carried out and it is found that the mark that is intended to be
filing and
registered is novel in nature, the company or individual can move
filling
ahead to filling the trade mark application. `
After the application for registering the trade mark is filed, the registrar
Trade mark
of trade marks conducts an examination to ensure that the mark is in
3 application
compliance with all laws and rules of trade marks. The time period for
examination
this stage depends on the date of filing of the application.
Reply to the After a thorough examination by the trade mark office, an examination
4 examination report is sent. The applicant has to reply to such an examination report
report within one month from the date on which it is received.
Trade mark The trade mark application gets published in the trade mark journal for
5
publication a period of 4 months.
Any third party is free to oppose the trade mark registration within 4
Trade mark TM- months from the date of advertisement in the trade mark journal if they
6
opposition O feel it infringes their rights. If no opposition is done by any third
parties, the trade mark is registered after the 4 months end.
The trade mark gets registered as per the decision taken in the hearing
Trade mark
7 if the application is opposed. If there is no opposition, the trade mark
registration
gets published after the 4 months end.
The trade mark registration has to be renewed every 10 years by the
Trade mark
8 trade mark owner. Non renewal can lead to the trade mark being open
renewal
to the public domain, which means everyone can use such a mark.

Symbols used during the trade mark registration process

™ symbol

The ™ symbol is used by the applicant when he has applied for the trade
mark registration with the registrar. This symbol can be utilised as soon as
the application for registering the trade mark is submitted to the registrar
either in online or offline mode. The ™ symbol helps in making the other
competitors in the market aware that this mark is already in the process of
registration and its infringement in the future may lead to legal disputes.

This symbol can only be used when the trade mark application has been
submitted. The symbol does not mean that the trade mark protection is
already granted; it is just used as a warning to inform the other parties
that this symbol is already in process, so they can register some other
mark and not the one that is already in process of registration. The ™
symbol is used for product marks, while the SM symbol is used for
services marks which are in the process of registration.

® symbol

® symbol can be used when the trade mark is registered. The symbol
signifies that the mark is legally registered and protected under the Act
and Rules laid down to protect registered trade marks. A company or an
individual cannot use this symbol if their trade mark is not registered.

When any third party uses a trade mark with the ® symbol, they are
infringing the rights of the owner, which is not allowed by the law, and
they can be fined for the same. In case of a criminal proceeding, a fine or
imprisonment which can be extended up to three years as mentioned in
Section 107 of the Act. While in case of civil proceedings a permanent or
temporary injunction can be ordered by the court, damages can be
claimed, and the profits which were made with such a trade mark can be
asked to be returned as well.
Steps to be taken after the trade mark is registered
It does not end with just registering the trade mark with the trade marks
office. After the trade mark is registered, it has to be regularly renewed
after 10 years. If the trade mark is not renewed, then it will go back in the
public domain and any other party can register it, and the previous owner
will lose the exclusive right to use the trade mark. To renew the trade
mark, TM-R Form is to be filled and filed by the trade mark owner.

The next important step after the trade mark is registered is to monitor
the trade mark. In order to check whether other parties are not registering
any similar or identical trade mark, monitoring the registered mark is
vital. If during the monitoring it is found that a mark that is similar in
nature and can cause confusion in the eyes of the consumers of your
goods or services then you can oppose such registration. The same can be
opposed after it is advertised in the Trade marks Journal using TM-O
Form.

Conclusion
Trade marks are a cost effective way of advertising your business, as a
trade mark is helpful in brand recognition, which further helps in
promoting the brand along with providing legal protection. It is
important to register a trade mark as soon as possible. A registered trade
mark acts as a vital intangible asset for the company, which helps them in
protecting their goods or services if any third party infringes on their
right. A registered trade mark can only be used by a third party if prior
permission is taken from them. When a company/individual registers
their trade mark, they increase the goodwill, net worth, and business
value of the company. There are many other benefits which can be availed
by companies/individuals who have registered a trade mark from the
company.

Frequently Asked Questions (FAQs)

For how many years can a trade mark be registered?

The trade mark is registered for the period of ten years in India from the
date on which the application was filed as per Section 25 of the Act.

Do I have to register the trade mark every ten years?

The trade mark has to be registered only once. After that, the trade mark
owner has to simply keep on renewing the registration till he wants to use
the mark for his business.

How long is the trade mark process in India?

The entire process of registering a trade mark takes approximately 18-24
months. The entire process of registration depends on various other
relative factors, like trade mark opposition.

What is the first step in registering a trade mark in India?

The first and foremost step in registering a trade mark in India is

conducting a trade mark search. This step ensures whether other similar
or identical trade marks are already registered or proposed to be used by
anyone.

When do I use the ™ symbol in the process of trade mark

registration?

The ™ symbol can only be used when the application for registering a
trade mark is filed in the office of trade marks Registry.

Can I make changes in the trade mark application after it

is submitted?

The changes can be made in the application of the trade mark, which is
submitted to the registrar for registration. But the changes should be
minor in nature and should not change the main essence of the mark
which is applied for registration.

Will my trade mark be protected in other countries if I

register it in India?

The trade mark protection is territorial in nature. For instance, by

registering a trade mark in India, you can get the trade mark protected
only in India. If you want to use the same trade mark in America, you will
have to register the same there as per their rules and laws. However,
through the Madrid Protocol, you can protect your trade mark in several
countries by only applying once.

Can a trade mark be used without registering?

Using a trade mark without registration can lead to infringement of the
rights of the registered trade mark. Registering a trade mark is not
mandatory, but it is always advised to register the trade mark to protect
from third party infringement. trade mark registration establishes the
legal right.

References
Microsoft Word – SoP_TM_Processing of TM Application in TMR
27.10.2022 (ipindia.gov.in)
Manual of trade marks (ipindia.gov.in)
(PDF) trade mark Registration Process in India (researchgate.net)
Handbook-on-trade mark-registration.pdf (msmedithrissur.gov.in)
trade mark Registration in India (ipindia.gov.in)
Territorial Jurisdiction Under trade mark And Copyright Law In India
(livelaw.in)

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