India: Trademark procedures and strategies
The Trademarks Act 1999 and the Trademarks Rules 2017 are the relevant laws in India.
Unregistered trademarks are protectable in India through passing-off actions in the applicable court. The owner of an unregistered mark does not possess a right to sue for infringement. However, such an owner gets common law benefits.
Continuous and extensive use of an unregistered trademark in respect of particular goods and services as well as a sufficient amount of reputation and goodwill gained by such a trademark in respect of those goods and services are required for establishing unregistered rights.
A person who claims to be the owner of the trademark in relation to goods or services may apply for its registration. The following can file a trademark application:
- a natural person;
- a body corporate;
- a partnership firm;
- a trust;
- a society;
- a government department, authority or undertaking; and
- in the case of collective trademarks, a Hindu undivided family, an association of persons or joint owners.
At the time filing a trademark application or during taking over the representation of a trademark, a representative is required to file a signed power of attorney. The power of attorney does not need to be notarised or legalised.
A mark capable of being represented graphically and of distinguishing the goods or services of one person from those of others can be registered as a trademark. A device, label, brand, name, signature, letter, ticket, heading, word, numeral, shape of goods, packaging, and a combination of colour and sound marks can be registered.
Marks that cannot be registered as trademarks include:
- international non-proprietary names; and
- marks that:
- lack distinctive character (non-distinctive marks);
- have become customary in current language or common to trade, or both;
- result from the shape of goods;
- describe the goods or services, or their characteristics (descriptive marks);
- are likely to deceive the public;
- contain scandalous or obscene matter;
- are prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950;
- hurt the religious sentiments of any class or section of the public;
- are identical or similar to an earlier mark for the same goods or services;
- are identical or similar to well-known marks; and
- are protected by copyright law.
If a law of passing off is protecting an unregistered trademark, such a mark cannot be used or registered by other persons as trademarks.
Procedures (for registered marks)
Once the application is filed and all filing formalities are found to be in order, the application is examined on absolute (distinctiveness, descriptiveness, etc) and relative (prior marks on register) grounds of refusal. Once examined, the Trademarks Registry can either issue an examination report based on procedural objections, such as filing a power of attorney or user affidavit, or based on substantive objections on relative and absolute grounds of refusal. If there are no objections, the application is accepted for publication in the Trademarks Journal. If objections are raised, a written response must be filed within one month of receipt of the examination report. However, even if, after reviewing the written response, the examiner continues to maintain the objections, a hearing is scheduled to hear oral arguments in support of the application. If the examiner is satisfied with the response, the mark is advertised in the Trademarks Journal and the mark is open to third-party opposition for a period of four months. If no opposition is filed by any third party within four months of the date of publication, the mark proceeds towards registration.
After the publication of a trademark in the official Trademarks Journal, any person can oppose a trademark by filing a notice of opposition through Form TM-O within four months of the date of publication. Upon receipt of such a notice from the Trademarks Registry, a counterstatement must be filed within the two-month statutory deadline. If the applicant fails to file its counterstatement within this two-month time frame, the application is deemed to have been abandoned. Within two months of service of the counterstatement on the opponent, the opponent is required to file evidence in support of the opposition or a reliance letter on the content of the opposition that is directly served on the applicant. Within two months of receipt of evidence in support of the opposition, the applicant is required to file evidence in support of the application or a reliance letter on the content of the counterstatement that is directly served on the opponent.
If the opponent or the applicant fails to file evidence by way of an affidavit or a reliance letter, the opposition or application is deemed to have been abandoned.
Within one month of receipt of evidence in support of an application, the opponent may file evidence in reply, if any. Upon completion of the evidence submission stage, a hearing is appointed by the Trademarks Registry to decide the matter on merit, allowing or dismissing the opposition.
If an application successfully passes the post-publication opposition period or the matter is decided in favour of the applicant during the opposition hearing, the mark is granted registration for period of 10 years. A registered mark can be renewed for recurring periods of 10 years by filing a renewal request within one year prior to the expiry of the registration.
Removal from register
If any person is aggrieved by an entry of a trademark wrongly remaining in the Trademarks Registry, they may file a petition for cancellation of registration or rectification of the Trademarks Registry to remove the mark.
Any person aggrieved by wrongful entry on the Trademarks Register can present a cancellation or rectification petition on Form TM-O before the Trademarks Registry, depending on the relevant jurisdictional office. After the cancellation or rectification petition is filed with the Trademarks Registry, the Trademarks Registry serves the cancellation or rectification petition on the registered proprietor of a trademark, directing the latter to file a counterstatement. The registered proprietor is required to file its counterstatement within the two-month deadline (extendable by one month) from the service of the cancellation or rectification petition. Pursuant to the filing of the counterstatement, the Trademarks Registry serves a copy of the counterstatement on the petitioner within a period of one month. If the registered proprietor fails to file a counterstatement within three months, the petitioner shall proceed to file evidence in support of the cancellation or rectification petition. Within two months of receipt of the counterstatement, the petitioner is required to file evidence in support of cancellation or rectification, or a reliance letter on the content of the cancellation or rectification petition served on the registered proprietor. Within two months of receipt of evidence in support of cancellation or rectification, the registered proprietor is required to file evidence in support of registration or a reliance letter on the content of the counterstatement served on the petitioner. Within one month of receipt of evidence in support of registration, the petitioner may file evidence in reply, if any. Upon completion of the evidence submission stage, a hearing is appointed by the Trademarks Registry to decide the matter on merit.
A petition for cancellation or rectification of a registered trademark can be filed before the concerned high courts in India based on the jurisdictional office of the trademark registration. The five such courts are the High Courts of Delhi, Bombay, Calcutta, Madras and Gujarat.
A registered trademark becomes vulnerable to non-use cancellation if it has not been used for continuous period of five years and three months from the date on which registration was granted (ie, when the mark is actually entered on the register).
In straightforward cases where the Trademarks Registry does not object to a trademark application on absolute or relative grounds of refusal and not opposed by third party, the mark is granted registration within approximately six to eight months.
If the Trademarks Registry objects to a trademark and, despite the filing of a written response, the application is kept pending for pre-acceptance hearings, it may take between six months and one and a half years for the mark to be listed for such hearings, depending on the jurisdiction. Upon its acceptance and if it successfully passes the no-opposition publication stage, it may take approximately two years for the mark to be granted registration.
If the Trademarks Registry objects to a trademark on absolute or relative grounds of refusal, or both, and upon the filing of a written response, if the application is accepted for publication upon review of the written response and successfully passes the no-opposition publication stage, the mark is granted registration within approximately 10 to 12 months.
The entire contested opposition proceeding, which runs from the filing of a notice of opposition until the final order is passed, is usually concluded within three to five years or more.
A renewal request is recorded and updated with the Trademarks Registry within approximately seven to 21 days.
A merger request is recorded with the Trademarks Registry within approximately six to eight months.
Changes of name
A request for a change of name is recorded and updated with the Trademarks Registry within approximately two to three months (without objections).
Availability of searches
Searches are available for records from the 1940s onwards. Identical and similar trademark searches are freely available on the Trademarks Registry’s website, as are searches per class and searches of all classes (in individual classes). Searches that include trade names and slogans and traditional graphic marks are also freely available on the Trademarks Registry website. Searches of non-traditional graphic marks are not available.
Causes for action include infringement of registered trademark rights and passing-off claims based on common law rights. For details on administrative proceedings, please refer to the Procedures (for registered marks) section.
Civil remedies are available in the form of interim and permanent injunction orders against defendants, punitive damages, and destruction of infringing goods. Criminal remedies are available in the form of seizure of infringing goods, imprisonment and penalties. Administrative remedies are available in the form of refusal of the infringing mark from registration, and a ban on import and export of infringing goods, which is governed by the Customs Authority.
Civil suits for trademark infringement or passing off shall be filed before a district court in the relevant jurisdiction to try the suit. Additionally, high courts with original jurisdiction – such as the High Courts of Bombay, Calcutta, Delhi, Madras and Himachal Pradesh – can also entertain trademark disputes. An action for trademark infringement or passing off can be initiated by filing a plaint before the appropriate court wherein reliefs are sought. Opposition can be filed before the various jurisdictional offices of the Trademarks Registry. Custom recordal applications for registered trademarks can be made before the Customs Authority.
The pretrial procedure in a civil suit comprises several stages that are preceded by the filing of the suit (plaint) before the appropriate court. However, the plaintiff is first required to institute pre-litigation mediation except in a case where urgent interim relief is being sought. The court could be the state’s district court or its high court (based on original jurisdiction). The stages of a civil suit until trial are described below.
- Stage one: admission of suit and hearing on the ex parte injunction application. The filed suit is accompanied by an interim injunction application under Order 39, Rules 1 and 2, seeking ex parte interim relief. For the first hearing, the court reviews the grounds of injunction pleaded in the suit and interim injunction application. If the court decides that the plaintiff has made a suitable case for the grant of an interim injunction and the balance of convenience is in favour of the plaintiff, the court passes an ex parte injunction order and simultaneously issues a court summons to the defendant to appear in further hearings and to file its written statement within the stipulated time frame. If the court decides against passing an ex parte injunction order and deems it necessary that the defendant be present to defend its claims, the court issues a court summons to the defendant to appear in further hearings and to file its written statement within the stipulated time frame.
- Stage two: service of court summons on the defendant. To comply with Order 39, Rule 3, the plaintiff and court’s registry are mandated to serve copies of the plaint and supporting exhibits alongside the court order to the defendant through postal and courier services as well as through electronic communication in the form of emails.
- Stage three: appearance of the defendant and filing its written statement. The defendant is allowed a period of a few weeks or months upon the service of court summons to file a written statement in its defence and appear in the second court hearing. The defendant, at this stage, generally also files a response to the plaintiff’s interim injunction application under Order 39, Rules 1 and 2. In cases where an ex parte injunction order has been passed against the defendant, the defendant is at liberty to file an application seeking the vacation of the interim injunction order under Order 39, Rule 4.
- Stage four: filing of reply, rejoinder and replication by parties involved. Both sides have equal opportunity to file responses to the applications filed by the other side. For example, under Order 39, Rules 1 and 2, the plaintiff can file:
- a replication to the written statement filed by the defendant;
- a response or reply to the defendant’s application seeking vacation of the interim injunction order; and
- a rejoinder to its interim injunction application.
- Stage five: the court decides the plaintiff’s application for the grant of an interim injunction based on contentions put forth by both sides.
- Stage six: admission or denial of documents filed by both sides.
- Stage seven: framing of issues by the court.
- Stage eight: the plaintiff files its evidence under affidavit and provides a list of witnesses. Thereafter, trial begins (ie, exhibiting documents filed by the plaintiff and cross-examination of its witnesses by the defendant). The next step involves the same procedure for the defendant.
Final arguments are followed by the court’s final judgment.
A complaint against an infringer can be filed by the holder of the trademark registration or its authorised person before the police or the magistrate. Under section 103 and 104 of the Trademarks Act 1999, acts such as applying false trademarks or trade descriptions (or both) to goods and services, or possession of any instrument for falsifying or falsely applying a trademark, are cognisable offences and the police can arrest an infringer without a warrant. These offences are punishable with imprisonment of between six months and three years or a fine, or both. The fine may be between 50,000 and 200,000 Indian rupees.
The procedure for filing a direct complaint before the police for infringement of trademark is provided under Section 115 of the Trademarks Act 1999. Under this section, any police officer not below the rank of deputy superintendent or equivalent, if satisfied that any of such offences has been committed, shall search and seize (without warrant) any goods, die, blocks, machines, plates or other instruments or things involved in committing the offence. However, the police must seek an opinion from the Trademarks Registry on the facts of the case before they can initiate any action against an infringer or counterfeiter.
No court inferior to that of metropolitan magistrate or judicial magistrate of the first class can try offences under Trademarks Act 1999. To initiate criminal proceedings against the infringer before the magistrate, the holder of the trademark may also file a criminal complaint under Section 156 of the Code of Criminal Procedure 1973.
Specialist trademark or IP courts
Subsequent to the abolition of the Intellectual Property Appellate Board in April 2021, the Intellectual Property Division was established in the High Court of Delhi to hear IP cases. The other high courts are also in the process of establishing special divisions to hear IP cases.
The cost of litigation is recoverable from the defendant, and the Commercial Courts Act 2015 specifically provides the mechanisms for the payment of costs. However, recovery of costs depends upon several factors, including:
- merits of the case;
- quantum of loss;
- evidence submitted before the court;
- balance of convenience;
- dishonest intention of the defendant; and
- injury and monetary loss incurred by the plaintiff.
Interim relief is available and a civil suit for trademark infringement and passing off can be filed within three years of the date of the cause of action.
It generally takes anywhere between two and three years – sometimes more – for proceedings to reach trial from the commencement of a civil suit.
Ownership changes and right transfers
For filing assignment requests, the required documents are a signed power of attorney from the assignee, a notarised assignment deed signed by both assignor and assignee, and a notarised affidavit of no legal proceeding signed by the assignee. All documents that must be filed along with the assignment request are required to be notarised.
In India, Section 48(2) of the Trademarks Act 1999 envisages that the permitted use of a trademark by a registered user is deemed to be use by the proprietor of the trademark.
There are overlaps between trademark rights and other rights. If the infringing mark has a device or logo that is similar to the artistic work of the plaintiff, the use thereof can be injuncted by claiming both trademark and copyright infringement.
For enforcement action involving trade dress, logo or packaging (ie, registered lettered trademark coupled with artistic elements under the Copyright Act 1957), the holder of the trademark can sue the infringer under both trademark and copyright infringement.
The Trademarks Act 1999 recognises the use of the mark on the internet depending upon the facts and circumstances of the case. The act contains remedies against the misuse of marks on the internet. There are no specific provisions for domain names, websites, hyperlinks, online ads or metatags, but the Trademarks Act 1999 captures misuse of trademarks in such cases as infringements. Recourses are administrative.
The right holder can file a suit for infringement and passing off, and can also file a domain name complaint before the National Internet Exchange of India (NIXI) and WIPO.
The .IN Domain Name Dispute Resolution Policy (INDRP) and the .IN Registry created by the NIXI are responsible for regulating the ccTLD. Any dispute relating to .in and .co.in domains are resolved in accordance with the INDRP and the INDRP Rules of Procedure.
|Representative requires a power of attorney when filing? Legalised/notarised?||Examination for relative grounds for refusal based on earlier rights?||Registrable unconventional marks|
|Yes: the representative is required to file a signed power of attorney, but notarisation and legalisation are not required.||Yes: an objection based on prior identical or similar marks for the same or similar descriptions of goods or services.||Combinations of colours; sounds; motions; and shapes of goods.|
|Protection for unregistered rights?||Specific/increased protection for well-known marks?||Opposition procedure available? Term from publication?|
|Yes: a bona fide prior user of an unregistered trademark can sue subsequent parties on the grounds of passing off.||Yes: protection granted to well-known marks is quite stringent.||Yes: opposition against published marks can be filed within four months of the date of publication.|
|Removal from register|
|Can a registration be removed for non-use? Term and start date?||Are proceedings available to remove a mark that has become generic?||Are proceedings available to remove a mark that was incorrectly registered?|
|Yes: continuous non- use for five years and three months from the registration date makes a mark vulnerable to cancellation.||Yes||Yes|
|Specialist IP/trademark court?||Punitive damages available?||Interim injunctions available? Time limit?|
|Yes||Yes||Yes: within a week to a few months.|
|Ownership changes||Online issues|
|Is registration mandatory for assignment/licensing documents?||National anti-cybersquatting provisions?||National alternative dispute resolution policy (DRP) for local ccTLD available?|
|No: both registered and unregistered trademarks can be assigned, and the recordal of a licence is possible only for registered trademarks.||No||Yes|