Understanding Brand Names, Logo Or Trademark Registration In India
“What’s in the name? A rose would still smell sweet even if it was called by a different name.” However, whenever a person says ‘rose’, the brain recognizes and imagines the sweet smell and fragrance of a rose.
Similarly, whenever an image of a white flying bird in a blue background appears the first thought that comes in the brain is the name ‘TWITTER’, when the brain sees a half eaten apple, immediately the name ‘APPLE’ rings a bell, a purple color wrapping immediately points towards ‘CADBURY DAIRY MILK’. This is the power of a brand name, logo or trademark.
A brand name or logo is exclamatory. It acts as a symbol of success and a commitment to the customer.
Understanding Brand Names, Logos and Trademarks
A logo is a graphic mark, emblem, symbol or stylized name used to identify a company, organization, product, or brand. It may take the form of an abstract or figurative design, or it may present as a stylized version of the company’s name if it has sufficient brand recognition. A logo can be understood as a design, mark, graphic or symbol that represents a product or service which an organization or a business is offering
Brand names, Logos or Trademark offer a unique identity to business entities to attract consumers in a highly competitive market environment..
Importance of having a Brand Name, Logo or Trademark
- It grabs attention
- It makes a strong first impression
- It’s the foundation of the brand identity
- It’s memorable
- It separates a brand from competition
- It fosters brand loyalty
- It invites new customers to get to know the brand
To ensure identifiability with logos, intricacies are critical and consideration must be paid to every single component of the logo, including colors, shapes, and fonts. A well-designed logo indicates the nature of administrations and merchandise offered by an organization, and the business foundation of an organization, to the relevant customers’ class.
Importance of Registering a Brand Name, Logo or Trademark
- It provides an exclusive right to use
- It serves as an acknowledgement to quality of the associated brands in the minds of the consumer
- It serves as a unique identifier for the brand
- It protects the goodwill and reputation of the brand
- It enhances the market value of the brand
- It leads to creation of an intangible asset for the business
- It gives a legal right to stop a person from any unauthorized use of the logo
Creating the Right Brand Name, Logo or Trademark
- It should be Memorable
- It should be Meaningful
- It should be Likeable
- It should be Transferable
- It should be Adaptable
- It should be Protectable
Protection of Logo as Trademarks in India
A brand name, logo or a trademark is perceived as a property by the virtue of law. They enable consumers to identify a business entity or brand distinctively. It can be protected under the Indian Trademark Law. Trademark is defined under Section 2 (zb) of the Trade Marks Act, 1999 as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.
Trademark is an intellectual property that distinguishes the goods or services of one business from that of the others. The key requirement for a trademark to be protected is highly dependent on its distinctiveness. Once trademark protection is attained, the law enables to impede the inappropriate use of the brand and also protects the right for trademark infringement lawsuits in case of an infringement.
Trademark is not limited to the brand names or slogans but can offer protection for the Logo itself. Further, it also offers protection to the elements of the logo, like names, fonts, colors, typography, shapes, etc., that are not protected by copyright. Protecting a logo with a trademark is vital in maintaining the brand equity that it can help to build and preventing the marketing of fraudulent copycat products.
Brand Names, Logo Or Trademark Registration In India
Registering a logo under the Trademark Law includes following steps:
- A trademark application in India can be filed for a single-class or multiple classes. Once a trademark application is filed with the requisite documents and details, the Registry issues an official receipt towards trademark filing.
- After filing, the application goes through a preliminary check also known as Formalities check pass. Under this, the Registry verifies whether the trademark application has been filed by the applicant in the prescribed manner or not.
- Thereafter, the trademark application is examined by the Registry. If there are any objection against the trademark under Section 9 and 11 of the Trademark Act, then an examination report is issued by the Registry.
- The applicant has to file a reply to the examination report/ office action within one month from the date of receipt of examination report.
- If during hearing the mark is accepted, the Examiner will advertise the mark in Trademark Journal.
- After publication in the Trademark Journal, the mark is open to opposition by third parties. An opposition against the mark can be filed within 4 months from the date on which the mark was published in the Trademark Journal.
- If no opposition is filed against the trademark during the prescribed period, then the mark proceeds towards registration.
Additionally, a logo can also be protected under the India Copyright Law as a work of artistic creation, as sometimes a logo includes certain artistic or design elements. However, protecting it under Copyright Law has its own limitations.
Remedies against any infringement of Brand Name, Logo or Trademark
There are several remedies available against any infringement of a Brand Name, Logo or Trademark in India:
- Civil Action– The Competent Courts can be moved for grant of relief of injunction or damages against infringement and/or passing off.
- Criminal Proceedings– Criminal complaints can also be filed against persons who has infringed in addition to a civil action.
- Administrative Remedies– Notice of opposition can be filed against trade mark applications published in the Trade Marks Journal. Proceedings can be initiated for rectification/cancellation of registered trademarks before the Registrar of Trade Marks.
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A trademark is an exclusive right given for a period of 10 years from the date on which the mark was filed and the same can be further renewed in every 10 years. Hence, it would not be wrong in stating that a trademark is for perpetuity, if it is renewed timely. This can give rise to a misconception that only registering the trademark is sufficient. However, this is not the case. It is mandatory for the registered proprietor to commercially exploit the trademark i.e. use the trademark, otherwise any third party can file an application before the Indian Trademark Registry for removal of the trademark.
Trademark Removal in India and Non-Use of the Mark
Can a trade mark be removed in India due to Non-Use or if a trademark is not being used after registration?
Yes, if a registered trademark in India has not been used for a continuous period of five years three months from the date on which the trade mark is actually entered in the register, it can be removed on an application by a third party for rectification or cancellation made in prescribed manner by filing request before Trade Marks Office in India.
Trademark Removal under Trade Marks Act, 1999
As per Section 47(1) of the Trade Marks Ac, 1999 a registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the registrar or the appellate Board by any person aggrieved on the ground either—-
(a) that the trade mark was registered without any bona fide intentions on the part of the applicant for registration that it should be used in relation to those goods or service by him or, in a case to which the provisions of section 46 apply, by the company concerned or the registered user, as the case may be and that there has, in fact been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application or
(b) that up to a date three months before the date of the applications a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being.
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Understanding Trademark Application Amendment in India – Process, Cost & Fees
Amendment of Trademark Application- India
Section 22 of the Trade Marks Act, 1999 states that ‘The Registrar may, on such terms as he thinks just, at anytime, whether before or after acceptance of an application for registration under section 18, permit the correction of any error in or in connection with the application or permit an amendment of the application.’
Further, Rule 37 of Trade Marks Rules, 2017 states that an applicant for registration of a trademark may, whether before or after acceptance of his application but before the registration of the trademark, apply in Form TM-M accompanied by the prescribed fee for the correction of any error in or in connection with his application or any amendment of his application.
Reasons for Amendment of Trademark Application
There could be various reasons for amendment of Trademark Application. The reasons are listed out in Section 58 of the Trademarks Act, 1999. These are:
- correct any error in the name, address or description of the registered proprietor of a trade mark, or any other entry relating to the trade mark.
- enter any change in the name, address or description of the person who is registered as proprietor of a trade mark
- cancel the entry of a trade mark on the register
- strike out any goods or classes of goods or services from those in respect of which a trade mark is registered
- add to or alter the trade mark in any manner not substantially affecting the identity thereof
It is pertinent to mention here that as per Section 60 of the Trademarks Act, 1999 the Registrar shall not make any amendment of the register which would have the effect of adding any goods or classes of goods or service to those in respect of which a trade mark is registered (whether in one or more classes) immediately before the amendment is to be made or of antedating the registration of a trade mark in respect of any goods or services.
Amendment to Trademark Application – Procedure
Amendments to a trademark application in India can be made by filing a request with the Indian Trademark Registry. The applicant needs to file the request as per form prescribed under the Trade Marks Act, 1999. The prescribed forms are:
- Form TM-M if the Trademark application is pending for registration
- Form TM-P if the Trademark is registered
Cost of making amendment in a trademark application in India
The Official Fees for making amendment in a trademark application in India is as follows:
- For physically filing (non-online route)- INR 1000
- For online filing or e-filing – INR900
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Trademark Refusal in India
To get statutory protection under the Trade Marks Act, 1999 it is mandatory to register a trademark. Once an application for registration for trademark is filed, the next step is examination of the trademark application by the Indian Trademark Registry. The Trademark Registry while examining the mark considers various Relative and Absolute Grounds of Refusal.
Therefore, it becomes imperative to know and understand the various grounds for refusal of trademark application in India, as it would be helpful in preventing or overcoming trademark refusal in India.
Grounds for Trademark Refusal in India
Trademark Application in India can be refused under two grounds:
a) Absolute grounds: Section 9 of the Trademark Act, 1999 lists down the absolute grounds for refusal of trademark application. The absolute grounds for refusal of trademark application in India inter alia includes that the trademark is devoid of any distinctive character, trademark consists of marks which designate the kind, quality, quantity values, geographical origins or time or production of the goods or services or the trademark is such that it causes confusion or deceives public etc.
b) Relative grounds: Section 11 provides relative grounds for refusal of a trademark application in India. The Relative grounds for refusal of trademark application in India inter alia includes that the trademark is similar or deceptively similar to an earlier trademark, similarity to an earlier trademark and the identity or similarity of the goods and services etc.
It is pertinent to mention here that while refusing a trademark application the Registrar is duty bound to record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision, as clearly stated in Section 18(5) of the Trade Marks Act, 1999. The same was also reinstated by the Delhi High Court in an order dated October 16, 2019 in Intellectual Property Attorneys Association v. The Controller General of Patents, Designs & Trade Marks & Anr, wherein itwas held that ‘the Registrar of Trade Marks is duty bound to send the copy of the order passed under Section 18(5) of the Trade Marks Act containing the grounds for refusal/conditional acceptance and material used by him in arriving at his decision to the applicant. Rule 36 of the Trade Marks Rules is arbitrary, unreasonable and inconsistent with the mandatory provision of the statute insofar as it empowers the Registry to communicate the decision without the grounds for refusal/conditional acceptance. In that view of the matter, Section 18(5) of the Trade Marks Act shall prevail over Rule 36 of the Trade Marks Rules.’
Overcoming Trademark Refusal in India
An applicant may file a review petition before the Registrar to review its decision within 30 days of such refusal notice. Rule 119 of the Trade Marks Rules 2017 state thats ‘An application to the Registrar for the review of his decision under sub-section (c) of section 127 shall be made in Form TM-M within one month from the date of such decision or within such further period not exceeding one month thereafter as the Registrar may on request allow, and shall be accompanied by a statement setting forth the grounds on which the review is sought.’
Section 127 in The Trade Marks Act, 1999 states the Powers of Registrar and sub clause (c) of the Section states that ‘the Registrar may, on an application made in the prescribed manner, review his own decision’.
Further, on dismissal of review petition, the applicant also has an option of filing an appeal before the Intellectual Property Appellate Board (IPAB) within 3 months of the dismissal.
 W.P.(C) 3851/2019 & CM Appls. 17546/2019, 29362/2019
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The Madrid Protocol along with the Madrid Agreement, gives the legal basis to the Madrid System which is the primary method of international registration of trademarks in multiple Jurisdictions. Administered by the WIPO, the Madrid Protocol allows the trademark owners of its contracting parties to seek protection of their trademarks in multiple countries by filing a single application. Moreover, the Madrid Protocol also allows such applications to be filed in a single language and grants protection to the trademarks in multiple countries upon the payment of a single fee.
For brands filing an international application under Madrid Protocol can be seen as a cost-effective way of getting an international trademark protection.
Important Definitions under Madrid Protocol
Below mentioned are certain important definitions under Madrid Protocol:
- Meaning of Basic application under Madrid Protocol – “Basic application” means an application for the registration of a trademark pending before the Registrar of Trade Marks which is used as a basis for applying for an international registration
- Meaning of Basic registration under Madrid Protocol – “Basic registration” means the registration of a trade mark before the Registrar of Trade Marks which is used as a basis for applying for an international registration
- Meaning of International registration under Madrid Protocol – “International registration” means the registration of a trade mark with the International Bureau of the WIPO, done under the Madrid Protocol
- Meaning of IAOI number under Madrid Protocol – An IAOI number is the Application under Madrid Protocol / International Application number which is generated by the IPO, India upon successful receipt of the Application under Madrid Protocol / International Application
- Meaning of IRDI under Madrid Protocol – “IRDI” means an “International Registration Designating India”, it is a unique number allotted by the Trade Marks Registry to every International Registration in which India has been designated
- Meaning of “designation” under Madrid Protocol – A “designation” means an indication (by ticking a box), in the international trademark application form, of one or more Contracting Parties where it is intended to apply for protection of a mark.
- Meaning of “Office of Origin” under Madrid Protocol – An Office of Origin is the trademark office of the Contracting Party with which the applicant for international registration has the necessary connection (through establishment, domicile or nationality) to be entitled to file an Application under Madrid Protocol / International Application.
- Meaning of Basic Application or Registration mean while filing an application under Madrid Protocol – Basic Application or Registration means the application or registration which is pending or is registered with the Office of Origin, and which is used as the basis of Application under Madrid Protocol / International Application.
Regulation for specification of goods and services under Madrid Protocol
Only the specification of goods and services which is registered with the Office of Origin can be filed/ registered in the application under Madrid Protocol / International Application/ registration.
Regulatory body under Madrid Protocol
International Bureau of World Intellectual Property Organization (IB of WIPO)
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Cost/Fees involved in Filing an International Application under Madrid Protocol
The cost of an international trademark registration includes the basic fee, plus additional costs depending on the nature of your mark, where you want to protect it, and how many classes of goods and services will be covered by your registration.
Types of fees under Madrid Protocol
The fees payable in connection with an application for international registration under the Madrid System comprise:
- the basic fee;
- a complementary fee for each Contracting Party designated; and
- a supplementary fee for each class of goods and services in excess of three.
For certain contracting parties, the complementary fee is replaced by an “individual fee”.
Basic fee for Indian Applicants under Madrid Protocol
CHF 653, where no reproduction of the mark is in color or CHF 903, where any reproduction of the mark is in color.
Basic fee for designations subsequent to the Application under Madrid Protocol
CHF 300 is the basic fee for designations subsequent to the Application
Individual fee under Madrid Protocol
An individual fee is the fixed fee for each country designated in an Application under Madrid Protocol / International Application.
Complimentary fee under Madrid Protocol
A complimentary fee of CHF 100 is to be submitted for the designation of each designated Contracting Party in respect of which an individual fee is not payable.
Fee charged by the Intellectual Property Office (IPO) of India under Madrid Protocol
INR 5000 is charged by the IPO, India as handling fees.
The appropriate office for the submission of fees under Madrid Protocol
The fees for filing an Application under Madrid Protocol / International Application are to be submitted directly by the applicant to the International Bureau of World Intellectual Property Organization (IB of WIPO).
Stage at which fees is to be paid to the IB of WIPO under Madrid Protocol
Basic fees, complimentary fee (if any) and individual fee (if any) are to be paid by the applicant upon receipt of an alert from the IPO, India informing about the transmission of the Application under Madrid Protocol / International Application to IB of WIPO and the amount of Swiss francs (CHF) to be paid directly to WIPO.
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Under Madrid Protocol, who may file an application in India?
A natural person or a legal entity who, has a commercial establishment in, or is a domicile or national of, a country which is signatory to the Madrid Protocol can file an application.
Under Madrid Protocol, which is the appropriate office for Indian applicants to file an International Application?
The Indian IP Office is the appropriate office for Indian applicants to file an International Application.
Under Madrid Protocol, is a Power of Attorney required if an International Application is to be filed through a representative or agent?
Yes, a Power of Attorney is required if an International Application is to be filed through a representative or agent
Under Madrid Protocol, what should the size of a trademark which is to be filed in an Application?
3cm x 3cm to 8cm x 8cm
Under Madrid Protocol, what is the format in which a trademark is to be submitted in an Application?
The format in which a trademark is to be submitted in an Application is .JPEG format
Under Madrid Protocol, what are the languages in which an International Application be filed?
An Application under Madrid Protocol / International Application can be filed in the following three (03) languages: –
Under Madrid Protocol, is it necessary for an applicant to have a Digital Signature Certificate?
Yes, the applicant needs to have a level 3 Digital Signature Certificate of a competent authority recognized by the Intellectual Property Office (IPO) of India.
What are the notifications which the designated office of IPO, India shall communicate to International Bureau of WIPO concerning Basic Application or Registration?
The Designated Office shall also communicate to the International Bureau, if the TMR is aware that any of the following is pending in respect of the basic application or registration, before the expiry of five (05) years from the date of International registration:
- Judicial action concerning the basic registration;
- An action requesting revocation or cancellation of basic registration;
- An appeal against a decision refusing the basic application;
- An application requesting withdrawal of the basic application;
- An opposition to the basic application.
Such notification shall indicate that the action in question has not yet resulted in a final decision and once the decision has become final, the IPO, India shall promptly notify the IB of WIPO accordingly.
Under Madrid Protocol, which law will examine the applications at the concerned designated IP Offices?
The Application under Madrid Protocol / International Applications will be examined as per the local applicable laws of the concerned IP Offices.
Under Madrid Protocol, can priority be claimed in an International Application?
Yes, priority of an earlier filing of the same trademark filed/ registered with the Indian IP Office can be claimed in an Application under Madrid Protocol / International Application.
Under Madrid Protocol, what is the procedure if the response received from the applicant or his representative/ agent is not satisfactory?
The designated office shall send a reminder to the applicant/ agent/ attorney concerned along with its suggestion.
Under Madrid Protocol, what is the time frame for the designated country IP Office to communicate their acceptance or refusal?
The time frame for notifying the acceptance or refusal is 18 months from the date of receipt of the Application under Madrid Protocol / International Application.
Under Madrid Protocol, what will happen if acceptance or refusal is not notified by the designated country IP Office within the aforesaid time frame?
The Application under Madrid Protocol / International Application will automatically proceed to registration.
Under Madrid Protocol, can an Applicant convert its International Registration into National Registration with a designated country?
Yes, an Applicant can convert its International Registration into National Registration by paying the requisite applicable fee.
Under Madrid Protocol, what is the validity of an Application if the same is accepted/ registered by one designated country IP office and refused/ opposed in other?
The validity of an International Registration is not affected in a designated country if it is refused/ opposed in another designated country IP Office.
Under Madrid Protocol, what is the procedure for communication as to such ceasing of effect?
Where the Basic Application or Basic Registration mentioned in the Application under Madrid Protocol / International Application ceases to exist (by way of any refusal, withdrawal or cancellation etc.) within a period of five (05) years from the date of International Registration, the designated officer of the TMR shall notify this fact to the International Bureau of WIPO in Annexure 6 (as per Model form 9) and through the system.
Under Madrid Protocol, what is the validity of the International Registration(s) if the Basic Application or Basic Registration ceases to exist?
The protection resulting from the International Registration(s) ceases to have effect if before the expiry of five (05) years from the date of the International Registration(s), the Basic Application or Registration, as the case may be, ceases to exist (by way of any refusal, withdrawal or cancellation etc.). This process of cancellation of International Registration(s) due to cessation of effect of Basic Application or Registration, as the case may be, is called “CENTRAL ATTACK”.
Under Madrid Protocol, is it possible to file International trademark applications claiming colour?
Yes, International trademark applications claiming colour can be filed.
Under Madrid Protocol, is it possible to file for series marks?
There is no provision for filing of series marks under the Madrid Protocol.
Under Madrid Protocol, is subsequent designation possible?
Yes, additional country (ies) may be designated in International registration through subsequent designation.
Under Madrid Protocol, what is the effective date of such subsequent registration?
The registration of a mark in a subsequently designated country will be effective from the date of filing the application for subsequent designation.
Under Madrid Protocol, can an applicant choose one of the series marks to act as a basis of an Application?
Yes, an applicant can choose one of the series marks to act as a basis of an Application under Madrid Protocol / International Application.
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Trademark Renewal Cost or the official fee for renewing a trademark in India is provided in the “First Schedule” to the Trademark Rules, 2017. The official fee for trademark renewal in India is INR 9000/- for filing application for trademark renewal in one class. The official fee for filing trademark renewal with surcharge is INR 4500/- (surcharge) plus the trademark renewal fee.
The trademark renewal cost (official fees) involved in trademark renewal and trademark restoration are as under:
|S. no.||On what payable||Official Fee (INR)|
|1||On Filing of Trademark renewal for the mark in one class||9000|
|2||On Filing Renewal within 6 months after expiry of last registration of the mark (surcharge)||9000 plus 4500 (surcharge)|
|3||Filing request for restoration of trademark that has been removed from the register||9000 plus 9000 (restoration fees)|
*The cost provide is only the official government fees and does not include any professional fees.
Trademark Renewal- Section 25 of the Trademark Act, 1999 provides for trademark renewal. It states that a registered trademark can be renewed in India for an unlimited number of times on payment of the renewal fees, failing which the mark becomes liable to be removed from the Register of Trademarks. The mark when renewed is valid for a period of 10 years.
How to renew a trademark in India
Trademark Renewal with Surcharge
According to Section 25(3) of the Trademark Act, 1999 request for renewal of trademark can be filed within six months from the expiration of the last registration of the trade mark in the prescribed form alongwith the prescribed fee for renewal and surcharge.
I’ve missed the deadline to renew my Trademark! How can I renew or revive it now?
Trademark Restoration / Reviving a Lapsed Trademark
Section 25(4) of the Trademark Act, 1999 stipulates that where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the trade mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, restore the trade mark and renew the registration of the trade mark.
How to restore a trademark in India
First Schedule appended to the Trademark Rules, 2017 provides for the official fees for trademark renewal and restoration in India and the same can be accessed here.
*The cost informed here is only the official government cost /fees. Professional fees is not included in this. .
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Responding To Office Action / Provisional Refusal For An IRDI Trademark Application
Provisional Refusal of Trademark: Receipt of Advice : As per Section 36E of the Trademark Act, 1999, the Registrar shall on receipt of an advice from the International Bureau about any international registration where India has been designated keep a record of the particulars of that international registration in the prescribed manner.
When does the Trademark office issue an office action or provisional refusal for registering an International Trademark Application?
Where, the Registrar finds that the trademark which is the subject of an international registration designating India, cannot be protected, he shall, before the expiry of refusal period as applicable under Article 5 of the Madrid Protocol, shall in the prescribed manner notify to the International Bureau a provisional refusal against trademark protection.
The advice as referred above is examined ordinarily within a period of two months from the date of receipt of advice received from the International Bureau.
Grounds on which the Registrar Issues Provisional Refusal against IRDI Trademark Application
In the Provisional Refusal, the Registrar objects the trademark application as if such international registration was an application for registration of a trade mark in India. The grounds of trademark refusal as enumerated under Sections 9 and 21 (both inclusive), 63 and 74 applies in relation to an international registration in the same manner as if the trademark was filed in India.
Where there are no grounds for trademark refusal to grant protection, the Registrar shall advertise the particulars concerning international registration under section 20 of the Act in a separate part of the trademarks Journal ordinarily within a period of six months from the date of receipt of advice.
Responding to IRDI Provisional Refusal of Trademark
While responding to provisional refusal of trademark, the applicant will file response to provisional refusal in a manner similar to filing reply to office action against a trademark application filed in India. In general, the Attorney drafts the reply to provisional refusal to overcome the objections as enumerated in the provisional refusal. To file response to provisional refusal, information/documents will be sought from the applicant so that the same can be mentioned in the response to Provisional Refusal
In view of Trade Marks Registry advice in respect of Madrid applications, the Registry now requires the address for service in India has to be recorded in respect of trademark applications, hence a request is to be filed with the Registry to appear as the Attorney on record in respect of an international application with the Trade Marks Registry for submitting a response to the provisional refusal for an IRDI applicaiton.
Official fee for filing the request to appear as the Attorney on record in respect of the captioned application with the Trade Marks Registry is given below.
|On what payable||Official Fee (INR)|
|Official fee for filing the request to appear as the Attorney on record in respect of the captioned application with the Trade Marks Registry||1000|
Deadline for filing the response to Provisional Refusal
The International bureau (WIPO) notifies the agent by email and the date of notification will be considered as date of receipt of provisional refusal by the holder. Therefore, the Reply to provisional refusal is to be filed within 30 days from the date receipt of the notification.
*The above fee does not include the professional fee for drafting reply to provisional refusal.
Read more on
- Madrid Protocol and IRDI Applications
- Grounds for Refusal
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Trademark Opposition Cost & Procedure:
The trademark opposition cost in India is INR 2700 – The official fees for filing notice of opposition against a conflicting trademark application in one class is INR 2700/-. The official fees for filing a Counter statement in reply to the notice of opposition is INR 2700/-. The cost involved at various stages in India are as under:
Stage Wise Cost:
|On what payable||Official Government fees (INR)|
|1st Phase (FOR OPPONENT) Filing of notice of opposition against the application in one class. (Deadline: within 4 months from the date of the Trade Marks Journal in which the said application was published.)||Official fee for filing the notice of opposition in one class would be INR 2,700.|
|2nd Phase (FOR APPLICANT) Filing of Counter Statement in reply to the Notice of Opposition. (Deadline: within 2 months from the date of receipt of the Notice of Opposition.)||Official fee for filing the counter statement would be INR 2,700.|
|3rd Phase (FOR OPPONENT) Filing of evidence by way of an Affidavit in support of the opposition under Rule 45. (Deadline: within 2 months from the date of receipt of the Counter Statement)||No official fee.|
|4th Phase (FOR APPLICANT) Filing of evidence by way of an Affidavit in support of the application under Rule 46. (Deadline: within 2 months from the date of receipt of evidence in support of the opposition.)||No official fee.|
|5th Phase (FOR OPPONENT) Filing of evidence by way of Rejoinder Affidavit in support of the opposition under Rule 47. (Deadline: within 1 month from the date of evidence in support of the application.)||No official fee.|
Trademark Opposition Stages in India
Notice of Opposition- Opposition against trademark registration shall be filed within 4 months from the date on which the mark was advertised in the Trademark Journal. The notice of opposition shall comprise of the grounds of opposition and shall be filed in the prescribed form.
Counter Statement- After receiving the notice of opposition from the Registry, the applicant shall file counter-statement within a period of 2 months from the date of receipt of notice of opposition.
Evidence Submission- On receipt of counter statement, the opponent shall either within 2 months either leave with the Registrar such evidence by way of affidavit as he may desire to adduce in support of his opposition or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition.
Hearing- Thereafter, the Registrar conducts hearing and decides whether the trademark in question is accepted or not. The order of the Registrar in the hearing can be challenged by the aggrieved party before the IPAB (Intellectual Property Appellate Board).
The “First Schedule” appended to the Trademark Rules, 2017 provides for the official fees for trademark opposition cost in India and the same can be accessed at this link here.
- Opposition Flowchart in India
- India TM Opposition
- Trademark Opposition and Opposition Procedure in India
*The above costs are only the official cost / government official fees. Professional fees not included.
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The trademark filing cost or official fees in India is as follows:
The official fee for filing one trademark in one class is INR 4500 for a MSME or Start-up or individual. The official fee for filing one trademark in one class by a company is INR 9000/-. A trademark in India is registered approximately within 9-12 months if there is no major objection or opposition against the trademark.
The trademark filing official fee one (1) trademark application in one (1) class until registration in in a straight forward case is as under:-
|New Trademark Application Filing Cost||Official Fees|
|Official fee for filing one trademark in one class in case of a MSME, Start up||INR 5000/-||INR 4500/-|
|Official fee for filing one trademark in one class in case of company||INR 10000/-||INR 9000/-|
* According to Trademark Rules, 2017, a MSME and Start up can claim a reduction of 50% in the official filing fee of trademark application in India.
Trademark Registration Stages in India
The various stages involved in registration of a trademark in India is as under:
Trademark Filing: A trademark application can be filed in India for both one class as well as multiple classes. The official fee to file a mark is calculated based on the number of classes in which a trademark is to be filed. A trademark application claiming priority from a convention country can also be filed in India within six months from the date of priority.
Trademark Filing in India
Examination Report– Pursuant to filing of trademark application, the application is duly examined by the Registrar of Trademarks in accordance with the provisions of Trademark Act, 1999. The Registrar may accept or refuse the application subject to the provisions of the Act. An application can be refused / objected by the Registrar on relative or absolute grounds. Read about Grounds on which a trademark can be refused in India here.
The Registrar will issue an office action (examination report) normally within 3 months to 6 months from the date of filing depending upon the backlog of Registry. On receipt of the office action, the applicant has to file an appropriate reply alongwith the required documents (if any) for overcoming the objections raised by the Registry against the Trademark. The applicant has to file reply to office action within one month from the date on which the office action was received by the applicant.
Advertisement -After examination and acceptance of reply to office action by the Registrar, the application is advertised in the Trademarks Journal. After being advertised, the trademark is open to opposition by any person.
Opposition– Once the trademark is published in the Trademarks Journal, any aggrieved person can oppose its registration by filing notice of opposition with the Registry within the prescribed time limit.
The time limit for filing notice of opposition is four months from the date on which the mark was published in the Trade Marks Journal.
Trademark Opposition Procedure in India
Trademark Opposition Flowchart
Registration and Renewal– A trademark proceeds for registration in cases where no notice of opposition has been filed against the mark or in cases where the opposition was filed and was subsequently decided in favor of the applicant.
Once registered a trademark is valid for a period of 10 years from the date of filing of the application. A registered trademark can be renewed from time to time on payment of prescribed renewal fees.
How to Renew a Trademark in India?
*Cost of Official fee is based on individual/startup entity only. Professional fee not included.
For more information on Trademark Filing Cost Fees In India, Filing and Cost or Fees for Registration of a Trademark, Brand Name, Logo in India please write to us at firstname.lastname@example.org