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TerraLex Cross-Border Guide to Cross-Border Trademark Guide
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India Cross-Border Trademark Guide Guide
- Authors:
- Dipak Rao
- Date posted:
- 13/10/2022
- Last update:
- 01/05/2025
Generalities
1.1. Simple effective use in commerce?
Yes.
1.2. Registration?
Yes.
1.3. Cautionary notice?
No.
1.4. Intensive use (notoriety)?
Yes.
1.5. Public recognition?
Yes.
1.6. Well-known character?
Yes.
1.7. Other (if yes, please specify)?
N/A
Registrable types of mark
See below
2.1. Individual mark?
Yes.
2.2. Collective mark?
Yes.
2.3. Certification mark?
Yes.
2.4. Well-known mark?
Yes.
2.5. Other (if yes, please specify)?
N/A
Registrable forms of mark
See below
3.1. Word mark?
Yes.
3.2. Figurative mark with word elements?
Yes.
3.3. Figurative mark?
Yes.
3.4. Shape mark?
Yes.
3.5. Shape mark with word elements?
Yes.
3.6. Position mark?
Yes.
3.7. Pattern mark?
Yes, if distinctive.
3.8. Color (single) mark?
Yes.
3.9. Color (combination) mark?
Yes.
3.10. Sound mark?
Yes.
3.11. Motion mark?
Yes.
3.12. Multimedia mark?
Yes.
3.13. Hologram mark?
Yes, as a figurative mark.
3.14. Other (if yes, please specify)?
N/A
Possibility of claiming a foreign priority
Yes.
4.1. If yes, what is the time limit (months from date of…)?
In accordance with the Paris Convention, a foreign priority may be claimed in India, within 6 months from the date of the first application made in the convention country.
Classification of goods and services
See below
5.1. Nice classification adopted (if yes, indicate applicable version)?
Yes. The current version is the current edition of the International Classification of Goods and Services (NICE Classification) published by the WIPO; presently Eleventh Edition, Version 2021.
5.2. Local subclass system?
No.
Possible claims against new application
See below
6.1. Opposition proceedings implemented in trademark law?
Yes.
6.1.1. If yes, is the basis for opposition a prior registered trademark?
Yes.
6.1.2. If yes, is the basis for opposition a prior pending trademark application?
Yes.
6.1.3. If yes, is the basis for opposition a non-registered trademark in use?
Yes.
6.1.4. If yes, is the basis for opposition a non-registered notorious/famous mark?
Yes.
6.1.5. If yes, is the basis for opposition a prior company name/trade name?
No.
6.1.6. If yes, is the basis for opposition absolute grounds?
Yes.
6.1.7. Other (if yes, please specify)?
N/A
Observations from third parties? (If yes, indicate the basis for such observations.)
Yes.
7.1. Prior registered mark?
Yes.
7.2. Prior pending trademark application?
Yes.
7.3. Prior non-registered trademark in use?
Yes.
7.4. Prior non-registered notorious/famous mark?
Yes.
7.5. Prior company/trade name?
No.
7.6. Absolute grounds?
Yes.
7.7. Other (if yes, please specify)?
N/A
Mandatory formalities preliminary to filing application?
No.
8.1. Similarity search
No.
8.1.1. If yes, what is the time frame (weeks/months) and approximate cost?
N/A
8.2. Others?
No.
8.2.1. If yes, what is the time frame (weeks/months) and approximate cost?
N/A
Specification of goods and services
Class system
See below
9.1. Single class system?
Yes.
9.2. Multiclass system?
Yes.
9.2.1. Separate applications for goods and services mandatory?
No.
Possible restrictions on goods/services (e.g. alcoholic beverages, retail services, etc. not allowed, or only class headings eligible, etc.)
Yes.
10.1. If yes, please specify.
Any mark similar to a geographical indicators, customary to current language, which hurts religious sentiments, contains obscene matter, prohibited under Emblems and Names Act, 1950 and prohibited under the List of International Non Proprietary Names (INN).
Special claims/regulations
See below
11.1. Claim of previous use possible?
Yes.
11.1.1. If yes, is proof required (affidavit, use specimens, etc.)?
Yes.
11.1.2. If yes, through which kinds of proceedings can the proof of use be requested (opposition, cancelation, renewal proceedings, etc.)?
Upon filing of the trademark application an Affidavit of Use is to be submitted along with proper evidence, to prove and claim prior use.
11.2. Disclaimer
Yes.
11.3. Previous registration in country of origin required
No.
11.4. Changes in the mark appearance during the application proceedings possible
No.
11.5. Restrictions regarding trademark owner (e.g. trademark protection not eligible for owner from particular countries).
No.
11.5.1. If yes, please specify.
N/A
11.6. Is there any legal term from which the trademark must be used in order to avoid a possible cancellation?
Yes.
11.6.1. If yes, please specify.
A trademark filed on Proposed to be used basis should be put to use within five years of such filing, else the same would be considered as non-use and shall be a ground for cancellation/rectification proceedings.
11.7. Other (if yes, please specify)
N/A
Filing documents required (please indicate whether notarization, apostille, legalization, and/or scanned copies are permitted)
See below
12.1. Power of attorney
Yes (notarization and scanned copies permitted)
12.2. Evidence of pre-registration in country of origin
No.
12.3. Priority documents (if priority claimed)
Yes (notarization and scanned copies permitted).
12.4. Other (if yes, please specify)
Yes, documents pertaining to ‘small entity status’ of the Applicant, to claim reduced official fee.
Late filing of documents
See below
13.1. Is late filing of documents permitted?
Yes.
13.1.1. If yes, please indicate the time limit (days/months from....).
One month from receipt of the ‘Formality Check Notice’, if received.
13.2. Official late filing fee due?
No.
Means for representation of the mark (for instance JPEG with XY pixels)
See below
14.1. Figurative mark with word elements
Logo in .JPEG format not exceeding 8 cm x 8 cm. If the mark consists of words or numbers in scripts other than Hindi or English, the application should also consist of a precise transliteration and translation or each such word and number in English or in Hindi while specifying the language to which the word(s) or number(s) belong.
14.2. Figurative mark
Logo in .JPEG format not exceeding 8 cm x 8 cm.
14.3. Shape mark
A two-dimensional graphic or photographic reproduction consisting of a minimum of three different views of the mark in .JPEG format (8 cm x 8 cm).
14.4. Shape mark with word elements
The logo consisting of the shape in .JPEG format (8 cm x 8 cm). If the mark consists of words or numbers in scripts other than Hindi or English, the application should also consist of a precise transliteration and translation or each such word and number in English or in Hindi while specifying the language to which the word(s) or number(s) belong.
14.5. Position mark
Logo in .JPEG format not exceeding 8 cm x 8 cm.
14.6. Pattern mark
Logo in .JPEG format not exceeding 8 cm x 8 cm.
14.7. Color (single) mark
Logo in .JPEG format not exceeding 8 cm x 8 cm along with the colour code.
14.8. Color (combination) mark
Logo in .JPEG format not exceeding 8 cm x 8 cm in the said combination of colours.
14.9. Sound mark
MP3 format not exceeding thirty seconds’ length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations.
14.10. Motion mark
Not specifically provided for. However, in general practice, Motion Marks are represented graphically through a series of .JPEG images clearly demonstrating the movement or animation.
14.11. Multimedia mark
Not specifically provided for. The mark may be a combination of a Motion Mark and a Sound Mark, in which case, an MP4 file may be filed along with the application.
14.12. Hologram mark
Representation of each of the various views depicted in the hologram in .JPEG format (8 cm x 8 cm).
Local legal representatives for foreign applicants
See below
15.1. Are local legal representatives mandatory for foreign applicants?
Yes.
15.2. Possibility of having representatives domiciled in another country?
No.
15.2.1. If yes, please specify the countries.
N/A
Examination
See below
16.1. Is there formal examination?
Yes.
16.1.1. If yes, does the formal examination take place prior to the publication of the application?
Yes, formal examination takes place prior to the publication.
16.2. Is there examination on absolute grounds?
Yes.
16.3. Is there examination on relative grounds?
Yes.
16.4. Can relative grounds be objected by the Trademark Office or only by the prior rights' owners?
Yes.
16.5. Are letters of consent admissible to overcome ex-officio citations of prior marks?
Yes.
16.5.1. If yes, is notarization or legalization required?
Yes, notarization is required.
16.6. Is there an examination timeframe if no official objections are raised?
Yes.
Publication
See below
17.1. Publication before registration?
Yes.
17.2. Publication after registration?
No.
17.3. Publication in trademark Gazette?
Yes.
17.4. Publication in local newspapers?
No.
17.5. Official publication fee due?
No.
Registration
See below
18.1. Certificate of Registration in paper form?
No.
18.2. Certificate of Registration in electronic form?
Yes.
18.3. Term of protection of the mark? Please include term details
Yes, ten years.
18.3.1. As from priority date?
No.
18.3.2. As from filing date?
Yes.
18.3.3. As from registration date?
No.
18.3.4. As from actual registration date?
No.
18.3.5. As from date of issuance of Certificate of Registration?
No.
18.3.6. Other (if yes, please specify)
N/A
18.4. End of grace period of use? Please include term details
Yes, one year.
18.4.1. As from official registration date?
No.
18.4.2. As from actual registration date?
No.
18.4.3. As from end of opposition deadline?
No.
18.4.4. As from conclusion of opposition proceedings (if any)?
No.
18.4.5. Other (if yes, please specify)
The grace period for use of a registered trademark runs for a period of 1 year from the expiry of the ten year registration period.
18.5. How long can we expect a decision on the application by BPTO?
TM Office is required to complete the procedure within 18 months from the date of filing; unless opposed.
Official fees due at the time
See below
19.1. Filing
Yes.
19.2. Publication
No.
19.3. Registration
No.
19.4. Other (if yes, please specify)
Yes, any amendment and renewal.
19.5. Link to the official website of the Trademark Office where the fees are accessible and updated.
Renewal
Documents required (please indicate whether notarization, apostille, legalization, and/or scanned copies are permitted)
See below
20.1. Power of attorney
Yes (notarization and scanned copies permitted).
20.2. Original registration certificate
No.
20.3. Affidavit of use
No.
20.4. Evidence of use
No.
20.5. Others (if yes, please specify)
N/A
Is the late filing of documents admissible? If yes, please indicate the time limit.
No.
21.1. Official late filing fee due?
Yes.
Is there a renewal grace period provided for by law? If yes, please indicate the timing.
Yes, within one year from expiration.
Special maintenance requirements
See below
23.1. First declaration of use?
Yes.
23.2. Time to file?
No.
23.3. Extensions permitted?
No.
23.3.1. If yes, please indicate the number allowed (as the maximum accepted)
N/A
23.4. Documents required (affidavit/declaration, notarized/legalized, evidence of use, subject to official fees)?
Yes (affidavit/declaration, notarized/legalized, evidence of use, subject to official fees).
23.5. Second declaration of use? If other, please specify.
No.
23.6. Time to file?
No.
23.7. Extensions permitted?
No.
23.7.1. If yes, please indicate the number allowed (as the maximum accepted).
N/A
23.8. Documents required (affidavit/declaration, notarized/legalized, evidence of use, subject to official fees)?
No.
Recording of changes/limitation
See below
24.1 Limitations of lists of goods/services?
Yes.
24.1.1. Possible at any stage or only after registration?
Yes.
24.1.2. Official fees due?
Yes.
24.2. Change in name or address of owner?
Yes.
24.2.1. Possible at any stage or only after registration?
At any stage.
24.2.2. Documents required (original or scanned)?
Yes, scanned followed by original.
24.2.3. Official fees due?
Yes.
24.3. Change in ownership?
Yes.
24.3.1. Possible at any stage or only after registration?
At any stage.
24.3.2. Documents required (original or scanned)?
Yes, scanned followed by original.
24.3.3. Official fees due?
Yes.
24.4. Change of representative?
Yes.
24.4.1. Possible at any stage or only after registration?
At any stage.
24.4.2. Documents required (original or scanned)?
Yes, power of attorney; scanned followed by original.
24.4.3. Official fees due?
Yes.
Link to the official website of the Trademark Office where the official fees are accessible and updated.
Disclaimer: This guide contains summaries of general principles of law. It is not a substitute for specific legal advice and should not be relied upon in relation to the application of the law or subject matter covered.