Trademarks

What is a trademark?
A trademark or a brand name is a word, device, logo, sound, smell or a combination thereof
that is used to distinguish the goods and services of one manufacturer or service provider from
another manufacturer or service provider.
Legal requirements for registration of trademark in India
The legal requirements to register a trade mark under the Legislation are:

The selected mark should be capable of being represented graphically (that is in the
paper form).
It should be capable of distinguishing the goods or services of one undertaking from
those of others.
It should be used or proposed to be used mark in relation to goods or services for the
purpose of indicating or so as to indicate a connection in the course of trade between
the goods or services and some person have the right to use the mark with or without
identity of that person.

Types of trademarks:

Product trademarks: are those that are affixed to identify goods.

Service trademarks: are used to identify the services of an entity, such as the trademark
for a broadcasting service, retails outlet, etc. They are used in advertising for services.

Certification trademarks: are those that are capable of distinguishing the goods or
services in connection with which it is used in the course of trade and which are
certified by the proprietor with regard to their origin, material, the method of
manufacture, the quality or other specific features

Collective trademarks: are registered in the name of groups, associations or other

organizations for the use of members of the group in their commercial activities to
indicate their membership of the group.

Sound trademarks: are distinctive sound of a particular brand which is identifiable with
the products of a particular concern. For example yoodle of yahoo is a registered
trademark in India.

Smell trademarks: are distinctive smell of a particular product which is identifiable to a

particular brand. These kinds of trademarks are not yet registered in India but are
prevalent in other part of the world.

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Location and Jurisdiction

In India there are five Trademark Offices divided according to the jurisdiction. The applications
are filed at a particular office under whose jurisdiction a particular applicant is doing business
the offices are located at:
Trade Marks Registry, Mumbai (Head Office)
Intellectual Property Bhavan, Near Antop Hill Head Post Office,
S.M. Road , Antop Hill, Mumbai 400037
Tel: 022-2410 1144, 24101177, 24148251, 24112211
Fax: 24120808, 24132295
Jurisdiction: State of Maharashtra, Madhya Pradesh and Goa
Trade Marks Registry, Delhi
Intellectual Property Bhavan, Plot NO.32,
Section 14, Dwarka, Delhi
Tel. 011-28082915/ 16/17 Fax:
Jurisdiction: State of Jammu & Kashmir,
Punjab, Haryana, Uttar Pradesh, Himachal
Pradesh, Union Territory of Delhi and
Chandigarh

Trade Marks Registry, Kolkata,

CP-2, Sector V, 5th floor, I.P.Bhavan, Salt Lake,
Kolkata-700091
(Telfax. 033-23677311
Jurisdiction: State of Arunachal Pradesh,
Assam, Bihar, Orissa, West Bengal, Manipur,
Mizoram, Meghalaya, Sikkim , Tripura and
Union Territory of Nagaland, Andamar &
Nicobar Island.

Trade Marks Registry, Ahmedabad,

15/27 National Chambers, 1st floor,
Ashram road,
Ahmedabad- 380 009.
Tel: 079-26580567
Jurisdiction: The state of Gujarat and
Rajasthan and Union Territory of Damman,
Diu, Dadra and Nagar Haveli

Trade Marks Registry, Chennai

IP building, GST Road, Guindy
Chennai-600032
Tele: 044-22502041, Fax : 044-22502042
Jurisdiction: The state of Andhra Pradesh,
Kerala, Tamil Nadu, Karnataka and Union
Territory of Pondicherry and Lakshadweep
Island.

How to apply for trademark registration:

Types of application:
1. A trademark application in single class / multiple classes;
2. A convention application claiming priority from a member country in a single class /
multiple classes;
3. An application for the registration of collective mark in a single class / multiple classes;
4. An application for registration of a certification mark in a single class / multiple classes;
5. An application for the registration of series mark in a class or in multiple classes;
6. A convention for the registration of series mark in a class or in multiple classes;
7. A convention application for the registration of collective mark in a single class / multiple
classes;
8. A convention application for the registration of a certification mark in a single class /
multiple classes.
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Requirements to file a trademarks application in India: Any person claiming to be the

proprietor of a trade mark can apply for registration by filing an application in the prescribed
form. The application must contain the following elements:
The Details of the Applicant

Name
Address
Citizenship
Legal status and country of incorporation (if the applicant is a company)

Specimen of the Mark: Softcopy specimen of the mark or 10 printed copies on durable paper;
Isometric 2 dimensional views or photographs of the trademark in case of 3D mark or shape of
goods or packaging.
Specification of Goods or Services: The specification of goods and services is required to
identify the class(es) according to which an application is to be file. In India goods and services
are classified according to the ninth edition of NICE classification where goods are classified in
1 to 34 classes and services are classified in 35 to 45 classes.
User: The law requires the applicant to specify whether the Mark is in used in India or not. If in
use, then the date of user is required to be specified. Under Section 46 of the Trade Marks Act,
1999 it has been said that it is not mandatory that trademark should be in use before the date
of filing in India but there must be a bona fide intention to use the trademark in future
otherwise under Section 47 it has been laid down that the trademark may be revoked in case it
is registered without any bona fide intention to use for the applied goods or services; or the
trademark is not in used for a continuous period of five years from the date on which the
trademark is entered in the register.
Priority details: Priority can be claimed if the Indian application is filed within 6 months from
the date of filing of the basic application. The following will be required to claim priority:

Priority application number

Priority country

Priority date

Certified priority document with English Translation (if in language other than English)
Power of Attorney
A Power of Attorney is required to be filed with the application for registration, if it is being
filed through an Agent. A Power of Attorney needs to be stamped appropriately. It is also
possible to file the Power of Attorney subsequent to the filing of the Application. A foreign
applicant needs to have a local address for service in India.

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Registration Process
1. Search (optional): search can be conducted to find out if the mark is similar or identical to
any other mark applied or registered at the Trade Marks Registry.
2. Filing of application: the application can be filed in the prescribed Form and along with
applicable statutory fee (@ INR 2500 per class). The Application is to be made in triplicate
along with five representation sheets in prescribed format. The Application shall be made
at the Office with jurisdiction of the place of business / address of service in India is
located. Upon submitting of Application along with applicable fees, the unique application
number is allotted to each application which is also mentioned on the payment receipt so
issued by the Trade Marks Office. Duly stamped representation sheet is issued within 10-15
days (approximately).
3. Examination: Upon examination of the application in case the Examiner finds any conflicts
or objections to the registration of trademark, the same is communicated by way of office
letter (Examination Report) to the Applicant. The Applicant shall submit his written reply to
the objections within one month of the receipt of Examination Report. If the Examiner is
satisfied with the reply or to the amendment if so made in the application, he then orders
the application for publication (Advertisement) into the Trade Marks Journal.
4. Hearing: if the examiner is not satisfied by the reply filed, then he may fix a hearing in the
matter and the Applicant/ or his agent is called upon to submit his submissions in person at
the Office. If the examiner is satisfied with the submissions made by the applicant/ or his
agent, an order for publication (Advertisement) into the Trade Marks Journal is passed.
5. Publication: Upon order of publication the trademark application is published in Journal
which is published in the next Trade Marks Journal. The Indian Trade Mark Office published
the Trade Marks Journal fortnightly. The application is now open for opposition from any
person. The time period to file opposition in a trademark application is three months (plus
one month extension on request) from the date on which the Trade Marks Journal
containing the trademark application is made available to public.
6. Opposition: any person can oppose to the published trademark application in the
prescribed Form and with applicable fees.
7. Registration: in case the mark remains un-opposed for the prescribed period of total four
months or where the opposition is rejected by the trademarks office the trademark shall be
registered. Registration certificate is issued by the Office. The first period of registration is
for 10 years, and shall be renewed by the Proprietor for each subsequent period of 10
years. The trademark is registered in perpetuity provided that the same is maintained as
per the provisions of the Act, and duly renewed as prescribed.

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Renewal and Restoration (procedures)

Once a trademark is registered in India, it will remain valid for a period of 10 years from the
date of application of the trade mark. A registered trademark will remain valid if the
trademark is renewed accordingly before the expiry of the term of validity of the trademark.
The process for renewal of a trademark registered in India with requisite form and fee is as
follow:
Time period

Fee for a
Trademark (INR)

Before the expiry of six months from

the date of registration
Restoration before expiry of six months
from the date of last registration
Restoration after expiry of six months
but before expiry of one year from the
date of last registration

5000 for each

class
5000 + 3000 for
each class

Fee for a
Fee for
Certification
collective
mark (INR)
marks (INR)
10,000 for each 10,000 for each
class
class
10,000 + 3000
10,000 + 3000
for each class
for each class

10,000 for each

class

15,000 for each 15,000 for each

class
class

Rectification of a trademark
If a trademark is registered with mala fide intentions or in error or in contravention or failure
to observe a condition entered on the register in relation thereto then the registration is liable
to be cancelled by an order passed by the Registrar or Appellate Board.

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Simplified flow-chart of Procedure for Trademark Registration

FILINGOFAPPLICATION

ExaminationofApplication

AdvertisedBeforeAcceptance
Objected

Publication

Replytoexamination
report

NoOpposition

Opposed
REGISTRATION

Showcause
hearing

Noticeof
Opposition

Renewal

CounterStatement

Refused/Withdrawn/
Abandoned

Hearing

Oppositionrejected

Oppositionaccepted

FAQS on Trademarks
WHO CAN USE SYMBOL IN INDIA
Only the proprietor of a trademark whose trademark has been registered in India can use the
symbol in India. Using the symbol unless your mark has been registered in India is
unlawful.
WHEN CAN THE SYMBOL BE USED IN INDIA
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Using this symbol with your trademark simply implies that you claim to be the proprietor of the
trademark. There is no prohibition on the use of the symbol in India.
WHAT IS THE PENALTY PRESCRIBED UNDER CRIMINAL LAWS FOR INFRINGEMENT OF A
TRADEMARK IN INDIA
The penalty for selling or providing services using a false trademark is a minimum of six months
and maximum of three years and with fine not less than Rupees fifty thousand but which may
extend to Rupees two lakh.
WHAT IS THE FUNCTION OF A TRADE MARK?
Under modern business condition a trade mark performs four functions: i. It identifies the
goods or services and its origin; ii. It also creates identity as to the quality of goods / service as
being of certain proprietor; iii. It becomes the face for advertisement of the goods/services,
promotion of goods / services; In common parlance it creates or becomes the brand to which
public at large relates.
WHAT ARE DIFFERENT TYPES OF TRADE MARKS AVAILABLE FOR ADOPTION?
-

Any name (including personal or surname of the applicant or predecessor in business or

the signature of the person), which is not unusual for trade to adopt as a mark.
An invented word or any arbitrary dictionary word or words, not being directly
descriptive of the character or quality of the goods/service.
Letters or numerals or any combination thereof.
The right to proprietorship of a trade mark may be acquired by either registration under
the Act or by use in relation to particular goods or service.
Devices, including fancy devices or symbols
Monograms
Combination of colors or even a single color in combination with a word or device
Shape of goods or their packaging
Marks constituting a 3- dimensional sign.
Sound marks when represented in conventional notation or described in words by being
graphically represented.

WHAT DOES THE REGISTER OF TRADE MARK CONTAIN?

The register of trade mark currently maintained in electronic form contains inter alia the trade
mark the class and goods/ services in respect of which it is registered including particulars
affecting the scope of registration of rights conferred; the address of the proprietors;
particulars of trade or other description of the proprietor; the convention application date (if
applicable); where a trade mark has been registered with the consent of proprietor of an
earlier mark or earlier rights, that fact.
CAN A REGISTERED TRADE MARK BE REMOVED FROM THE REGISTER?
Yes. It can be removed on application to the Registrar on prescribed form on the ground that
the mark is wrongly remaining on the register. The Registrar also can suo moto issue Notice for
removal of a registered trademark.
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Copyright
Copyright is an intellectual property right over the creative works like original literary,
dramatic, musical and artistic works, cinematograph films and sound recordings. It protects the
original expression of ideas and does not protect ideas. In fact, it is a bundle of rights
including, inter alia, rights of reproduction, communication to the public, adaptation and
translation of the work. There could be slight variations in the composition of the rights
depending on the work. The copyright holder can restrict others from using, copying or
reproducing the creation of the copyright holder. Copyright ensures certain minimum
safeguards of the rights of authors over their creations, thereby protecting and rewarding
creativity.
Copyright subsists in
(a) Original literary, dramatic, musical and artistic works;
(b) Cinematographic films; and
(c) Sound recordings.

Literary works include computer programs, tables, and compilations including computer
databases. The literary work has to be textual.

Dramatic work includes any piece of recitation, choreographic work or entertainment in

dumb show, the scenic arrangement or acting form of which is fixed in writing or
otherwise but does not include a cinematographic film. The dramatic work involves not
merely the dialogues but incidents and situations, means the whole composition of
arrangements for the presentation both visual and aural. It is to note that here the
dramatic work does not protect the script of the play or the screenplay.

Musical work means a work consisting of music and includes any graphical notation of
such work but does not include any words or any action intended to be sung, spoken or
performed with the music.

Artistic work means

o A painting, a sculpture (casts and models), a drawing (a diagram, map, chart or
plan), an engraving or a photograph whether or not such work possesses artistic
quality.
o A work of architecture which means any building or structure having an artistic
character or design, or any model for such building or structure. A building to get
copyright there has to be some new element in its design which could be
describes as artistic. Further shall subsist only in the artistic character and design
and shall not extend to processes or methods of construction.
o Any other work of artistic craftsmanship means excluding the artistic works
mentioned in (i) and (ii) but which displays some artistic craftsmanship such as
useful objects as furniture, jewellery, etc.

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Cinematograph film means any work of visual recording on any medium produced
through a process from which a moving image may be produced by any means and
includes a sound recording accompanying such visual recording and cinematograph
shall be construed as including any work produced by any process analogous to
cinematography including video films.

Sound recording means a recording of sound from which such sounds may be produced
regardless of the medium on which such recording is made or the method by which the
sounds are produced.
Ownership of copyright

The copyright is created or subsists in the original work as and when the work is created, and
the copyright belongs to the creator/author provided that the original work is not created
under any agreement of service or under employment. As the copyright subsists in six type of
different work therefore it is important to know that who would be the author of different
type of works.

In the case of a literary or dramatic work the author, is the person who creates the work.
In the case of a musical work, the composer.
In the case of a cinematograph film, the producer.
In the case of a sound recording, the producer.
In the case of a photograph, the photographer.
In the case of a computer generated work, the person who causes the work to be created.
Process of registration of Copyrights in India

The Copyright Office has been set up to provide registration facilities to all types of works and
is headed by a Registrar of Copyrights. The applications are also accepted by post. On-line
registration through E-filing facility has been provided from 8th September 2009, which
facilitates the applicants to file applications at the time and place chosen by them.
The process for getting a Copyright registration is as follow:
1. Filing of application: An application for registration of copyright shall be filed in
prescribed Form along with applicable statutory fee depending upon nature of work.
Separate application need to be file for each work if it is more than one.
2. Issue of diary Number: The diary number will be issued to the application at the time of
filing of application by the Copyright Office. The same will be use to identify the
application in the future correspondence with the Copyright Office.
3. Waiting period: A mandatory period of 30 days prescribed under the act to wait for the
objection against the registration of the Copyright. During this period any person can
object the registration of copyright if he has a valid case.
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4. Objection to the application: If somebody opposes during the 30 days period then a
notice will be issued to both the parties. Both parties have to respond to the notice. An
opportunity of being herd will be provided to both parties and the matter is heard in
front of the registrar.
5. Examination of application: if the application subsists after the opposition period of 30
days then the application will be examined by the examiner and examination report
with objects to copyright registration is sent to the applicant. The applicant needs to
reply to the objections raised by the examiner within time prescribed for the reply.
6. Hearing: the examiner shall appoint a hearing in case he is not satisfied with
submissions of the Applicant.
7. Registration: If in view of the Examiner the application is fit for registration under the
Act then he orders for registration of copyright. An extract of the copyright register is
provided to the applicant as a proof of registration of the copyright.
For literary, dramatic, musical and artistic works the copyright subsists for 60 years
following the death of the author. In the case of cinematograph films, sound recordings,
photographs, posthumous publications, anonymous and pseudonymous publications, works
of government and works of international organizations, the 60-year period is counted from
the date of publication.
Information and documents required for filing a copyright application in India.
1.
2.
3.
4.
5.
6.

Name, address and nationality of the applicant

Nature of the applicants interest in the copyright of the work
Class and description of the work
Title of the work
Language of the work
Name, address and nationality of the author and if the author is deceased, the date of
his decease
7. Whether work is published or unpublished
8. Year and country of first publication, if any, and names, addresses and nationalities of
the publishers
9. Year and countries of subsequent publications, if any, and names, addresses and
nationalities of the publishers
10. Names, addresses and nationalities of the owners of the various rights comprising the
copyright in the work and the extent of rights held by each, together with particulars of
assignments and licenses, if any
11. Names, addresses and nationalities of other persons, if any authorized to assign or
license the rights comprising the copyright
12. If the work is an artistic work, the location of the original work, including name,
address and nationality of the person in possession of the work.

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13. If the work is an artistic work which is used for or is capable of being used in relation to
any goods, the application shall include a certificate from the Registrar of Trademarks in
terms of proviso to sub sec (1) of sec. 45 of the Copyright Act, 1957

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FAQs on Copyrights
Ques: Does copyright apply to titles and names?
Copyright does not ordinarily protect titles by themselves or names, short word combinations,
slogans, short phrases, methods, plots or factual information. Copyright does not protect ideas
or concepts. To get the protection of copyright a work must be original.
Ques: Is it necessary to register a work to claim copyright?
No. Acquisition of copyright is automatic and it does not require any formality. Copyright
comes into existence as soon as a work is created and no formality is required to be completed
for acquiring copyright. However, certificate of registration of copyright and the entries made
therein serve as prima facie evidence in a court of law with reference to dispute relating to
ownership of copyright.
Ques: Whether unpublished works are registered?
Yes. Both published and unpublished works can be registered. Copyright in works published
before 21st January, 1958, i.e., before the Copyright Act, 1957 came in force, can also be
registered, provided the works still enjoy copyright. Three copies of published work may be
sent along with the application. If the work to be registered is unpublished, a copy of the
manuscript has to be sent along with the application for affixing the stamp of the Copyright
Office in proof of the work having been registered. In case two copies of the manuscript are
sent, one copy of the same duly stamped will be returned, while the other will be retained, as
far as possible, in the Copyright Office for record and will be kept confidential. It would also
be open to the applicant to send only extracts from the unpublished work instead of the whole
manuscript and ask for the return of the extracts after being stamped with the seal of the
Copyright Office.
When a work has been registered as unpublished and subsequently it is published, the
applicant may apply for changes in particulars entered in the Register of Copyright in Form V
with prescribed fee.
The process of registration and fee for registration of copyright is same.
Ques: Whether computer Software or Computer Programme can be registered?
Yes. Computer Software or programme can be registered as a literary work. As per Section 2
(o) of the Copyright Act, 1957 literary work includes computer programmes, tables and
compilations, including computer databases. Source Code has also to be supplied along with
the application for registration of copyright for software products.
Ques: How can I get copyright registration for my Web- site?
A web-site contains several works such as literary works, artistic works (photographs etc.),
sound recordings, video clips, cinematograph films and broadcastings and computer software
too. Therefore, a separate application has to be filed for registration of all these works.
Ques: Is an opportunity for hearing given in all the cases pertain to rejection of registration?
Yes. As per the Principles of Natural Justice' (i.e audi altram paltram) no one can be punished
without being heard. As per the rule 27 of the Copyright Rules, 1958 no application is rejected
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without giving an opportunity to be heard. The applicant himself or his/her pleader may
appear in the hearing.
As per section 72 of the Copyright Act, 1957 any person aggrieved by the final decision or order
of the Registrar of Copyrights may, within three months from the date of the order or decision,
appeal to the Copyright Board.

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