Trademark Registration India

Types of Trademarks Registrable in India

Categories Under the Act

1. Word marks: Brand names, coined terms, surnames (e.g., “Virtual Auditor”). This is the most common type — it protects the word irrespective of font, colour, or stylisation.
2. Device marks (logos): Graphical logos, symbols, emblems. Protects the visual design as filed.
3. Composite marks: Combination of words and devices (word + logo together).
4. Sound marks: Registrable since the TM Rules, 2017 amendment. Must be represented in MP3 format (not exceeding 30 seconds) and a musical notation. Examples include jingles and sonic branding.
5. Colour marks: A specific colour or colour combination can be registered if it has acquired distinctiveness through use.
6. Shape marks: Three-dimensional shapes of goods or packaging, provided the shape is not functional or dictated by the nature of the goods.
7. Collective marks: Used by members of an association to distinguish their goods/services (Section 61 of the Act).
8. Certification marks: Marks certifying origin, material, mode of manufacture, quality, or other characteristics (Section 69 of the Act).

What Cannot Be Registered — Absolute Grounds (Section 9)

• Marks devoid of distinctive character
• Marks consisting exclusively of indications serving to designate the kind, quality, quantity, intended purpose, value, geographical origin, or time of production of goods/services
• Marks consisting exclusively of marks or indications that have become customary in current language or trade practices
• Marks likely to deceive or cause confusion
• Marks containing scandalous or obscene matter
• Marks prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950
• Marks consisting exclusively of the shape of goods resulting from the nature of the goods themselves

Relative Grounds for Refusal (Section 11)

• The mark is identical to an earlier trademark for identical goods/services
• The mark is similar to an earlier trademark for identical/similar goods/services, and there exists a likelihood of confusion
• The mark is identical/similar to an earlier well-known trademark, even for dissimilar goods/services, if use would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier mark

NICE Classification — 45 Classes

India follows the NICE Classification of Goods and Services (11th edition, 2023). Trademarks must be filed class-wise — a separate application (and fee) is required for each class. The 45 classes comprise:

• Classes 1-34: Goods (chemicals, paints, pharmaceuticals, metals, machines, electronics, vehicles, precious metals, musical instruments, paper, rubber, leather, building materials, furniture, household utensils, textiles, clothing, lace, carpets, games, foodstuffs, beverages, spirits, tobacco)
• Classes 35-45: Services (advertising, insurance, construction, telecommunications, transport, material treatment, education, food services, medical services, legal services, personal and social services)

Common classes for Indian businesses:

Business Type	Relevant Class(es)
IT / Software / SaaS	Class 9 (software), Class 42 (SaaS/IT services)
E-commerce	Class 35 (retail/online retail services)
Restaurant / Food Delivery	Class 43 (food services), Class 29/30 (food products)
Clothing / Fashion	Class 25 (clothing), Class 35 (retail)
Professional Services (CA/CS/Law)	Class 36 (financial services), Class 45 (legal services)
Education / EdTech	Class 41 (education/training), Class 9 (apps)
Pharmaceuticals	Class 5 (pharma products), Class 44 (medical services)

Trademark Registration Process — Step-by-Step

Step 1: Trademark Search (Pre-Filing)

Before filing, conduct a comprehensive search on the IP India public search database to check for identical or similar marks in the same or related classes. The search types available:

• Wordmark search: Search for identical and phonetically similar words
• Vienna codification search: Search for similar device/logo elements using the Vienna Classification codes
• Phonetic search: Search for marks that sound similar when spoken

A clear search does not guarantee registration (the examiner may still raise objections), but it significantly reduces the risk of objection or opposition.

Step 2: Determine Applicant Category and Fees

Under TM Rules, 2017 (Rule 7 read with the First Schedule), the government fees per class are:

Applicant Category	E-Filing Fee (per class)	Physical Filing Fee (per class)
Individual / Startup (DPIIT-recognised) / Small Enterprise (Udyam-registered)	Rs 4,500	Rs 5,000
Others (Companies, LLPs, firms, etc.)	Rs 9,000	Rs 10,000

Note: The startup/individual concession requires a valid DPIIT recognition certificate or Udyam Registration certificate at the time of filing.

Step 3: File Application (Form TM-A)

The trademark application is filed in Form TM-A through the IP India e-filing portal. Key details required:

• Applicant name, address, nationality
• Mark representation (word, device, or both) — for device marks, upload in JPEG format (minimum 8 cm x 8 cm, 300 DPI)
• Goods/services description as per NICE classification
• Class number
• Date of first use (if the mark has been used prior to filing; otherwise, “proposed to be used”)
• Power of Attorney (Form TM-48) if filed through an agent/attorney
• Priority claim details (if claiming convention priority under Paris Convention)

Upon filing, a TM application number is generated, and the applicant receives a filing receipt. The TM symbol can be used immediately after filing. The registered trademark symbol (®) can be used only after the registration certificate is issued.

Step 4: Vienna Codification (For Device Marks)

For logos and device marks, the Trade Marks Registry assigns Vienna Classification codes to the figurative elements. This is an internal process and typically takes 1-2 weeks.

Step 5: Examination by Trade Marks Registry

The Examiner reviews the application for compliance with:

• Absolute grounds (Section 9) — distinctiveness, descriptiveness, deceptiveness
• Relative grounds (Section 11) — conflict with prior marks
• Formality requirements — correct classification, adequate description

The Examination Report is issued within 30-60 days from the date of filing (the Trade Marks Rules, 2017 mandate examination within 30 days, though practical timelines may vary).

Step 6: Respond to Examination Report (If Objections Raised)

If the Examiner raises objections, the applicant must file a response within 30 days from the date of the examination report (extendable by 30 days on request). The response can be filed online through the IP India portal.

Common objections and responses:

• Section 9(1)(a) — Devoid of distinctive character: Argue acquired distinctiveness through use, provide evidence of sales, advertising, media coverage
• Section 9(1)(b) — Descriptive mark: Show that the mark has acquired secondary meaning through continuous and extensive use
• Section 11(1) — Similarity with prior mark: Distinguish the marks on visual, phonetic, and conceptual grounds; show different trade channels, different consumer base
• Section 11(2) — Well-known mark conflict: Demonstrate no likelihood of confusion, different goods/services, no unfair advantage

Step 7: Show-Cause Hearing (If Objections Not Resolved)

If the written response does not satisfy the Examiner, a show-cause hearing is scheduled before the Registrar of Trade Marks. The hearing is conducted at the Trade Marks Registry office having jurisdiction (Mumbai, Delhi, Kolkata, Chennai, or Ahmedabad). Virtual hearings are also available post-2020.

Step 8: Publication in Trade Marks Journal

If the application is accepted (either directly or after overcoming objections), it is published in the Trade Marks Journal (published every Monday). The publication invites opposition from any person within 4 months from the date of publication (3 months + 1 month extension).

Step 9: Opposition Proceedings (If Any)

If a third party files a Notice of Opposition (Form TM-O):

1. The applicant files a Counter-Statement within 2 months
2. The opponent files Evidence by way of Affidavit within 2 months
3. The applicant files Evidence in Reply within 2 months
4. The opponent may file Evidence in Reply to the Reply within 1 month
5. A hearing is conducted before the Registrar
6. The Registrar passes an order either allowing or refusing registration

Opposition proceedings can take 12-24 months. The losing party may appeal to the Intellectual Property Appellate Board (now the High Court, post-Tribunals Reforms Act, 2021).

Step 10: Registration Certificate

If no opposition is filed within 4 months of publication, or if opposition is decided in the applicant’s favour, the Registration Certificate is issued. The registration is valid for 10 years from the date of filing (not the date of registration).

Trademark Renewal

Trademark registration is valid for 10 years and can be renewed indefinitely in 10-year periods. Key points:

• Renewal application: Form TM-R, filed within 6 months before expiry
• Renewal fees: Rs 9,000 per class (e-filing); Rs 5,000 per class for individuals/startups
• Late renewal: If renewal is not filed before expiry, a 6-month grace period is available with an additional surcharge of Rs 3,000
• Restoration: If the mark is removed from the register for non-renewal, restoration can be applied for within 6 months of removal (Form TM-R with surcharge)
• Non-use cancellation: A registered trademark that has not been used for 5 years and 3 months is vulnerable to cancellation on the ground of non-use under Section 47 of the Act

Trademark Infringement and Enforcement

What Constitutes Infringement (Section 29)

A registered trademark is infringed by a person who, without the consent of the proprietor, uses in the course of trade:

• An identical mark for identical goods/services (Section 29(1))
• A mark identical or similar to the registered mark for identical or similar goods/services, where there is a likelihood of confusion (Section 29(2))
• An identical or similar mark for dissimilar goods/services if the registered mark has a reputation in India and the use takes unfair advantage of or is detrimental to its distinctive character (Section 29(4))

Remedies Available

• Civil remedies: Injunction (interim and permanent), damages or account of profits, delivery up of infringing goods, costs of legal proceedings
• Criminal remedies: Under Sections 103-104 of the Act — imprisonment of 6 months to 3 years, and fine of Rs 50,000 to Rs 2 lakh for applying false trademarks
• Border measures: Customs authorities can seize imported goods bearing counterfeit trademarks under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007

Passing Off — Protection for Unregistered Marks

Even without registration, the common law right of “passing off” protects the goodwill associated with a mark. However, registration provides significant procedural advantages: (a) the burden of proof shifts to the alleged infringer; (b) statutory damages are available; (c) criminal prosecution is possible only for registered marks; (d) registration is prima facie evidence of validity.

Use of TM Symbol vs. ® Symbol

• TM (™): Can be used from the date of filing the trademark application. Indicates that a claim to the mark exists, even if registration is pending.
• ®: Can be used ONLY after the registration certificate is issued. Using the ® symbol for an unregistered mark is an offence under Section 107 of the Act (imprisonment up to 3 years or fine or both).
• SM: Used for service marks (functionally equivalent to TM for services). Not explicitly recognised under Indian law but commonly used in practice.

Recent Developments — Trademark Law in India

1. E-Filing Mandated

The Trade Marks Registry has transitioned to a predominantly e-filing system. Most forms can be filed electronically, hearings are conducted via video conference, and examination reports are communicated electronically.

2. Expedited Examination

Expedited examination is available by filing Form TM-M with an additional fee of Rs 20,000. This fast-tracks the examination to within 15 days of filing. Useful for brands launching new products with time-sensitive branding.

3. Post-Tribunals Reforms Act, 2021

Appeals against the Registrar’s decisions, which earlier went to the Intellectual Property Appellate Board (IPAB), now lie before the relevant High Court (Commercial Division) following the abolition of IPAB by the Tribunals Reforms Act, 2021.

4. Madrid Protocol Filings

India is a member of the Madrid Protocol since 2013. Indian applicants can file international trademark applications through the IP India office designating up to 130+ member countries. The fees vary by designated country. Conversely, foreign entities can designate India in their international applications.

Frequently Asked Questions

1. Can I register a trademark for my startup before incorporating the company?

Yes. An individual can file a trademark application in their personal name with the intention to assign it to the company post-incorporation. Alternatively, you can file the application in the proposed company name with a “proposed to be used” declaration. However, the cleaner approach is to incorporate the company first (the process takes 5-7 days for a Private Limited Company) and then file the trademark application in the company’s name.

2. What is the difference between TM application and TM registration?

A TM application gives you a filing date and the right to use the TM symbol. It does not confer statutory rights. A TM registration (after the certificate is issued) confers the exclusive statutory right to use the mark, the right to use the ® symbol, and the ability to initiate criminal proceedings for infringement. During the application stage, your only remedy against infringement is a passing-off action (common law right).

3. How do I respond to a trademark objection?

File a detailed written response within 30 days of the examination report. The response must address each objection specifically. For Section 9 objections (lack of distinctiveness), provide evidence of use — sales invoices, advertisements, media mentions, affidavits. For Section 11 objections (conflict with prior mark), distinguish your mark visually, phonetically, and conceptually from the cited mark, and show the goods/services are different.

4. Can two businesses have the same name if they are in different classes?

Yes, in principle. Trademark protection is class-specific. Two different entities can register identical marks in different classes for different goods/services (e.g., “Dove” for soap in Class 3 and “Dove” for chocolate in Class 30). However, if the earlier mark is a well-known mark under Section 11(2), it can block registration even in different classes.

5. What happens if I do not renew my trademark?

If renewal is not filed within 6 months before expiry or the 6-month grace period after expiry, the mark is removed from the register. A removed mark can be restored within 6 months of removal by filing Form TM-R with surcharge. After this period, the mark is treated as unregistered, and any third party can apply for the same or similar mark.

6. Is a company name registration with MCA the same as trademark registration?

No. Company name registration with the Ministry of Corporate Affairs prevents another company from registering an identical name but does NOT protect the name as a brand. Trademark registration under the Trade Marks Act protects the brand name as used in commerce. A company name and a trademark serve different legal purposes and are governed by different statutes.

7. Can I file a trademark application for a tagline or slogan?

Yes. Taglines and slogans are registrable as word marks if they are distinctive and not merely descriptive of the goods/services. Generic phrases or common advertising expressions (e.g., “Best Quality”) will likely face objection under Section 9. A coined or creative slogan has a much higher chance of registration.

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