Trademark Legal Services
Protecting Your Business Identity
A trademark helps distinguish the goods or services of one business from those of another. It may include a name, word, logo, symbol, shape, packaging or combination of colours, subject to the requirements of the Trade Marks Act, 1999.
Trademark protection in India is governed primarily by the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. A person claiming to be the proprietor of a trademark that is used or proposed to be used may apply to the Registrar for registration under Section 18 of the Act.
We assist businesses and individuals with trademark registration, legal advice, objections and disputes, infringement-related proceedings and other trademark matters.
Why Trademark Registration Matters?
1. Exclusive Rights in the Registered Mark
Subject to the provisions of the Trade Marks Act, registration of a trademark gives the registered proprietor an exclusive right to use the mark in relation to the goods or services for which it is registered and to seek relief in respect of infringement. The rights are subject to the conditions and limitations applicable to the registration.
2. Protection Against Infringement
Registration provides a statutory basis for taking action against infringement of a registered trademark. Section 29 sets out circumstances in which use of a registered trademark by another person may constitute infringement.
3. Protection of Business Identity
A registered trademark can help establish and protect the identity associated with a business’s goods or services and provides a statutory framework for enforcing the registered proprietor’s rights.
4. Licensing and Assignment
A registered trademark can form part of a business’s intellectual-property assets and may, subject to applicable law and documentation, be assigned or licensed for use by another person or entity.
Trademark Registration in India
Application for Registration
Section 18 of the Trade Marks Act, 1999 permits a person claiming to be the proprietor of a trademark that is used or proposed to be used to apply to the Registrar for registration in the prescribed manner.
The registration process generally involves identifying the mark and relevant goods or services, selecting the appropriate class or classes, preparing and filing the application, examination by the Trade Marks Registry and dealing with any objections or opposition that may arise.
IP India currently states that trademarks for goods and services are classified under the Nice Classification, with Classes 1–34 covering goods and Classes 35–45 covering services.
Trademark Legal Services
1. Trademark Applications
Assistance with preparation and filing of trademark applications, including identification of the relevant goods or services and applicable class, documentation and other requirements.
2. Trademark Registration Advice
Legal advice concerning the registrability of a proposed trademark, the applicable legal requirements and issues that may arise during the registration process.
3. Trademark Objections & Examination
Assistance in responding to objections raised during examination of a trademark application, including review of the objection and preparation of an appropriate response.
4. Trademark Opposition & Related Proceedings
Assistance in matters arising from opposition to trademark applications, including preparation of pleadings, legal submissions and representation, as applicable.
5. Trademark Infringement Matters
Legal assistance concerning alleged infringement of registered trademarks, including assessment of the dispute, legal advice, notices and appropriate proceedings.
6. Trademark Disputes
Assistance with disputes concerning trademark ownership, use, similarity, infringement and other issues affecting trademark rights.
7. Trademark Renewal & Post-Registration Matters
Assistance with renewal and other post-registration matters relating to registered trademarks.
A registered trademark is generally valid for 10 years and may be renewed for further periods of 10 years in accordance with the Act.
Trademark Registration Process
1. Identify the Trademark
The proposed name, word, logo, symbol or other mark is identified and its intended use is considered.
2. Identify the Goods or Services
The goods or services for which protection is sought are identified and the appropriate classification is considered.
3. Application
The trademark application is prepared and filed in the prescribed manner.
4. Examination
The application is examined by the Trade Marks Registry. Depending on the examination report, further response or action may be required.
5. Opposition
Where opposition proceedings arise, the applicant may need to respond and participate in the prescribed proceedings.
6. Registration
If the application proceeds to registration, the trademark is entered on the Register and the registered proprietor receives the statutory rights subject to the Act.
Trademark Infringement & Enforcement
A registered trademark can provide the proprietor with statutory rights against infringement, subject to the provisions of the Trade Marks Act, 1999.
Depending on the circumstances, enforcement may involve legal notices, negotiations, opposition or other proceedings, including proceedings seeking appropriate relief from a court.
The Act provides for remedies in infringement proceedings, and the appropriate relief depends on the facts and circumstances of the case.
Possible remedies
- Injunction
- Other appropriate court relief
- Damages or other monetary relief, where legally available
- Account of profits, where applicable
- Other remedies provided by law
Unregistered Trademark — An Important Distinction
Can an unregistered trademark be protected in India?
Registration and passing-off protection are distinct legal concepts. Section 27(1) provides that an action for infringement cannot ordinarily be instituted in respect of an unregistered trademark. However, Section 27(2) expressly preserves the common-law remedy of passing off.
Passing off is a legal remedy available to protect the goodwill and reputation associated with a business, goods or services from unauthorised use that creates a misleading impression that another person’s goods or services are connected with, or originate from, the established business. Unlike trademark infringement, a passing-off action can be maintained even where the trademark is not registered. Generally, the claimant must establish goodwill or reputation, misrepresentation by the other party, and damage or a likelihood of damage to the claimant’s goodwill. Section 27(2) of the Trade Marks Act, 1999 expressly preserves the remedy of passing off.
Documents Required for Trademark Matters
Depending on the matter, documents may include:
- Applicant’s details
- Details of the proposed trademark
- Logo/device representation, where applicable
- Description of goods or services
- Details of prior use, where claimed
- Supporting documents relating to prior use
- Power of Attorney, where applicable
- Existing trademark application/registration details
- Examination reports
- Opposition documents
- Correspondence relating to the trademark
- Evidence relevant to infringement or dispute
IP India notes that an application can be filed on a “proposed to be used” basis or based on prior use; where prior use is claimed, supporting evidence is required.
Trademark Legal Services — What We Assist With
- Trademark registration applications
- Trademark classification and registration advice
- Examination objections
- Trademark opposition matters
- Trademark infringement disputes
- Legal notices concerning trademark rights
- Trademark-related litigation
- Renewal and post-registration matters
- Assignment and licensing-related advice
- Other trademark-related legal remedies
Frequently Asked Questions About Trademarks
1. What is a trademark?
A trademark is a mark capable of distinguishing the goods or services of one person from those of others and which falls within the definition provided by the Trade Marks Act, 1999.
2. How long is a trademark registration valid in India?
A trademark registration is generally valid for 10 years and may be renewed for further periods of 10 years in accordance with the Act.
3. Can an unregistered trademark be protected?
An unregistered trademark does not ordinarily support an infringement action under Section 27(1). However, Section 27(2) preserves the remedy of passing off, subject to its legal requirements.
4. Can a trademark be registered before it is used?
Yes. The Trade Marks Act permits an application by a person claiming to be the proprietor of a trademark that is used or proposed to be used.
5. What happens if someone uses my registered trademark?
Use of a registered trademark by another person may constitute infringement where the requirements of Section 29 and other applicable provisions are satisfied. The appropriate legal response depends on the facts of the matter.
6. Can a trademark be renewed?
Yes. Registration is for 10 years and may be renewed for successive periods of 10 years in accordance with the applicable provisions.
Discuss a Trademark Matter
If you are considering registering a trademark, responding to a trademark objection or dealing with a trademark dispute, we can review the relevant documents and advise you on the available legal course.