Legal Framework of Trademark Law in India
Trademark registration in India operates under a precise statutory and procedural regime. The Trade Marks Act, 1999 forms the backbone of the law. It codifies absolute grounds of refusal under Section 9, relative grounds under Section 11, and the principle of honest concurrent use under Section 12. It further prohibits registration of International Non-Proprietary Names (Section 13) and marks containing names or portraits of living or recently deceased persons without consent (Section 14). Special provisions such as Sections 15–16 on series and associated marks, Section 17 on effect of registration, and Sections 18–23 covering application to registration guide the procedure.
The Act also provides remedies for non-use cancellation under Section 47, rectification under Section 57, and ensures jurisdiction for enforcement under Sections 134–135. With the abolition of the Intellectual Property Appellate Board in 2021, appeals now lie directly before High Courts under the Tribunals Reforms framework.
The Trade Marks Rules, 2017 supplement the Act by prescribing forms, fees, classification norms, expedited processing (Rule 34), user affidavits (Rule 25), sound mark procedure (Rule 26(5)), and determination of well-known marks (Rule 124). The Draft Manual of Trade Marks Practice and Procedure remains the most reliable guide for Registry practices on examination and hearings.
What Qualifies as a Trademark and What Will Be Refused
Under Section 2(1)(zb) of the Act, a trademark means any sign capable of graphical representation and of distinguishing goods or services. It may be a word, label, device, 3D mark, sound, color combination, or packaging trade dress.
Examiners will refuse marks that lack distinctiveness, are descriptive or generic under Section 9(1), or that mislead the public. Section 11 bars marks identical or confusingly similar to earlier marks. The law also prohibits INNs or chemical names (Section 13) and names or portraits of individuals without consent (Section 14).
Indian courts have consistently developed principles for similarity assessment. In Amritdhara Pharmacy v. Satya Deo Gupta (1963) the Supreme Court applied the phonetic similarity test. Parle Products v. J.P. & Co. (1972) emphasized the overall impression test, while Cadila Health Care v. Cadila Pharmaceuticals (2001) laid down a multi-factor confusion test. Nandhini Deluxe v. Karnataka Co-operative Milk (2018) clarified coexistence despite common word roots where trade channels differ. In Toyota v. Prius (2017) the Court held that trans-border reputation must show consumer recognition in India.
Additionally, under the Emblems and Names (Prevention of Improper Use) Act, 1950, many state insignias, national emblems, and names are strictly barred.
Classification of Goods and Services under Nice & Vienna
India follows the Nice Classification, dividing goods and services into 45 classes. Precise drafting of specifications is essential, as vague or overly broad terms invite objections. Device marks are also coded using the Vienna Classification, which helps in searching figurative elements. The IP India website and WIPO Nice browser are standard tools for correct classification.
Conducting Trademark Searches before Filing
Before filing, a thorough clearance search is critical. The official Public Search portal of IP India allows word mark, phonetic, and device (Vienna code) searches. Running knockout searches for identical marks and similarity searches for confusingly similar marks helps avoid opposition and objections later. Documenting these results provides evidence in response to objections or for risk analysis.
Filing Basis and Eligibility
An applicant may file on the basis of “proposed to be used” or on prior use. For prior use, a user affidavit under Rule 25 with supporting evidence such as invoices, advertisements, and digital presence is mandatory.
Foreign applicants can claim priority under the Paris Convention within six months of the first filing abroad, supported by priority documents under Section 154. In rare cases, applicants rely on honest concurrent use under Section 12, demonstrating good faith and absence of confusion.
Forms, Fees, and Accounts for Filing
Trademark applications are primarily filed electronically via the TM-A form. Fees depend on the category:
- ₹4,500 per class for Individuals, Startups, and Small Enterprises.
- ₹9,000 per class for others.
- Expedited examination costs ₹20,000/₹40,000 per class depending on applicant category.
Other common forms include TM-M for amendments, TM-O for oppositions, TM-U for licensing, and TM-R for renewals. Representation through an agent requires TM-48 (Power of Attorney).
Filing Bundle and Documentation
A complete filing bundle must contain:
- Clear representation of the mark (image, 3D views, MP3 + notation for sound marks).
- Precise specification per class.
- Applicant details and category proof.
- User affidavit with evidence (if claiming prior use).
- Priority claim documents (if applicable).
- TM-48 when filed through an agent.
- Valid address for service in India.
Incomplete filings lead to “Formalities Check Fail” notifications.
Examination, Hearing, and Acceptance
Once filed, the Registry examines under Sections 9 and 11. An Examination Report is issued outlining objections, which must be replied to with legal arguments and evidence. If objections persist, the matter proceeds to a show-cause hearing.
Courts have recognized several successful arguments:
- Acquired Distinctiveness: Supported by long use, advertisement, and market surveys.
- Honest Concurrent Use (Section 12): Shown by good faith and lack of confusion.
- Prior User Supremacy (Section 34): In Neon Laboratories v. Medical Technologies (2015) and Syed Mohideen v. Sulochana Bai (2016), the Supreme Court upheld that prior user rights prevail over later registration.
Advertisement in Journal and Opposition Proceedings
Once accepted, the application is advertised in the Trademark Journal. Under Section 21, any person can oppose within four months. Opposition involves filing a Notice of Opposition (TM-O), a Counter-statement, exchange of evidence, and hearings. Diligent monitoring of the Journal and timelines is crucial.
Registration, Certificate, and Renewal
If no opposition is filed or the opposition fails, the mark is registered, and an electronic certificate is issued. The registration is effective from the date of filing under Section 23.
Renewal is required every 10 years under Section 25. It is advisable to also record changes of ownership, licensing, or assignment to maintain an accurate Register. Registered users under Section 49 strengthen enforceability in infringement suits.
International Registration via Madrid Protocol
Indian proprietors can expand their protection abroad using the Madrid Protocol under Chapter IVA (Sections 36A–36G). The Indian application serves as the “basic mark.” Conversely, international registrations designating India are examined on the same Section 9 and 11 standards.
Determination of Well-Known Marks
The 2017 Rules (Rule 124) allow proprietors to directly apply for recognition as a well-known trademark by filing TM-M with a fee of ₹1,00,000. Recognition as well-known provides wider protection across classes. The Registry maintains a public list of well-known marks for enforcement purposes.
Timelines and Tracking Applications
Trademark examination timelines vary, but expedited requests under Rule 34 push the application forward. The official e-register and application status portals enable applicants to track progress. Weekly Journals and hearing boards also provide updates. Since electronic service is valid under Rule 17, applicants must ensure their email and address for service remain current.
Common Objections and Responses
- Descriptiveness (Section 9): Cure with evidence of secondary meaning, disclaimers, or rebranding.
- Conflicting Marks (Section 11): Argue distinct commercial impression, consumer base, or submit co-existence agreements.
- Procedural Deficiencies: File missing documents through TM-M.
- Statutory Prohibitions: Marks barred under Emblems Act or INNs cannot be salvaged.
Post-Grant Vulnerabilities
Even after registration, marks remain vulnerable:
- Non-use (Section 47): Cancellation if unused for 5 years and 3 months.
- Rectification (Section 57): If wrongly registered against statutory provisions.
- Prior User Claims (Section 34): Prior users may still seek injunctions.
Step-by-Step Checklist
- Conduct brand audit and blacklist checks.
- Classify goods and draft specific specifications.
- Run knockout and similarity searches.
- Choose filing basis and prepare user affidavit or priority claim.
- File TM-A with supporting documents.
- Respond to examination objections with evidence and case law.
- Monitor Journal and defend/oppose as needed.
- Secure registration certificate and diarise renewals.
- Consider well-known status and Madrid expansion.
Useful Official Tools
- Public Search Portal (IP India) – for clearance and monitoring.
- Trademark Journal – for oppositions and advertisement.
- Application Status & e-Register – for progress tracking.
- Manual of Trade Marks Practice – for examination insights.
- WIPO Nice & Vienna Classifications – for accurate filing.
