Why India?
India is one of the world’s fastest-growing economies, with projections suggesting that by 2045, India’s purchasing power parity could surpass that of the United States. This indicates a vast consumer base and a thriving market for goods and services in India, providing ample opportunities for manufacturers and producers to introduce their products.
In recent years, this economic potential has attracted global brands to expand into the Indian market. If you are a brand looking to establish a presence in India, your first step should be to secure your trademark and its associated rights. Indian trademark law has consistently protected international brands with cross-border popularity.
Approaches to Filing a Trademark Application in India
To secure trademark rights for your brand, it’s crucial to understand the various filing options available. If your primary focus is India, the most direct approach is to file a trademark application directly with the Indian IP Office, requiring engagement with practicing trademark attorneys.
Alternatively, you can seek protection through an international application under the Madrid System, which enables a single application to serve as the base application in WIPO, with designated countries where protection is sought. After filing in the home country, the application is forwarded to the International Bureau, which then sends it to the designated countries.
Core Elements of the Trademark Procedure
While trademark applications can be filed in different ways, the subsequent process remains largely uniform. After submitting an application, the first step involves examination by the Indian Trade Marks Registry. The Registry assesses the mark visually, structurally, and phonetically in comparison to existing marks in the registry. If similarities are found, they are noted in the Examination Report (direct application) or the “Notification of Provisional Refusal” (Madrid System application).
Once the report is issued, the applicant has one month to respond to the objections raised by the Registry. Objections can fall into two primary categories: relative grounds of refusal and absolute grounds of refusal. Absolute grounds relate to non-distinctiveness, descriptiveness, or the inclusion of geographical names, amongst other factors while relative grounds arise when the trademark closely resembles an existing mark, potentially leading to confusion among consumers.
Following the applicant’s response, the trademark may be accepted or scheduled for a hearing. During the hearing, the applicant’s attorney presents arguments for acceptance. If the hearing officer is persuaded, the mark proceeds to advertisement, which can also happen automatically if no objections were raised during the examination stage. Upon acceptance, the mark is published in the Indian Trade Marks Journal, allowing third parties to oppose it if they believe it conflicts with their own trademark.
Opposition proceedings commence if an opposition is received, requiring the applicant to respond within two months. Failure to do so results in the mark being deemed “abandoned” by the Registry. Both sides then have opportunities to submit evidence during specified two-month periods. The proceedings typically progress to hearings, where attorneys for both parties present their arguments. Based on these arguments and written submissions, the hearing officer issues a decision. If the applicant prevails, the mark proceeds to registration; if the opponent’s case prevails, the mark is refused.
Alternatively, if no oppositions are received within four months of advertisement, the mark is granted registration, and the applicant can use the ® symbol with their brand.
Optimal Timing for Filing a Trademark Application
The preceding sections underscore the significance of India as a market, not only for global giants but also for medium and small-scale enterprises. A market of this magnitude offers fair competition, room for growth, and a promising return on investment. Once you identify India as a market to explore, it’s advisable to conduct a comprehensive trademark search on the Indian Trade Marks Register.
A thorough trademark search, conducted by professionals, ensures clarity regarding the likelihood of your mark getting registered. It also identifies similar marks already on the register, which may raise issues during the examination stage. Furthermore, it assesses the likelihood of facing opposition and the potential for legal disputes when competing in the market.
These factors collectively help determine the ideal time to file a trademark application in India, ensuring you tap into the benefits of trademark registration.
