Differences when registering a trademark in India

India, with its large young population and thriving economy, is an extremely attractive market for businesses looking to expand their business. In particular, sectors such as information technology, pharmaceuticals, food and beverage, fashion, automotive, and financial services are proving great growth potential. India is said to be the “Silicon Valley of the East”, which has made significant achievements in the field of information technology, contributing to making the country a global technology powerhouse. India possesses a large number of talented programmers, who are well-trained and able to adapt quickly to new technology. Many multinational software companies have chosen India as a destination to place their research and development centers. India is also one of the world’s largest software exporters, contributing significantly to the country’s GDP. The combination of increasing consumer demand, the opening of the economy and the government’s supportive policies has created a favorable business environment, attracting many domestic and foreign investors. However, in order to be able to develop their brand in the Indian market, individuals and organizations who want to do business here need to pay attention to some differences when registering a trademark compared to other countries. Viet An Law would like to send you information through the article below.

Legal Basis

• Trademark Act 1999 (Act No. 47 of 1999)
• Other relevant legal documents

Differences in the “First-to-Use” principle

The “First-to-Use” principle is a principle in intellectual property law, especially in trademark protection, whereby the ownership of a trademark will belong to the first person to use the trademark in commerce, not the first person to file a trademark application.

How the “First-to-Use” principle works

• Proof of use: To prove ownership of a trademark under this principle, an individual or organization must provide concrete evidence that they have used the trademark in their business before someone else filed an application.
• Evidence may include: Invoices, contracts, advertisements, product labels, sales reports,…
• First-user preference: If there are multiple people requesting the same registration of a similar trademark, the person with proof of prior use of the trademark will take precedence.

Comparison with the “First-to-File” principle

• “First-to-File”: This principle is more common and adopted by many countries. Accordingly, trademark ownership belongs to the first person to file the application, regardless of who is the first user.
• “First-to-Use”: This principle prioritizes the actual use of trademarks in commerce, in order to protect the interests of those who have invested and built the brand.

Advantages and disadvantages of the “First-to-Use” principle

• Advantage:
  • Protect the rights of creators: This principle protects the rights of those who have invested time and effort in building a brand.
  • Encourage the use of trademarks: This principle encourages businesses to use their trademarks in a positive way.
• Shortcoming:
  • Difficulty in proving: Proving prior use of a trademark can be complex and expensive.
  • Disputes: There can be many disputes about who uses the trademark first.
  • Early registration is discouraged: Due to the lack of protection right upon filing, businesses may delay the registration of a trademark.

The main language difference when registering a trademark is English

Although India is a linguistically diverse country, English is still the primary language used in administrative procedures, including trademark registration. This means that when you want to register a trademark in India, you need to prepare all the application information and documents in English.

Why English?

• Internationality: English is an international language, which makes it convenient to communicate and cooperate with foreign businesses.
• Legal Regulation: India’s intellectual property laws are mainly drafted in English.
• Database: India’s trademark database mainly uses English to store and look up information.

Trademark Registration Records in India

Applicant Information:

• Applicant Name and Address: The legal name and full contact information of the applicant, including phone number and email.
• Applicant type: Indicates whether the applicant is an individual, company, or other legal entity. (Examples: Sole Proprietorship, Partnership, etc.)

Trademark Information:

• Image representing the trademark: This can be an image file (JPEG, PNG) or a clear and detailed description of the trademark (text, logo, design, etc.).
• Group of goods and services: A clear and specific list of goods or services for which the applicant intends to use the trademark. Applicants can use the International Classification of Goods and Services (also known as the Nice Classification for Goods and the Vienna Classification for Services) for easy reference. These classification systems classify products and services, making it easier for the Trademark Office to review the application of the applicant.

After having all the information, the applicant needs to enter the TM-A form, which can be downloaded at the following link: https://www.ipindia.gov.in/form-and-fees-tm.htm

Declaration of use (if applicable): If the applicant has commenced use of the trademark in India, the applicant may submit a statement of use with evidence (e.g., product packaging, marketing materials) to potentially expedite the registration process.

Authorization (Optional): If the applicant uses an attorney or agent to file the application, the applicant may need a Authorization that allows them to file the application and process it on behalf of the applicant.

Registration fee: The cost of registering a trademark in India depends on several factors, including:

• Number of groups of goods and services: A government-imposed fee is charged on each group of goods or services for which the owner of the trademark application is registered.
• Applicant: Fees vary for individuals/private businesses/startups and other types (companies, partnerships, etc.)

Trademark Application Processing Process in India

Trademark registration in India is a multi-step process that ensures intellectual property rights and protects a business’s trademark. Here is the basic process:

Submit Application

• Prepare the dossier: Complete the registration dossier according to the list of documents above.
• Application: Submit the application online or in person at the Intellectual Property Office of India.

Appraisal

• Formal check: The National Office of Intellectual Property will check whether your registration dossier is full of information and complies with the law.
• Content check: The examiner will compare your trademark with those registered to assess uniqueness and protection.

Proclaim

• Disclosure of information: If your trademark passes the due diligence stage, information about the trademark will be published in the Trademark Journal.
• Reconciliation period: Within 4 months of the date of publication, any person or organization with a related interest can file a complaint if they believe that your trademark infringes their rights.

Registration level

• No complaints: If no one complains, the National Office of Intellectual Property will issue you a trademark registration certificate.
• There is a complaint: If there is a complaint, there will be a dispute settlement process in accordance with the law.

Note:

• Duration: The trademark registration process typically takes between 12 and 18 months.
• Fees: You must pay the fees required by law at different stages of the registration process.
• Professional advice: To ensure a smooth registration process and protect your rights in the best way, you should seek the support of an intellectual property lawyer.

If you wish to file a trademark registration application in India, please contact Viet An Law hotline (+84) 9 61 67 55 66 (WhatsApp, Viber, Zalo, Wechat) for the most effective support.