For Foreign companies seeking to expand their brand presence internationally, India represents a dynamic and lucrative market. One critical aspect of this expansion is ensuring the protection of your brand through trademark registration. The Indian Trademarks Registry has a well-defined Standard Operating Process for Trademark Applications in India (SOP), designed to streamline and simplify the procedure. This post will provide an overview of the SOP and highlight why Foreign companies should consider trademark registration in India.
1. Pre-Examination Processing
Filing of Application: Trademark applications can be filed either online or offline in India. Although offline filings are accepted, the trend has shifted significantly towards online submissions, accounting for approximately 98% of total filings. This move towards digitalization ensures a more efficient processing system. Offline applications are digitized at the initial stage, merging seamlessly with online applications for further processing.
VIENNA Codification: If your trademark includes figurative elements (logos, images), it undergoes VIENNA Codification as per the Vienna Agreement so that your mark do not conflict with the similar marks of other trademark owners. This process categorizes the figurative elements before moving the application to the examination stage. Trademarks that consist solely of words proceed directly to examination. The applications are processed serially based on the filing date, ensuring a systematic and fair approach and in sync with the Standard Operating Process for Trademark Applications in India.
2. Examination of Applications: Office Action Report
Automated Allotment: The examination process in the Indian Trademarks Registry is highly automated, ensuring applications are reviewed in the order they are received. This automated system minimizes human error and enhances transparency.
Two-Stage Examination: The examination involves two stages:
- Initial Examination Report: A Trademarks Examiner appointed by the Indian Trademarks Registry prepares a report evaluating the trademark application.
- Review of the Examination by Controller of Trademarks: The Examination Controller reviews the initial report for accuracy and compliance. If the report is satisfactory, it is approved and issued to the applicant. If deficiencies are noted, the report is sent back to the Examiner with suggestions for amendments.
Applications may be accepted or objected to based on the provisions of the Trademarks Act. A detailed Reply to the Examination Report has to be filed within 30 days from the date of issuance of the communication of the Examination Report to the Applicant.
3. Post Examination Processing
Consideration of Reply: If objections are raised, applicants must respond within one month with the reasons to counter the objections set out in the examination report. Failure to do so results in the application being abandoned. If a reply is submitted, authorized officers review it and decide whether to accept the application and publish/advertise it in the TM Journal or move it to a hearing if objections remain unresolved.
Show-Cause Hearing: When objections are not resolved through written replies, the application moves to a show-cause hearing. Hearing notices are issued automatically, and cases are allotted to hearing officers serially based on the date the reply was considered. The hearings has to be attended by the Applicant or its Trademarks Agent and has to satisfy the Hearing Officer on the grounds of registration of the Trademark.
4. Post Advertisement Processing
Publication and Opposition: Once a trademark is accepted, it is published in the TM Journal. If no opposition is filed within four months, the trademark becomes eligible for registration. An automated system issues the registration certificate if there is no opposition or if the application is not withdrawn. The registered trademark is valid for 10 years and can be renewed indefinitely every 10 years with the payment of the prescribed fee.
5. Opposition and Rectification
Handling Oppositions: If a trademark faces opposition post-publication, a proper hearing process is conducted to resolve disputes. Both parties are given a fair opportunity to present their case and evidence. If the opposition is dismissed, the trademark proceeds to registration. If the opposition is upheld, the application is refused.
Rectification Proceedings: Similar to opposition proceedings, rectification proceedings are filed after the trademark is registered and a party believes that the Trademark was wrongly granted registration by the Trademarks Registry. Rectification processes adhere to the provisions of the Trademarks Act and Rules, ensuring that any challenges to a registered trademark are handled systematically.
Also Read: Why US Companies Should Consider Trademark Registration in India? [3 Reasons]
6. Post Registration Management
Updating Trademark Records: Registered proprietors can update post-registration details such as name, address, assignment, or registered user information by submitting the required forms and fees. Objections from examining officers must be complied with within 30 days, and changes in proprietorship by assignment are processed after a one-month notice period to the previous proprietor.
Renewal: Renewal requests are processed through an automated system based on the filing date, ensuring that trademarks remain valid and protected.
Also Read: Step-by-Step Guide to Registering a Trademark in India for US Businesses
For Foreign companies, navigating the Indian market can be complex, but understanding the Standard Operating Process for trademark applications in India simplifies this crucial aspect of brand protection. By filing a trademark application in India, Foreign businesses can secure their brand, gain legal protection, and strategically position themselves for success in a growing economy. The digitized and systematic approach of the Indian Trademarks Registry ensures efficiency, transparency, and fairness, making it an ideal destination for Foreign companies to register their trademarks. Take the proactive step to register your trademark in India and safeguard your brand’s future in one of the world’s most promising markets.
In case you have any queries regarding this post, you may reach out to:
He is an Intellectual Property professional based in New Delhi (India) who has vast experience in dealing with issues related to Trademarks, Patents, Designs and Copyright.
Disclaimer: The above-mentioned guide is merely for information purposes and is not to be considered as a legal advice in any manner.
