1. How to select a valid trademark?

A valid trademark is invented or coined word that does not describe the quality of goods.      

2. What is the use of a trademark?

A trademark helps a business in following ways-

  • It identifies the goods / or services and its origin.
  • It builds up an association and goodwill
  • It helps in advertising the goods/services.

3. How can we know whether a similar trademark exists?

By performing a search for trademark on official portal one can get the report of all existing similar trademark. A search can be performed in many ways including start with; contains; match with and phonetic.

4. What are trademarks, how to register them? How much time does it take to complete the process of registration?

A trademark is a type of intellectual property consisting of a recognizable sign, design, or expression, it is a combination of distinctive words/symbols. It can either be in the form of a logo known as device mark or a word mark. To qualify as a valid trademark it must be distinctive, non-descriptive i.e. must not describe quality, nature or details of goods and services, must be unique, and must be able to distinguish goods or services of a particular source from those of others.

5. What are the classes of trademark?

The international classification of goods and services known as NICE classification is used to classify goods and services. It helps to assign a particular class to the trademark depending upon its concerned goods and services. There are total 45 classes 1 to 34 is for goods and 35 to 45 are for services. While filing the application you can assess which goods and services the trademark/brand deals or proposes to deal, you can also file a Multi-class application if the trademark deals in a wide variety of goods and services.

6. Can I file an application of foreign applicant in India? If yes, what will be the jurisdiction?

Yes, application of a foreign applicant having address of a foreign country can be filed in India. For the purpose of correspondence, the address of an agent in India has to be given as the address of service. Thus the address of Agent will decide the jurisdiction of the application.

7. Whether foreign national can also apply for registration of their trademarks in India?

Yes, a foreign national can also make an application for registration of their mark in India.

8. What is Infringement? How to decide where I should file the suit for Infringement?

Trademark infringement is the unauthorized use of a mark that is identical or deceptively similar to a registered trademark. The term deceptively similar here means that an average consumer with imperfect recollection of memory looks at the infringing mark, there is a likelihood of confusion in regard to the origin of goods and services. Section 134 of the Trade Marks Act, provides the jurisdiction of filing suit for infringement. The appropriate District Court is the one falling within the local limits under whose jurisdiction, the person instituting the suit, i.e. the right holder of trademark resides or carries on the business activities or where the cause of action arises.

9. What are the grounds for trademark rectification in India?

Grounds for rectification of trademark are provided under section 57 of Indian Trademarks Act, 1999. Rectification petition can be filed by any party who is aggrieved by the entry made in the Register:

  • The register suffers from the absence or omission of an entry
  • The entry made in the register was made without any sufficient cause
  • Error or defect in an entry made in the register
  • Failure to observe a condition entered in the register in respect to the registration of a mark.

10. What is the difference between assignment of Trademarks and Licensing of trademarks? What is a Registered User?

Assignment of a trademark occurs when the ownership of a trademark, is transferred from one party to another whether along with or without the goodwill of the business. It can be a complete assignment or assignment with respect to only certain goods and services. In case of a registered Trademark, such assignment is required to be recorded in the Register of trademarks.

On the other hand licensing of a trademark is to license certain rights to  others over the mark without assigning the ownership for all or some of the goods and services. The Trademarks Act does not mention the term 'License', the concept under the Act is mentioned as 'Registered User'.

11. How can we register our trademark internationally? How can I apply for a trademark outside India? How Much time will it take to get the TM registered in most of the Madrid countries generally?

The applicant desiring to file an application for international registration of trademark under the Madrid Protocol through India, must be meet one of the following three criteria –

  • The applicant should be a national of India, or
  • The applicant should be domiciled in India, or
  • The applicant should have a real and effective business in India.

The first step is to procure Basic Application/registration number, this is a prerequisite and it must not have status like withdrawn, abandoned, refused, removed, cancelled. The international application under Madrid Protocol is filed online by filing a Special Form [MM2(E)] available at IAOI (International application originating from India) on the IP India

Website having a basic fee of Rs. 5000/-. Once the application is submitted to the Trade Mark Registry, the Registry reviews and certifies the application and transmits the same to WIPO.