Trade Marks: FAQs

A trade mark is any sign that distinguishes the goods or services of one business from those of others and can be represented graphically: a word, name, logo, slogan, shape, packaging, combination of colours or, in some cases, a sound. It is defined in section 2(1)(zb) of the Trade Marks Act, 1999.

No. An unregistered mark that has built up goodwill is protected through an action for passing off. Registration, however, gives the exclusive right to use the mark for the registered goods or services and a statutory right to sue for infringement, and the registration certificate is evidence of ownership.

Yes. An application can be filed on a “proposed to be used” basis. If you have already used the mark, you can claim the date of first use, supported by evidence, which can help in a later dispute.

Ten years from the date of application, renewable for further periods of ten years indefinitely. If the renewal date is missed, the mark can still be renewed within six months on payment of a surcharge, and a mark removed for non-renewal can be restored on an application made within a year of its expiry.

Goods and services are grouped into 45 classes under the international Nice Classification: classes 1 to 34 for goods and 35 to 45 for services. A mark is protected only for the classes and goods or services it is registered for. A single application can cover several classes, with a fee for each.

Only once the mark is registered, and only for the goods or services covered. Before registration you can use ™. Falsely representing a mark as registered is an offence under section 107 of the Trade Marks Act.

On absolute grounds (section 9), such as a mark that is descriptive, generic, devoid of distinctive character, deceptive or prohibited by law; or on relative grounds (section 11), mainly that it conflicts with an earlier mark or a well-known mark. Many objections can be overcome by argument, evidence of use or a limitation of the goods.

The Registry issues an examination report, and the applicant must reply in writing, usually within one month. If the objection is not withdrawn on the reply, the application is listed for a show-cause hearing before an examiner. An application that is not answered is treated as abandoned.

Once accepted, the application is advertised in the Trade Marks Journal. Anyone may file a notice of opposition within four months. The applicant must then file a counter-statement within two months, failing which the application is treated as abandoned. Both sides file evidence, and the matter is decided after a hearing.

A mark that a substantial part of the relevant public knows so well that its use on unrelated goods or services would suggest a connection with the owner. Well-known marks are protected across all classes. Recognition can come from a court decision or from the Registrar on a request made under the Trade Marks Rules, 2017, and the Registry publishes a list of well-known marks.

Yes. Under section 47, a registered mark can be removed if it has not been used in good faith for a continuous period of five years from the date it was entered on the register, up to three months before the application for removal is made. Keeping evidence of use protects a registration.

Yes. A mark can be assigned with or without the goodwill of the business, and the assignment should be recorded with the Registrar. A licensee’s use counts as the owner’s use if it is a “permitted use” under the owner’s control, so a licence should include quality control terms.

Through the Madrid Protocol, which India joined in 2013, an Indian applicant can extend an Indian application or registration to other member countries with one international application filed through the Trade Marks Registry. Alternatively, applications can be filed country by country, claiming Paris Convention priority within six months of the Indian filing.

Civil remedies include an injunction, damages or an account of profits, and delivery up of infringing goods. Trade mark infringement and falsification are also criminal offences under sections 103 and 104 of the Act, punishable with imprisonment of six months to three years and a fine of ₹50,000 to ₹2 lakh. Domain names, marketplace listings and imports can be targeted through separate procedures.

Yes. The Supreme Court held in Satyam Infoway v. Sifynet Solutions (2004) that a domain name can function as a trade mark and is protected against passing off. Disputes over .in domains are decided under the INDRP, and over generic top-level domains such as .com under the UDRP.