TRADEMARK APPLICATION FILING IN
India

The Office of the Controller General of Patents, Designs, and Trade Marks (CGPDTM) is in charge of all Intellectual Property Rights in the territory of India. CGPDTM is a primary agency responsible for administering and enforcing Intellectual Property laws, specifically those related to patents, designs, trademarks, etc. in India. India operates on a first-to-use basis when it comes to trademark registrations, and all trademarks must comply with the Trademark Act of 1999. Consequently, registration of a trademark in India has become feasible, and India has seen swift escalation in trademark registrations.

The trademark registration before the Office of the Controller General of Patents, Designs, and Trade Marks (CGPDTM) can either be filed through the online portal or via offline mode.  

Multi-class applications are allowed by the Office of the Controller General of Patents, Designs, and Trade Marks (CGPDTM).

The requirements for filing a trademark application are as follows:

• Name, nationality, and address of the applicant;
• Mark representation (logo/device/word, etc.);
• Descriptions of goods and/or services;
• Power of Attorney *;

*POA to be signed by the applicant;

• Certified priority document*;

*If priority is being claimed, a Certified Priority Document must be submitted along with details like application number, country, date etc.

The process of registering a trademark in India begins with the submission of the application before the Office of the Controller General of Patents, Designs, and Trade Marks (CGPDTM). Once the TM application is filed, the application undergoes a formal examination to ensure it meets all the required standards along with the payment of the fee. Following this, the application is subjected to a substantive examination based on absolute grounds for refusal, where examiners assess the trademark's eligibility for registration. If any issues or discrepancies are identified during the evaluation, the CGPDTM will notify the applicant and provide a 30-day time period to reply to the issued office action/examination report. If no issues are found, or once corrections are made, the application moves forward, and the trademark is then published in the Indian Trademark Journal, initiating a four-month opposition period. During this time, third parties have the opportunity to raise objection/opposition to the application.

If no opposition is filed within said timeline, or if opposition is resolved in favour of the applicant, the trademark is officially registered, and a registration certificate is issued.

The opposition proceedings begin when an opponent files a notice of opposition. The applicant will receive the notice, and the Office of the Controller General of Patents, Designs, and Trade Marks (CGPDTM) will assess the admissibility.  The applicant is required to submit the counter-reply within two months. The matter will proceed to the evidence stage, and the registrar will issue a notice and invite opponents to submit the evidence affidavit in reply to the counterstatement within two months. Thereafter, a hearing will be conducted, and the registrar will assess the evidence and arguments and, based upon them, will then make a decision on whether to accept or reject the application.

A trademark registration in India is valid for a period of ten years. The trademark must be renewed before the end of six months of the current term to maintain protection for an additional ten years.

However, if the renewal is not submitted on time, it can still be processed within six months after the expiration date with a surcharge.

A registered trademark must be actively used within five years of its registration. If the trademark is not used continuously during this period, it may be subject to cancellation following a request from a third party.

Typically, the trademark registration process in India takes twelve to fourteen months in straightforward cases.

According to the WIPO stats, the number of trademark filings in India is escalating every year, and it can be said that India will be a Global Innovation Powerhouse in the coming future. As a growing economy, India ranks in 4th position in trademark filings globally. According to WIPO stats, 2023, a hike of approx. 20.2% in trademark filings has been observed in India. According to data from WIPO, India stands at the 2nd position in trademark filings across Asia. Additionally, India has made a hike of 6.1% in trademark filings globally in 2023. Also, other top countries like China, the USA, the UK, etc., also request their trademark application in India.