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		Frequently Asked Questions – Trademarks Prosecution in India 1. What are the types of trademark searches available in India, the time for issuance of the search reports and costs? Types: Official Search and Public Search. Official Search is further divided into Ordinary and Expedited Search. Time: Ordinary official search reports are issued between 7 to 20 days and the expedited search reports are issued within 1 to 7 days. Public searches are available online accessible upon payment of official fees. However the public search reports are unreliable. 2. What classification/codification of goods and services does India follow? India follows the Vienna Codification for Graphic Marks and Nice Classification (Seventh Edition) for classification of goods and services though India is not a signatory in both cases. Also India recognizes only classes 1-42 of the Nice classification. All services in International classes 43 to 45 are included in class 42. 3. What details are required for filing an application in India? a) Name of the Applicant b) Citizenship or country of Incorporation/registration c) Address of the applicant d) Nature of business of the applicant e) Date of use in India or Proposed to be used f) Mark name or representation of the mark in JPG format g) International Class h) Specification of goods and services i) Priority Application Number and date if priority has to be claimed j) Two certified copies of the priority document when priority is claimed. 4. Can I claim priority based on the Paris Convention for the protection of Industrial Property? Yes. India is a signatory to the Paris Convention for the protection of Industrial Property. Priority can be claimed if the application in India is filed within 6 months from the date of filing in any of the countries those are signatories to the Paris Convention. 5. Can I submit the priority document after filing the application? Yes. The priority document can be submitted with the Intellectual Property Office within two months from the date of filing the application in India without any additional fee. 6. What are the types of marks that can be protected as trademarks in India? Names, signatures, invented word, letters, numerals, devices, symbols, color combinations, shapes of goods, packaging, monograms, three dimensional marks, sound marks. 7. Can I file multiclass trademark applications? Yes. India recognises multi class applications. 8. What are the pros and cons of filing a multi class application? Pros: a) A single application number for all the classes b) Processing of the file is easier since all classes are examined at the same time c) Lower professional fee Cons: a) The official fee is charged on per class basis thereby no much cost benefit is derived. b) If one class is opposed by any third party, the other classes are also held up from proceeding towards registration. c) A divisional application has to be filed for dividing the applications so that the classes which do not face opposition proceeds towards registration. d) The costs towards divisional applications and the time spent is exorbitant. 9. Can I cover unlimited specification of goods and services in my application? The official fee for filing an application in one class allows including specification of goods and services up to 500 characters including spaces. Specifications in excess of 500 characters are charged at USD 1 for every 4 characters. An application in Form TM-61 needs to be made for inclusion of the excess characters. 10. Does the Power of Attorney (POA) need to be notarized or legalised when executed outside India? The POA needs to be simply signed by the applicant or the authorised signatory of the applicant company along with the company seal. No notarization or legalization is necessary. 11. Can I file my POA after filing the application? Yes the POA can be filed even after filing the application. 12. Is there any late fee involved in late submission of documents? There are no official fees involved for late submission of the documents. 13. Can I rectify a mistake or record a change made at the time of filing the application? Yes. A suitable application can be made requesting the Intellectual Property Office to rectify a mistake or record a change in details in respect of an application. 14. Do I need to use my mark before or at the time of making an application for registration? No. In India an application for registration of a trademark can be made with an intention to use the mark in the future. 15. How long does it take for my application to be examined? In the present scenario it takes anywhere between 4 to 6 months for an examination report to be issued. 16. Is an examination report issued even when no conflicting marks are found and my mark is distinctive, invented and well known? In many cases an examination report is issued even when no conflicting marks are found or even when there are no impediments. However this practise is changing rapidly where the marks are advertised in the trademarks journal when no conflicting marks or impediments are found. 17. What is the time duration for replying to the Examination Report? A response to the examination report has to be filed within 30 days from the date of receipt of the examination report. This deadline of 30 days is not extendible. In the absence of filing a response the application is deemed to have been abandoned for lack of prosecution u/s 132 of the Indian Trademarks Act, 1999. 18. Can a request for a show cause hearing be made instead of responding to the examination report? Yes. A request for appointing a hearing can be made instead of responding to the examination report. However the request for hearing needs to be made within 30 days from the date of receipt of the examination report. 19. When is a show cause hearing appointed with the Registrar of Trademarks? Upon receipt of our response to the examination report and when the Registrar is not inclined to accept our written submission, the Registrar will request us to attend a show cause hearing with additional documentary evidence in support of our application and based on the documents submitted and arguments advanced in the course of hearing allow the mark to be advertised in the upcoming trademarks journal or refuse the registration of the mark. An appeal from this order is possible. 20. What is the duration within which an opposition needs to be filed after advertisement? A notice of opposition can be filed within three months from the date of the advertisement available to the public. This period of three months can be further extended by another one month. However the request for such extension needs to be filed before the expiry of the three months. 21. When is the Registration Certificate issued? Upon the expiry of 4 months from the date of advertisement available to the public the mark proceeds towards registration. Though the Intellectual Property Office is not very effective in issuance of the Registration Certificate immediately after the expiry of this four month period. However a regular follow up with the IPO is often fruitful. 22. What is the duration of the Registration in India? The registration is valid for 10 years renewal every 10 years thereafter. 23. When can an application for renewal be filed? An application for renewal can be filed before 6 months from the date of expiry. 24. Can I rectify a mistake after registration of the mark? Changes in the application details can be made after the mark is registered. Any such change has to be backed with documentary evidence and any such change recorded is advertised/ published in the trademarks journal. 25. Is recordal of assignment of a trademark compulsory in India? Yes. Recording of an assignment is compulsory in India. The later the assignment is recorded the higher the official fee. The recordal of assignment becomes inevitable since there is devolution of legal rights in favour of the new proprietor. 26. Is recordal of licence of a trademark compulsory in India? Recordal or licence in India is not compulsory. But it is advisable to record the same since in the event of infringement of the trademark it becomes easier for the licencee to take legal action and enforce its legal rights. 27. Do I need to use my mark in India immediately after registration? No. The mark can be registered on a proposed to be used basis. However this period of proposed to be used is limited to 5 years from the date of registration of the mark. If the applicant fails to use the mark within 5 years from the date of registration, the registration of the mark will be open to cancellation on grounds of non usage. 28. Can a trademark be removed from the register of trademarks after registration? Yes. The trademark that is registered can be removed from the register on grounds of non usage or on grounds of being registered malafide. 29. Can an unregistered mark be protected in India? Yes. In addition to the statutory protection for registered trademarks, the Indian Trademarks Act protects unregistered marks as well. India being a common law country, a passing off action can be initiated.
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