Topic 34 — Procedure for Registration of Trademarks

Trademark registration in India is governed by Sections 18 to 26 of the Trade Marks Act 1999, supplemented by the Trade Marks Rules 2017. The procedure is both substantive (the Registrar examines the mark for compliance with Sections 9 and 11) and adversarial (third parties may oppose registration during the publication period). A typical registration takes 18 to 24 months if unopposed. This topic walks through every stage of the procedure — application, examination, publication, opposition, registration, renewal, and removal for non-use — with particular attention to the forms, fees, timelines, and the post-2021 institutional architecture.

1. Master Architecture of Trademark Procedure

2. Stage 1 — Application (Section 18)

A. Who May Apply

Anyone claiming to be the proprietor — actual user or proposed user — may apply. This includes individuals, partnerships, companies, LLPs, trusts, government departments and statutory bodies. The applicant need not have used the mark before applying; an "intent-to-use" application is permissible. Indian law requires the applicant to claim either (i) actual prior use (with a date of first use), or (ii) "proposed to be used".

B. Form, Particulars and Class

The application is filed on Form TM-A. It must specify:

• A clear representation of the mark (graphical for traditional marks; MP3 + notation for sound marks; chemical formula + description for olfactory marks).
• The name and address of the applicant.
• The class or classes of the Nice Classification (1-34 goods, 35-45 services).
• A detailed list of goods or services within each class.
• Date of first use of the mark (if applicable) — supported by evidence in subsequent stages.
• Priority claim (if filing within 6 months of a Convention application).
• Power of Attorney if filed through an agent.

C. Filing Fees

Trade Marks Rules 2017 introduced differential fee structures:

3. Stage 2 — Examination (Section 18(4))

Upon receipt of the application, the Registrar examines it for compliance with the Act. The examination has three components:

1. Formal compliance — completeness of forms, payment of fees, proper class, sufficient particulars.
2. Absolute grounds (Section 9) — distinctiveness, descriptiveness, deception, religious sensitivities, scandalous matter, Emblems Act, functional shapes (covered in Topic 32).
3. Relative grounds (Section 11) — confusion with prior marks, dilution of well-known marks, passing off (covered in Topic 33).

The examination is conducted by a Trade Mark Examiner. The output is an Examination Report — either:

• Acceptance — the application proceeds to publication.
• Acceptance with conditions — the Examiner may accept subject to disclaimers (e.g., disclaiming the right to use a descriptive element exclusively), translations, or restrictions.
• Refusal with objections — Examiner identifies objections under Section 9 or 11 and gives the applicant 30 days to respond.

A. Responding to Examination Report

If objections are raised, the applicant has 30 days (extendable on application) to respond. The response typically includes:

• Legal arguments addressing each objection.
• Evidence of acquired distinctiveness for descriptive marks (Marico v. Agro Tech-style evidence).
• Evidence of well-known status if relevant.
• Argument on the absence of confusion with cited prior marks.
• Letter of consent under Section 11(4) if available.
• Limitations or amendments to the specification of goods/services.

B. Hearing

If the Examiner is not satisfied with the response, a hearing is held before the Registrar (or a Senior Examiner). The hearing is in person or virtual; both sides present arguments. After the hearing, the Registrar may:

• Accept the application — proceed to publication.
• Accept with conditions or limitations.
• Refuse registration — appealable to the High Court within 90 days.

4. Stage 3 — Publication (Section 20)

Once accepted, the application is published in the Trade Marks Journal — the official weekly publication of the Trade Marks Registry. The Journal is available online and is open to public inspection. Publication serves three purposes:

1. Public notice — informs the world that registration is being sought.
2. Trigger for opposition — starts the four-month window for any aggrieved party to file opposition.
3. Establishment of priority date — for purposes of subsequent infringement actions, the publication date is significant.

5. Stage 4 — Opposition (Section 21)

A. Time Window

Section 21(1) gives any person four months from the date of advertisement to file a notice of opposition. The 2010 Amendment Act reduced this from the earlier four-month window in two stages: now it is three months extendable by one month on application, totalling four months.

B. Grounds for Opposition

An opponent may invoke any ground that would have justified refusal — Sections 9 (absolute), 11 (relative), or any other provision of the Act. The opponent need not show personal interest, but in practice oppositions are filed by:

• Owners of prior identical or similar marks (under Section 11).
• Owners of well-known marks (under Section 11(2)).
• Common-law users with goodwill (under Section 11(3)(a)).
• Industry associations or competitors objecting to descriptive or generic claims.

C. Procedure

1. Notice of Opposition — filed on Form TM-O within four months of advertisement.
2. Counterstatement — applicant files Form TM-O response within two months of receiving notice.
3. Evidence — both parties file evidence by way of affidavit; opponent first, then applicant, then opponent in rebuttal.
4. Hearing — both parties heard before the Registrar.
5. Decision — Registrar issues a reasoned order; either party can appeal to the High Court within 90 days.

6. Stage 5 — Registration (Section 23)

The Registrar issues a Certificate of Registration — the formal evidence of the trademark right. The registration takes effect from the date of filing; the registered mark enjoys the bundle of rights under Section 28. Section 23(1) sets a target of registration within 18 months, but practice often exceeds this.

7. Stage 6 — Renewal (Section 25)

A. Term

Section 25(1) sets the registration term at 10 years from the filing date. The 1999 Act increased this from 7 years under the 1958 Act.

B. Renewal

Section 25(2) provides for indefinite renewal. The renewal application (Form TM-R) is filed before the expiry date, with the prescribed fee. If the renewal is not filed in time:

• Section 25(3) allows late renewal within 6 months of expiry, with surcharge.
• Section 25(4) provides for restoration within 1 year of removal, with prescribed fee.
• After 1 year, the mark cannot be restored and falls into the public domain (subject to fresh registration).

8. Removal for Non-Use — Section 47

Although strictly outside the registration procedure (it operates after registration), Section 47 is closely linked. A registered mark may be removed from the Register on the application of any person aggrieved if:

• Section 47(1)(a) — there has been no bona fide use of the mark for a continuous period of 5 years and 3 months from the date of registration; or
• Section 47(1)(b) — there has been no bona fide use for a continuous period of 5 years extending to the date 3 months before the application for removal.

Defences

• Section 47(3) — the proprietor can show "special circumstances" preventing use (e.g., import restrictions, regulatory delay, force majeure).
• Genuine use — even minimal but bona fide use defeats a non-use claim.

9. Adjudicatory Forum after Tribunals Reforms Act 2021

10. The Madrid Protocol Route — Sections 36A to 36G

Sections 36A to 36G (Chapter IVA, inserted by the 2010 Amendment) implement the Madrid Protocol, which India joined on 8 October 2013. Under the Madrid system:

• An Indian applicant with a basic Indian application or registration can file a single international application designating multiple member countries.
• Each designated country examines the application under its own law and either accepts or refuses extension.
• Renewal, transfer and other administration are handled centrally through WIPO.
• Foreign applicants can similarly designate India through their national applications, and the resulting Indian protection is treated as if filed nationally.

11. Practical Drafting and Filing Tips