What are the steps involved and the costs to register a trademark in India?
The official fee charged by the Indian trademark office is Rs.4000 per mark per class. The professional charges start from Rs.1999 and upwards depending on your service provider. It is as simple as deciding to have pani poori from your street corner vendor or having it at a five-star hotel. What’s important to be considered in choosing your service provider [as with any service] is the experience and quality of service one offers.
Your brand is the most valuable asset of your business and you should take some time to choose the right service provider. You can ask your service provider to provide you with a list of trademark they have helped register. Trademark records and their details are made available to the public and your service provider should be able to provide you this without any hassles. You can then cross check a few application numbers at the Indian trademark office website by keying in the application numbers.
Another major issue faced by trademark owners in India is that every tom dick and harry offers trademark filing. Yes, they offer filing, not registration. While I appreciate the fact that several designers, domain name registrants, accountants, engineers, and CA’s offer this as an extended service to their clients, it is unfortunate that quite a few of these service providers learn trademark law at the cost of their clients. It is also important to understand that obtaining a registration for a trademark in India involves several steps and it is not merely a form filling job. You should ask your service provider to provide you with the other costs, if any, from filing to registration. In many cases the trademark owner is in for a surprise with additional costs at a later date when objections are raised by the trademark office or oppositions are filed by third parties.
Let’s understand the steps involved in getting your trademark registered in India.
- Selecting a mark
- Classification of goods or services
- Search the trademark office records
- Filing the application
- Responding to objections from the trademark office
- Advertisement in the trademark journal
- Handling opposition by third parties
- Maintenance or Renewal
Selecting a trademark is one of the toughest job for the trademark owner. This is going to be your brand and changing it later is not going to be easy. After several brainstorming sessions, you choose the right brand name for your business. Now that you have come up with a brand name it’s important to do a trademark search.
Classification of goods of services is very important for you to protect your trademark for the right goods of services you offer under your trademark. It is important that your service provider understands your business well before deciding to select the classes in which the trademark should be protected. For example, your trademark will fall under difference classes if you offer web app development services vs having an app for the purposes of selling goods online.
Trademark Search is the process where the records of the trademark office are searched for the same or similar marks in the classes of your choice to see if anyone has filed for similar marks earlier than you. Additionally, it is advisable to do a general Internet search as well. Several countries including India are not a first to file but rather a first to use country. This means that whoever uses the trademark first gets more rights than the one who filed for an application with the Indian trademark office.
Thought trademark rights are territorial, technology has made the world a small place. Hence, it is advisable to run a Global search in whichever jurisdictions possible. Several trademark office databases are available online with free access.
A good thumb rule we follow at our firm is to check if a .com domain name is available for your trademark. If it’s not available, then it’s a red flag that needs to be considered. Many times, the domain names are merely parked and not used.
Costs for a trademark search: [Professional fees range from Rs.500 to 2500 per trademark per class along with a professional opinion+ No official fees.]
Filing the application may be one of the easiest one once the above steps are done properly. It’s like as getting your foundation in place before you start building your house. However, it is important to put in the right information in your application to avoid any objections by the trademark office on a later date. This obviously comes with experience.[Professional fees range from Rs.1999 to 8000 per trademark per class + Rs.4000/class as official fees per mark per class.] Timeline: 1 to 2 days.
Objections are raised by the trademark office when they examine your application to register your trademark and the same should be responded to and complied within one month from the date of such objections. Most of these objections can be avoided when the same is foreseen at the time of classification and trademark search by your service provider. This not only saves costs but a lot of time in the process of getting your trademark registered in India.[Professional fees ranges from Rs.1499 to 10000 per trademark per class. No Official fees] Timeline: 1 to 2 months from the date of filing your application.
Advertisement of the application in the journal is because any third party can oppose to the registration of your mark on several grounds. The most common one being that your mark is like their mark. Opposition proceedings are long and costly and could be avoided by following the right strategy before filing the application. Timeline: 4 months from the date of advertising the application.
Registration is granted in the absence of any opposition within 4 months from the date of advertisement. The registration is valid for a period of 10 years from the date of the application. You should start using the ® symbol on your trademark immediately. Timeline: A week after expiry of the opposition period and in the absence of any opposition.
Renewal of a trademark in India can be filed six months prior to its expiry date. The renewal grants another 10 year protection to your rights on your trademarks. [Professional fees range from Rs.1999 to 5000 per trademark per class + Rs.5000/class as official fees per mark per class.]
Your brand is your most prized asset and trademark rights are perpetual. It should be carefully coined, protected, and maintained. When you decide to file for an application to register your trademark keep these in mind in choosing your service provider.
If you have something to add to this article or comment on the same feel free to comment below or reach out to me by email.