My earlier post on how to register a trademark in India discussed the requirements and in brief the options you have to file an application for registration of a trademark in India. Over the last few weeks I have been receiving several emails and messages from entrepreneurs and start-ups enquiring about how the trademark registration process works in India and why even an IT major would find the Indian online trademark filing system complicated. Unfortunately I do not have an easy answer but I do have a solution which I hate myself for obvious reasons, is to go for a paper filing. So in this post I will discuss on preparing and filing your paper trademark application.
The appellant is a company incorporated under the Companies Act in the year 1992. M/s Mano Pharmaceuticals Private Limited is a Division of the appellant’s company for which an agreement was entered into by the two companies, in 2003. Subsequently, M/s Mano Pharmaceuticals Private Limited had filed an application under the Trade Marks Act, 1999 (hereinafter referred to as “the Act”) for registration of trade mark ‘METO’. A request on Form TM-16 was filed to amend the name of the applicant to ‘M/s Mano Pharma (a Division of Orchid Chemicals and Pharmaceuticals Limited)’ on 24.02.2003. Without taking the request on TM-16 on record the trademark office issued the registration certificate on 24/02/2005 in the name ‘M/s Mano Pharmaceuticals Private Limited’.
I wish there was an easy answer. Unfortunately there isn’t. Indian Trademarks Law allows filing of multi class applications. If you are using a counsel you may be advised by your counsel to file single class applications, not because he wants to bill you more; because the benefits of single class application outweighs few bucks saved by filing a multi class application.
An application for registration of a trademark in India can be filed by either claiming use of the trademark in India or on a proposed to be used (intent to use) basis. Subsequent to publication and in the absence of opposition the application would proceed towards registration. Unlike in the US, proof of usage of the mark in India is not a pre requisite to the grant of registration of the trademark. The usage claimed in the application needs to be bona-fide and supported with documentary evidence of usage and if necessary the Examiner might insist that an affidavit of usage be filed.
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