Intellectual Property - Introduction

The word 'intellect' refers to the creations of the mind. Intellectual Property
is a type of intangible property and includes inventions, literary and artistic
works, symbols, names and paintings. Intellectual Property Rights (IPRs) are the
Rights granted to the creators of Intellectual Property (IP) by the Government.
Most IPRs are territorial in nature. For protection of IP in any country, one has to
seek protection separately under the relevant laws. There are special mechanisms
in place in various territories for providing protection to different types of IPRs.

Intellectual property rights are the rights given to persons over the creations
of their minds. They usually give the creator an exclusive right over the use of
his/her creation for a certain period of time.

Laws & Rules that govern Intellectual Property Rights (IPR)

The importance of IPR was first recognized in the

1. Paris Convention for the Protection of Industrial Property (1883) &
2. Berne Convention for the Protection of Literary & Artistic Works (1886).
  Both are administered by the World Intellectual Property
Organization (WIPO).
 IPRs have been outlined in Article 27 of the Universal Declaration of
Human Rights.
 WTO governs IPR through Trade-Related Aspects of the Intellectual
Property Rights (TRIPS).

World Intellectual Property Organization (WIPO)

 WIPO is one of the 15 specialized agencies of the United Nations (UN).
 WIPO was created to promote and protect intellectual property (IP) across
the world by cooperating with countries as well as international
organizations.
 It began operations in 1970.
 Headquarters: Geneva, Switzerland.
 WIPO currently has 193 member states.
 WIPO’s activities include
o hosting forums to discuss and shape international IP rules and
policies,
o providing global services that register and protect IP in different
countries,
o resolving trans boundary IP disputes,
o helping connect IP systems through uniform standards and
infrastructure, and
o Serving as a general reference database on all IP matters.

Trade-Related Aspects of the Intellectual Property Rights (TRIPS)

 TRIPS is an international agreement on intellectual property rights.
 The Agreement covers most forms of intellectual property including
o patents,
o copyright,
o trademarks,
o geographical indications,
o industrial designs,
o trade secrets, &
o Exclusionary rights over new plant varieties.
 It came into force in 1995 & is binding on all members of the World Trade
Organization (WTO).
Benefits of IP Registration:

✓ Economic benefits: IP rights enable creators to protect and monetize their

creations. Third parties cannot use their creation without authorization from

✓ Benefits consumers and society: Provides consumers with innovative

the creator.

✓ Innovation: Promotes Innovation, Research and Development.

products and services.

✓ Establishes Ownership: Assures a better licensing position.

✓ Legal Benefits: Owners of IP can avail appropriate civil/ criminal
remedies, if their rights are infringed.

Effects of Non-Registration

✓ Difficult to obtain relief in case of infringement – Non-registered IPs have

weak evidentiary value.

✓ Only remedies under civil law can be availed – Owners cannot obtain
remedies under criminal law (expect copyright which are not compulsory to
register to seek remedies under criminal law).

Who can obtain Protection?

Any person(s) who is a creator of an original and creative or innovative

work, having principal place of business in India or if he/she does not carry out
business in India, has place of service in India can obtain such protection.

How is IPRs Registered or Granted in India?

All applications for IPRs need to be filed at the appropriate IPR office in
the prescribed format. The application is examined as per the statutes and the IPR
is granted/ registered or refused.
Definition Law Ministry Period
A patent is an exclusive right granted for an invention, Patents Act, 1970 DPIIT, Ministry 20 years
which is a product (or) process that provides a new way amended in 2006 of Commerce
of doing something or offers a new technical solution to a and Industry
problem and it provides protection for the invention to
the owner of the patent
A trademark is a distinctive sign that identifies certain Trademark Act DPIIT, Ministry 10 years
goods or services as those produced or provided by a 1999 of Commerce
specific person or enterprise. It may be one or a and Industry
combination of words, letters, and numerals.
A Geographical Indication (GI) is signs used on goods Geographical DPIIT, Ministry 10 years
that have a specific geographical origin and possess Indications of of Commerce
qualities or a reputation that are due to that place of Goods and Industry
origin. (Registration and
Protection Act),
1999
Copyright is a legal term describing rights given to Copyrights Act Copyright 60 years
creators for their literary and artistic works. This kind 1957, amended in office, MHRD
of works covered by copyright includes literary works 2012
such as novels, poems, plays, reference work and
computer programs; databases; films, musical
compositions, and choreography; artistic works such as
paintings, drawings, photographs, and sculpture;
architecture; and advertisement, maps, and technical
drawings.
Industrial designs refer to creative activity, which results Designs Act 2000 DPIIT, Ministry Initially design
in the ornamental or formal appearance of a product, of Commerce in copy right is
and design right refers to a novel or original design that and Industry registered for
is accorded to the proprietor of a validly registered 10 years and
design. later extended
on 5 years on
renewal
Plant Variety Protection- The objective of this act is to Protection of Dept of Field crops- 15
recognize the role of farmers as cultivators and Plant Variety and Agriculture and years
conservers and the contribution of traditional, rural, and Farmers rights Co-operation, Trees and
tribal communities to the country's argo biodiversity by act, 2001(PPVFR Ministry of vines- 18 years
rewarding them for their contribution and to stimulate ACT) Agriculture For notified
investment for R&D for the development of new plant varieties its 15
variety to facilitate the growth of the seed industry. years from date
of notification
Layout Design- Integrated circuits are commonly known Semiconductor Department of The initial term
as "chips" or "microchips" are the electronic circuits in Integrated Information of registration
which all the components (transistors, diodes, and Circuits Layout Technology is 10 years;
resistors) have been assembled in a certain order on the Design Act, 2000 Ministry of thereafter it
surface of the semiconductor material (usually silicon). Communication may be
and Information renewed from
Technology time to time.
IP Offices in India

What is a patent?

A patent is an exclusive right granted for an invention, which is a product

or a process that provides, in general, a new way of doing something, or offers a
new technical solution to a problem.
What is the term of a patent in the Indian system?

The term of every patent granted is 20 years from the date of filing of
application. However, for application filed under national phase under Patent
Cooperation Treaty (PCT), the term of patent will be 20 years from the
international filing date accorded under PCT.

What can be patented?

An invention relating either to a product or process that is new, involving

inventive step and capable of industrial application can be patented. However, it
must not fall into the categories of inventions that are non- patentable under
sections 3 and 4 of the Act.

What are the criteria of patentability?

An invention is patentable subject matter if it meets the following criteria –

i) it should be novel. ii) It should have inventive step or it must be non-obvious
iii) It should be capable of Industrial application. iv) It should not attract the
provisions of section 3 and 4 of the Patents Act 1970.

What types of inventions are not patentable in India?

An invention may satisfy the condition of novelty, inventiveness and

usefulness but it may not qualify for a patent under the following situations:

1) An invention which is frivolous or which claims anything obviously contrary

to well established natural laws;
2) An invention the primary or intended use or commercial exploitation of which
could be contrary to public order or morality or which causes serious prejudice to
human , animal or plant life or health or to the environment;

3) The mere discovery of scientific principle or the formulation of an abstract

theory or discovery of any living thing or non-living substance occurring in
nature;

4) The mere discovery of a new form of a known substance which does not result
in enhancement of the known efficacy of that substance or the mere discovery of
any new property or new use for a known substance or of the mere use of a
known process, machine or apparatus unless such known process results in a new
product or employs at least one new reactant; Explanation: For the purposes of
this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size,
isomers, mixtures of isomers, complexes, combinations and other derivatives of
known substance shall be considered to be the same substance, unless they differ
significantly in properties with regards to efficacy;

5) A substance obtained by mere admixture resulting only in the aggregation of

the properties of the components thereof or a process for producing such
substance;

6) The mere arrangement or re-arrangement or duplication of known devices each

functioning independently of one another in a known way;

7) A method of agriculture or horticulture;

8) Any process for medicinal, surgical, curative, prophylactic (diagnostic,

therapeutic) or other treatment of human beings or any process for a similar
treatment of animals to render them free of disease or to increase their economic
value or that of their products;

9) Plants and animals in whole or any part thereof other than microorganisms but
including seeds, varieties and species and essentially biological processes for
production or propagation of plants and animals;

10) A mathematical or business method or a computer program per se or

algorithms;
11) A literary, dramatic, musical or artistic work or any other aesthetic creation
whatsoever including cinematographic works and television productions;

12) A mere scheme or rule or method of performing mental act or method of

playing game;

13) A presentation of information;

14) Topography of integrated circuits;

15) An invention which, in effect, is traditional knowledge or which is an

aggregation or duplication of known properties of traditionally known component
or components;

16) Inventions relating to atomic energy

When should an application for a patent be filed?

An application for a patent can be filed at the earliest possible date and
should not be delayed. An application filed with provisional specification,
disclosing the essence of the nature of the invention helps to register the priority
of the invention. Delay in filing an application may entail some risks such as (i)
some other inventor might file a patent application on the said invention and (ii)
there may be either an inadvertent publication of the invention by the inventor
himself/herself or by others independently of him/her.

Can any invention be patented after publication or display in the public

exhibition?

Generally, an invention which has been either published or publicly

displayed cannot be patented as such publication or public display leads to lack of
novelty. However, under certain circumstances, the Patents Act provides a grace
period of 12 months for filing of patent application from the date of its publication
in a journal or its public display in an exhibition organized by the Government or
disclosure before any learned society or published by applicant. The detailed
conditions are provided under Chapter VI of the Act (Section 29-34).

How can I apply for a patent?

A patent application can be filed with Indian Patent Office either with
provisional specification or with complete specification along with fee as
prescribed in schedule I. In case the application is filled with provisional
specification, then one has to file complete specification within 12 months from
the date of filing of the provisional application. There is no further extension of
time to file complete specification after expiry of said period.

Is there provision for filing patent application electronically by online

system?

Yes, one can file patent applications through comprehensive online filing
system at https://ipindiaonline.gov.in/epatentfiling/goForLogin/doLogin. More
information for filing online application is available on the website of Patent
Office i.e. www.ipindia.gov.in

What is the patent filing and prosecution procedure in India?

Step 1: Filing of Patent Application- The first step is the filing of patent
application. Application is to be filed at the appropriate branch of the Patent
Office under whose jurisdiction he normally resides or has his domicile or has a
place of business or the place from where the invention actually originated. For
the applicant, who is non-resident or has no domicile or has no place of business
in India, the address for service in India or place of business of his patent agent
determines the appropriate patent office where application for patent can be filed.
Applicant shall submit the following documents while filing the application: Form
1 - Application for the Grant of Patent. Form 2 - Provisional/Complete
Specification to describe the invention. Form 3 - The Statement and Undertaking
under section 8 Form 5 - Declaration of Inventor ship. Form 26 - Power of
Attorney (if filed through Patent Agent/Attorney) Requisite statutory fees in the
form of cheque /DD/Cash. The patent applications can also be filed electronically
through the website of the patent office (www.ipindia.nic.in) up on receiving the
patent application; Patent Office will issue the patent application number and date
of filing, to the applicant.

Step 2: Publication- The patent application will be published in the official

journal of Patents after the expiry of 18 months from the date of filing or date of
priority of the application. However the applicant can submit request for early
publication in Form 9, by paying required fees, up on which these applications
will be published within one month from the date of request. The Patent Journal is
available in the website of Patent Office and will be updated once in a week.
Step 3: Opposition- Upon publication of the patent application, any person can
file pre grant opposition (based on different grounds) to the Controller of Patents
against the grant of patent. However the opposition will be taken up by the patent
office only after the filing of Request for Examination made by the applicant. Pre
grant opposition may be filed within 3 months from the date of publication of the
application.

Step 4: Request for Examination/Expedited Examination- The applicant or any

interested person must file request for examination for getting their patent
application examined by the Patent Office. Every patent application will be
examined only up on the receipt of such request. The applicant has to submit the
request in Form18 by paying the prescribed fee, within 48 months from the date
of filing or priority; otherwise, the application shall be treated as withdrawn by
the applicant. As per the Patent (Amendment) Rules 2016, an applicant may
request for expedited examination of patent application on either of two grounds,
first of them being indication of India as International Searching Authority (ISA)
or election of India as International Preliminary Examining Authority (IPEA) in
the corresponding international patent application, and second of them being
eligibility of applicant as start up as defined by the said rules.

Step 5: Issuance of First Examination Report (FER) (changed the nomenclature to

First Statement of Objections)- The Patent Office will conduct detailed
examination on the patent application to check whether the invention possesses
the criteria of novelty, inventiveness and industrial application and issues a First
Examination Report (FER) to the applicant, which contains the gist of objections
raised by the Patent Office.

Step 6: Reply to the Examination Report - The applicant must give his/her
response to the objections and clarifications in the First Examination Report
within 6 months (further extendable to 3 months, if not meeting the deadline)
from the date of issue of the FER. If the applicant is not able to submit the
response within the prescribed time, the application will be deemed to be
abandoned.

Step 7: Grant of Patent and Issuance of Certificate- If the applicant meets the
objections and clarifications asked for in the FER, the Controller will grant patent
and the details of the Patent will be entered in the register of Patents. Patent
Certificate will be issued to the applicant within one month from the date of grant
of patent and the details of grant of patent will be published in the Patent Journal.
If the applicant does not clear the objections, Patent Office will issue the second
examination report and thereafter hearing will be conducted for the applicant on
request. If the clarifications sought by the Patent Office are not cleared even after
the hearing, the Controller General will reject the patent application. However the
applicant can approach Intellectual Property Appellate Board (IPAB) against the
decision of the Controller and he may further move to the High Court and finally
the Supreme Court. The 2016 Amendment reduced the time for putting the
application in order for grant to 6 months.

Step 8: Renewal fees the duration of the Patent is 20 years from the data of filing
of the application. To keep the patent in force, renewal fees should be paid before
the expiration of the second year or the succeeding year from the date of filing of
patent. While paying the renewal fee, the number and date of the patent concerned
and the year in respect of which the fee is paid shall be quoted. Failing to pay the
renewal fee within the prescribed period, will result in the lapse of Patent.

Step 9: Post grant opposition upon grant of patent also, any interested person,
based on different grounds, may file a post grant opposition [Section 25(2)] in
Form 7 along with prescribed fee to the Controller against the grant of patent,
within one year from the date of publication of grant of patent.

What are the documents required for filing a patent application?

✓ Application form for filing patent (Form 1) in duplicate.

✓ Provisional or Complete specification (Form 2) in duplicate.

✓ If the provisional specification is filed, it must be followed by complete

specification within 12 months.

✓ Drawings in duplicate (if necessary).

✓ Abstract of the invention in duplicate.

✓ Information & Undertaking listing the number, filing date & current status
of each foreign patent application (Form 3) in duplicate.
 ✓ Priority document (if priority date is claimed) in convention application,
when directed by the Controller.

✓ Declaration of Inventor ship (Form 5) where provisional specification is

followed by complete specification or in case of convention/PCT national
phase application.

✓ Power of Attorney (Form 26), if filed through Patent Agent Fee

What is a Provisional Specification?

A provisional specification is named as provisional because it is not

complete and acts as a placeholder for a later complete specification. Provisional
specification describes the nature of the invention to claim the priority date of
filing of the application in which only the inventive idea need to be disclosed. The
inventor gets additional time of 12 months from the date of filing of provisional
specification for filing complete specification, without losing the novelty and
priority of his patent application. A provisional specification is a proof that the
inventor had the concept and idea at the time of filing of provisional. However, a
Provisional Specification must be followed by a Complete Specification within 12
months from the date of filing of the provisional application; otherwise, the
application will be deemed to have been abandoned
Is there any fee for renewing the patent?

Yes. The term of Patent is 20 years and the applicant has to renew the
patent from the 3 year up to the 20 year by paying the renewal fee, to make it
active. The applicant can pay the renewal fee year wise or he can pay in lump
sum. A patent shall cease to have effect, if the renewal fee is not paid within the
prescribed period.

Who is eligible for drafting the patent application?

As per Indian Patent Act 1970, the applicant himself can prepare his own
patent application or a registered Patent Agent can draft the Patent application on
behalf of the applicant. A Patent Agent is a registered person with the Indian
Patent Office who has been declared qualified the Patent Agent Exam conducted
by the Patent Office. Patent Agents will have their registration number.

Is an Indian Patent valid in other Countries?

No. Patent rights are territorial rights, which will be valid within the
territory of the Country which has issued Patent. Hence, an Indian Patent, which
is granted by the Indian Government, will be valid only in India.

What is Patent Co-operation Treaty (PCT)?

Patent Laws differ from Country to Country and there is nothing like
“World Patent” or “International Patent”. However, there is an international filing
system known as Patent Cooperation Treaty (PCT) system. When a PCT
application is filed, an inventor of a member country of PCT can simultaneously
obtain priority for his/her invention in all the PCT member countries. Patent right
is granted only by the particular member country thereafter entering the national
phase in that country (corresponding to the International application). India joined
PCT on 7 December, 1998. All activities related to PCT are coordinated by World
Intellectual Property Organization (WIPO) situated in Geneva
USEFUL WEBSITES FOR PATENT SEARCH

Ø www.ipindia.nic.in (Indian Patents)

Ø www.uspto.gov (US Patents)

Ø ep.espacenet.com (European Patents)

Ø www.wipo.int (PCT applications)

Ø www.google.com/patents

Ø www.freepatentsonline.com

Ø www.ipos.gov.sg (Singapore Patents)

Ø www.jpo.go.jp (Japanese Patents)

Where to File the Patent Applications from Kerala?

There are four Patent Offices in India with head office at Kolkata and
having branches at New Delhi, Mumbai and Chennai. The applications from the
southern states have to be filed in the Chennai branch in the following address;
Controller of Patents and Designs, Patent Office, Intellectual Property Office
Building, G.S.T. Road, Guindy, Chennai – 600032. Ph: 044 -22502081-84 Fax:
044 -22502066 Email: [email protected] Website: www.ipindia.nic.in

Can I renew my Patent after expiry?

An expired patent cannot be renewed.

Does Indian Patent give protection worldwide?

No. Patent protection is a territorial right and therefore, it is effective only

within the territory of India. There is no concept of global patent. However, filing
an application in India enables the applicant to file a corresponding application
for same invention in convention countries or under PCT, within or before expiry
of twelve months from the filing date in India. Patents should be obtained in each
country where the applicant requires protection of his invention.
 For Physical Filing For E- filing
Natural Small Others with Natural Small Others with
Person entity, Natural Person entity, Natural
and / or alone Person and and / or alone or Person and
Relevant
Startup or / or Startup Startup with / or Startup
Forms with and / or Natural and / or
Natural small entity Person small entity
Person and / or
and / Startup
or
Startup
Filing of Patent 1,2,3,5 1750 4400 8800 1600 4000 8000
application
Request for early 9 2750 6900 13750 2500 6250 12500
publication
Request for Examination 18 4400 11000 22000 4000 10000 20000
Request for expedited 18A Not Not Not 8000 25000 60000
examination of allowed allowed allowed
application for patent
under rule 24C
Conversion of the request 18A Not Not Not 4000 15000 40000
for examination filed allowed allowed allowed
under rule 24B to request
to expedited examination
under rule 24 C
Renewal 880 2200 4400 800 2000 4000
3rd year to 6th year 2650 6600 13200 2400 6000 12000
7th year to 10th year 5300 13200 26400 4800 12000 24000
11th year to 15th year 8800 22000 44000 8000 20000 40000
16th year to 20th year
**For the latest fees and forms keep visiting the IP India website, as the fee and
form changes periodically**

TRADEMARKS

What is a Trademark?

A Trademark is a distinctive sign or indicator of some kind, which is being

used by an individual or an enterprise to uniquely identify the source of their
products and to distinguish their products from those of its competitors. Some of
the examples of Trademarks are Milma, BSNL, Indian Oil, etc.

What does a Trademark do?

A Trademark provides protection to the owner of the mark by ensuring

exclusive right to use it to identify the goods or services, or to authorize others to
use it in return for payment. Trademark protection is enforced by the courts,
which in most systems have the authority to block Trademark infringement. In a
larger sense, Trademarks promote initiative and enterprise worldwide by
rewarding the owners of Trademarks with recognition and financial profit.
Trademark protection also hinders the efforts of unfair competitors, such as
counterfeiters, to use similar distinctive signs to market inferior or different
products or services.
What kind of Trademarks can be registered?

Trademarks may be for one or a combination of words, letters, and

numerals. It may consist of drawings, symbols, three – dimensional signs such as
the shape and packaging of goods, audible signs such as music or vocal sounds,
fragrances, or colors used as distinguishing features. There are several categories
of Trademarks. Service marks are the marks which are used to identify the
services of one enterprise from that of others. Services include Banking,
Insurance, Transportation, Education, Research Institutions, etc. Examples are
Indian Railways, State Bank of India, CSIR, LIC, etc. Collective marks are owned
by an association whose members use them to identify themselves with a level of
quality and other requirements set by the association. Examples of such
associations would be those representing accountants, engineers, or architects.
Certification marks are given for compliance with defined standards, but are not
confined to any membership. They may be granted to anyone who can certify that
the products involved meet certain established standards. The internationally
accepted “ISO 9000” quality standards are an example of such widely recognized
certifications.

How is a Trademark registered?

An application for registration of a trademark must be filed with the

appropriate National or Regional Trademark Office. The application must contain
a clear reproduction of the sign filed for registration, including any colors, forms
or three-dimensional features. The application must also contain a list of goods or
services to which the sign would apply.

What are the conditions for registering Trademarks?

For a mark to get registered, it must fulfill two conditions. First, the mark
must be distinctive, so that consumers can distinguish it from other trademarks
and products. Second, the mark must not be deceptive. It means the mark should
not mislead, deceive the customers or violate public order or morality.

How to select a Trademark?

It is better to select a mark, which is easy to pronounce, remember, spell

and recognize. The best trademarks are the coined words or invented words.
Avoid using dictionary words for the mark. Choosing geographical names
indicating the origin of the goods and laudatory words, which describe the quality
of the goods (best, perfect, super, quality, etc.), as brand names are also not
appropriate.
Entry On what payable Amount in INR. Correspondin g Form
No For Physical For E-filing Number
filing
1 Application for registration of a trademark TM-A
/collective Marks / Certification Mark / Series of
trademark for specification of goods or services
included in one or more than one classes.
Where the applicant is an Individual / 5,000 4,500
Startup/Small Enterprise
In all other cases (Note: Fee is for each class and 10,000 9,000
for each mark )
For renewal of registration of a 10,000 9,000 TM-R
trademark under section 25 for
each class
Application for 5,000 Plus renewal fee applicable 4,500 Plus renewal fee
renewal with under entry 3 applicable under entry 3
surcharge of
registration of a
Trademarks under
section 25 (3) for
each class
Application for 10,000 Plus renewal fee applicable 9,000 Plus renewal fee
renewal with under entry 3 applicable under entry 3
surcharge/ restoration
and renewal of a
Trademarks under
section 25 (3), 25 (4)
for each class
Can I register a trademark before starting a business?

Yes, you can register a trademark before your business start up as propose
to use mark.

Is the registration of trademark mandatory in India?

No, but it is advisable to do so. No person shall be entitled to institute any

proceeding to prevent, or to recover damages for, the infringement of an
unregistered trademark. Only the proprietor of a registered trademark can use the
symbol ® in India. Using the symbol ® unless the mark has been registered is
unlawful in India. Using symbol TM with trademark simply means that one
claims to be the proprietor of the trademark. There is no prohibition on the use of
the symbol TM in India

1) Step By Step Procedure to Register A Trademark

The process to get a trademark registered involves filing of the trademark

registration application, examination of the trademark, publication or
advertisement of the trademark, opposition (objections) if raised/ found,
registration of the trademark and renewal of the trademark after every 10 years.
 Procedure for Trademark Registration in

India Step 1: To search for a trademark

The applicant must be careful while choosing his/ her trademark. Since,
there are already tons of different types of trademarks available, once a trademark
is chosen, it is essential to carry out a public search on the trademarks database
which is available with the Trade Marks Registry to make sure that the trademark
is unique and that there is no other trademark which is either similar or identical
to his/ her trademark.

The trademark search discloses all the types of trademarks that are already
available in the market, either registered or unregistered. The search further tells
whether the applied trademark has a competition for the same trademark.

Search Link- https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx

Step 2: To file the trademark application

The application for registration of the trademark can either be filed in a

single- class or a multi- class totally depending on the goods and services the
business pertains to.

The registration application is Form TM-

A (https://ipindia.gov.in/writereaddata/Portal/Images/pdf/FORM-TM-A.pdf)
which can be either filed online through the official IP India website or physically
at the Trade Marks Office which depends on the jurisdiction of the trademark.

The application for trademark registration has to be supported with multiple

documents with complete details of the trademark for which the registration is
sought. Moreover, in case the applicant is claiming prior use in the trademark,
then a user affidavit has to be filed supporting the usage along with the evidence
of its prior usage.

Step 3: Examination of the trademark application by the government authority

Post the filing of the trademark application, a mandatory examination

report is issued by the Examiner after an extensive examination of the trademark
application in consonance with the guidelines of the Trade Marks Act, 1999.

The examination report by the authority may or may not disclose some
objections which can be either, absolute, relative or procedural. This examination
report by the Trademark Authority is issued within a period of 30 days of having
filed the registration application.
 A reply to the examination report is required to be filed within a period of
30 days after receiving the report asserting the arguments and evidence against
any objections to waive them off.

Step 4: Post- examination

After the filing of the reply to the examination report, the Examiner
(Trademark Authority) may appoint a hearing if the Examiner is not entirely
satisfied by the reply filed or in case the objections are not met. After the said
hearing, the Examiner may accept the mark and subsequently forward the
application for publication in the journal or reject the said application if any
objection still persists.

Step 5: Advertisement of the trademark

Once the registration application has been accepted, the said trademark is
advertised and also published in the Trade Marks Journal for a period of 4
months. The aim behind the publication and advertisement is to invite the general
public to filing an opposition against the registration of the mark.

The Trade Marks Journal is available on the official Registry website which gets
updated every Monday of the week- https://ipindia.gov.in/journal-tm.htm

Step 6: Opposition from general public

Post the advertisement and publication of the trademark in the journal, any
aggrieved person can file a notice to oppose against the registration of the
advertised/ published trademark. This notice to oppose the trademark has to be
filed vide Form TM- O within 4 months of the mark ® ™ publication in the
Trademark Journal. In case the applied for trademark is opposed/ objected, then
the due process of law has to be followed which includes filing the counter-
statement application, evidence as well as hearing in order to get the trademark
registered.
Step 7: Registration of the trademark

The final step towards the entire procedure is registration where the
application proceeds to registration after conquering the objection and/ or the
opposition against the said registration of trademark.

Besides this, in case there has been no objection against the registration of
the trademark during the advertisement/ publication period of 4 months, then the
trademark is issued an auto- generated registration certificate within 1 week ™ ®
time. Once the registration complete, it is valid for a period of 10 years after
which it would be required to be renewed within a prescribed time period.

Documents required for a trademark registration

A trademark registration is a significant procedure via which a brand/

business can be safeguarded from undesired use as well as infringement.

Note: In the course of the registration of the trademark application

procedure, it is not mandatory to submit original documents. Scanned copies of
the original documents suffice the requirement.

Documents required in Individual &Sole proprietorship

Any person (applicant) whether an Indian National or a Foreign National

can very conveniently register a trademark in India. Since there is no necessity to
form a legal entity or a business entity to get a trademark registered. Besides this,
the documents needed to get a trademark registered in the name of
a proprietorship are identical to that of an individual as under:

 Copy of the proposed logo, ideally in black and white (which is optional).
However, in case the logo is not provided, the trademark application can be
filed for the word.
 Duly signed Form- 48. This form is an authorization from the applicant to a
Trademark Attorney to file the trademark registration application on his/
her behalf.
  Copy of the identity proof of the individual applicant or the proprietor
which may include: passport, Aadhaar card, PAN card, etc.
 Copy of the address proof of the individual applicant or the proprietor
which may include latest electricity bill, phone bill, etc.

Documents required in partnership / LLP / company - Small Enterprises or

Start-ups

Now, to fall under the category of a small enterprise, the individual

applicant is required to have to provide the Udyam Registration (UR) certificate.
Also, in addition to the UR, the following mentioned details are required.

Partnership / Company / LLP

In the event of a partnership firm or an LLP, the entrepreneur/ applicant is

required to submit the following documents:

 Scanned copy of the logo (optional)

 Duly signed Form- 48
 Udyam Registration Certificate
 Partnership Deed or the Incorporation Certificate
 Copy of identity proof of signatory/ applicant
 Copy of address proof of signatory/ applicant

Documents required for other applicants in a trademark registration

All other applicants, including companies that do not have Udyam registration
will have to submit the following documents to obtain trademark registration in
India.

 Scanned copy of the logo (optional)

 Duly signed Form- 48
 Partnership Deed or the Incorporation Certificate
 Copy of identity proof of signatory/ applicant
 Copy of address proof of signatory/ applicant
Ministry of MSME is providing reimbursement for Patent, Trademarks, GI
and Industrial Design under MSME Innovative Scheme

To apply click- https://innovative.msme.gov.in/Home/IprIndex

Important Links

❖ DIPP Nodal point for all IPR policy issues: http://dipp.nic.in/

❖ CGPTDM office: For filing of IP applications/ to obtain real time status of

all IP applications/ checking grants/ registration of IPRs:
www.ipindia.nic.in

❖ Copyright office: For information related to filling and status of copyright

applications: http://copyright.gov.in

❖ Startup India: For information regarding startups: http:// startupindia.gov.in

❖ Protection of Plant Varieties and Farmers' Rights Authority: For filing/

registration of plant variety applications: http:// plantauthority.gov.in

❖ TIFAC: For information on filing of Indian/ foreign patents, patent search

facilities: www.tifac.org.in

❖ Ministry of Electronics and Information Technology: Providing IP

Facilitation Support to DeitY Societies and Grantee Institutions, Financial
Support to Startups and SMEs for International Patent Filing through SIP-
EIT Scheme, Creation of IPR Awareness through Financial Support to
Industry Bodies and Academia, Providing IPR Related Services including
Prior Art Search: http://meity.gov.in/content/ipr-promotion
 ❖ Semiconductor Integrated Circuits Layout Design Registry (SICLDR): For
information related to filling and status of Semiconductor Integrated Circuit
Layout Designs applications: http://sicldr.gov.in

❖ List of Trademark Agents: https://ipindia.gov.in/trade-mark-agents.htm

❖ List of Facilitators for Trademarks under SIPP Scheme:

https://ipindia.gov.in/Facilitators-TMR.htm

❖ Details of Nodal Offices for legal certificate:

https://www.ipindia.gov.in/writereaddata/Portal/Images/pdf/Nodal_Officers
_for_legal_certificate.pdf

❖ Trademark Status- https://ipindiaonline.gov.in/eregister/eregister.aspx

❖ Track Legal Certificate Requests-

https://ipindiaonline.gov.in/eregister/LC/viewlegalcertdetails.aspx

❖ Online Correction request-

http://ipindiaservices.gov.in/tmrCorrectionRequest/frmLogin.aspx

❖ Manual on Trademark-
https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_
tmr-draft-manual.pdf

❖ Trademark Registry contact details- https://ipindia.gov.in/contact-us-

tmr.htm

This initiative has been taken by MSME-Development and Facilitation

Office (DFO), Thrissur Ministry of MSME; Government of India to create public
awareness about economic, social and cultural benefits of IPRs among MSME
fraternity. The information contained in this booklet is not legal advice and is for
informational and/or educational purposes only. MSME-DFO makes every effort
to ensure and provide most accurate information; however, it is not possible to be
accurate at all the times so, MSME-DFO does not guarantee, and makes no
warranties as to, the accuracy, accessibility, integrity and timeliness of any
information.

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