Registering your trademark in India

A trademark protects your brand identity in the Indian marketplace. A quick guide on
applying for trademark registration:

Who Can Apply?

Any person who claims to be the proprietor of the Trademark in relation to goods and /or
services may apply for the registration of a Trademark. For the purpose of making an
application for Trademarks, ‘Person’ includes:
 A Natural Person;
 A Body Incorporate;
 A Partnership Firm;
 HUF;
 Association of Persons (in case of collective Trademarks);
 Joint Proprietor(s);
 A Trust;
 A Society; or
 A Government Authority/Undertaking
 Limited Liability Partnerships (LLPs)
1. In the case of companies, the name under which a company is incorporated is required. A
trading style or business name, if given, will be recorded separately. In the case where the
applicant is a government department.
2. The traditional form of the name of the applicant is “the Government of India /State of
________ (followed by the name of the department) represented by____________(name of
the authorized person followed by the name of department)”.
3. For statutory/public sector undertakings, reference should be made to the statute under
which such organization/undertaking is discharging its functions. The application can be
made in the name of the organization/undertaking as “XYZ Corporation of India (established
under the ……. Act) through its authorized signatory and executed in the manner prescribed
by the rules regulating it”.

Documents Required:

 Application Form TM-A: This form captures details about your trademark, applicant
information, and the goods/services associated with the brand
https://www.ipindia.gov.in/.
 Proof of Applicant's Identity: PAN Card or Aadhaar Card for individuals,
Incorporation Certificate for companies, or Partnership Deed for firms.
 Trademark Representation: A clear image of your trademark (logo, slogan, etc.)
 Business Registration Proof: For companies or LLPs.
Steps Involved:

1. Choose Your Trademark: Ensure it's unique, distinctive, and represents your brand
well.
2. Conduct a Trademark Search: Check for existing similar trademarks to avoid
conflicts.
3. File the Application: Submit Form TM-A and the required documents to the Trade
Marks Registry. Link of the form-
4. Examination and Publication: The Trademark Office examines your application and
may publish it for opposition.
5. Registration Grant (if successful): If no objections arise, your trademark gets
registered.

Additional suggestion:

 Clearly define the class of goods/services your trademark applies to.

Category of Trademark: The applicant can choose amongst the following category of
Trademarks:
1. Word mark - It includes one or more words, letters, numerals, or anything written in standard
character.
2. Device mark- it includes any label, sticker, monogram, logo, or any geometrical figure other than
an n-word mark
3. Colour- when the distinctiveness is claimed in the combination of colours with or without the
device.
4. Three-dimensional trademark -it includes the shape or packaging of goods.
5. Sound Description of the mark.

Objections may arise while filing the trademark:

The first stage objections that are generally received in the trademark examination report:
The objection is one of the first stages of the registration process. The examiner/registrar may
object to Sections 9 (Complete Reasons for Refusal) and Section 11 (Related Reasons for
Refusal) of the Act on two grounds:
1. If the application contains incomplete/incorrect information; or
2. If there is already a similar trademark available;
3. A third party may object to the registration of the trademark instead of to the public
interest. There are two ways in which a third party gets a chance to challenge a trademark
registration.
4. If the mark is published in the Trademark Journal or,
If the applicant uses the mark before its registration. In this case, the status of the application
will be changed to advertise before acceptance.
The most Important Question is How to respond to an objection.
1. Once an objection is raised by the Registrar, the applicant will be given reasonable
notice of the objection and reasons for the objection. The Applicant’s foremost thing is
to put a reply before the Register. This must be done within one month from the date of
receipt of the examination report. Failure to object within one month will change the status of
the application to Abandoned.
2. While responding to the raised objection in the examination you need to stabilize the
distinctive concerning the applied mark for the good and services. The mark should be
inherently capable of distinguishing the goods/services from other similar goods/services
in the market.
3. The mark that the Applicant has applied should be restricted by non-claiming of the
exclusive rights in the specific terms mentioned in the applied mark for the registration.
4. The mark should be considered to be deceptively similar to a rival mark when it confuses
the mind of an average consumer as to the ownership of two marks. it should be noted that
the confusion must be probable and not merely possible. To analyze whether the mark is
deceptively similar, the mark is to be taken as a whole with its structural, visual, conceptual,
and phonetic similarities with the rival marks to see what may confuse the minds of people
with average intelligence and imperfect recollection.
5. In the case of a startup/small enterprise, the requisite certificate should be provided as
proof. If an application is filed as an individual or the joint owner(s), the full name of the
applicant or the joint owner(s) is required. A business name or trading style is not acceptable
as the name of an individual or the joint owner(s).
6. In the case of a partnership firm, the names of all the partners are essentially required to
be mentioned in an application filed by a partnership firm. In the case of companies, the name
under which a company is incorporated is required. A trading style or business name, if
given, will be recorded separately. In the case where the applicant is a government
department, the traditional form of the name of the applicant is “the Government of India
/State of ________ (followed by the name of the department) represented
by____________(name of the authorized person followed by the name of department)”.
7. For statutory/public sector undertakings, reference should be made to the statute under
which such organization/undertaking is discharging its functions. The application can be
made in the name of the organization/undertaking as “XYZ Corporation of India (established
under the ……. Act) through its authorized signatory and executed in the manner prescribed
by the rules regulating it”.
 Fee as per first Schedule Trademark Rules 2017
Fee Physical filing e-filing

Where the applicant is an Individual /

Startup/Small Enterprise 5,000 4,500

In all other cases (Note: Fee is for each

class and for each mark ) 10,000 9,000

Draft Reply to Examination Report under Section 9 of Trade Marks Act,

1999

In the matter of:

Application for Registration of Trademark No.:

Applicant:

Subject: Reply to Examination Report

Dear Sir/Madam,

This reply is submitted in response to the Examination Report dated [Date of Report] for our
trademark application bearing No. [Application Number]. We understand that an objection
has been raised under Section 9(1) of the Trade Marks Act, 1999.

Objection: Briefly summarize the objection raised by the examiner under section 9

Response:

We respectfully disagree with the objection raised by the examiner. We contend that the
trademark [Trademark Name/Logo] is:

 Inherently Distinctive: The mark is inherently distinctive and possesses the

necessary qualities to distinguish our goods/services from those of others. It is unique
from the others (unique category of the trademark)
 Acquired Distinctiveness: The mark has acquired distinctiveness through its
continuous use in commerce throughout (mention duration, if applicable )We have
submitted evidence of such use in the form of (mention evidence, e.g., sales figures,
marketing materials).
 Not Descriptive: The mark is not merely descriptive of the goods/services it
represents. It does not directly convey the nature, quality, or purpose of the
goods/services.
  No Likelihood of Confusion: Even if the mark is considered similar to another
registered mark, there is no likelihood of confusion in the marketplace due to
(reasons, e.g., differences in target audience, geographical reach).
 Proposed Amendment: We are willing to consider amending the mark slightly to
(describe the proposed amendment) to address the distinctiveness concerns.

We kindly request the Trade Marks Office to reconsider the objection and grant the
registration of our trademark. We are confident that the mark (Your Trademark Name/Logo)
meets all the legal requirements for registration.

Attach the list any additional documents submitted to support your arguments]

Thank you for your time and consideration.

Sincerely,

[Your Name/Your Company Name]

Draft Application under Section 11 of the Trade Marks Act, 1999

To: The Registrar of Trade Marks, (Address of the Trade Marks Registry)

From: (Your Name/Company Name)

Address: (Your Complete Address)

Application for Registration of Trademark

Subject: Application for Registration of Trademark under Section 11 of the Trade Marks
Act, 1999

1. Applicant Details

 Name: (Your Name/Company Name)

 Address: (Your Complete Address)
 Email: (Your Email Address)
 Contact Number: (Your Contact Number)

2. Trademark Details

 Representation of Trademark: Attach a clear image of your trademark (logo,

slogan, etc.) in the prescribed format.
 Description of Trademark: Briefly describe your trademark, including any specific
elements or designs.

3. Class of Goods/Services
  Specify the class(es) of goods/services under which you intend to register the
trademark. You can refer to the Trade Marks Classification
https://www.ipindia.gov.in/ for guidance.

4. Basis for Registration under Section 11

 State that you are seeking registration under Section 11 of the Trade Marks Act, 1999.
 Explain why your trademark qualifies for registration under Section 11. Here are
some possible reasons:
o The mark has been in honest concurrent use with a similar existing
trademark for a substantial period. (Provide evidence of such use)
o The mark is not confusingly similar to the earlier mark due to differences in
goods/services, target audience, or geographical reach. (Explain the
differences)

5. Statement of Disclaimer (if applicable)

 If any element of your trademark is not inherently distinctive (e.g., generic terms),
you may need to disclaim that element.
 State your willingness to disclaim such elements for registration purposes.

6. Declaration

 Declare that the information provided in this application is true and accurate to the
best of your knowledge.

7. Signature

 Sign the application with your authorized signature.

8. Enclosures

 Attach all supporting documents, such as:

o Proof of your identity (PAN Card, Aadhaar Card, etc.)
o Proof of business registration (if applicable)
o Evidence of trademark use (if claiming concurrent use)
o Power of Attorney (if using an agent)

Attach the list any additional required documents

Thank you for your time and consideration.

Sincerely,

(Your Name/Your Company Name)

What is the "Formalities Chk Failed" status in Trademark?

The process of trademark registration does not end only with the filing of a trademark
application with the Trademark Registry. For your information, a trademark application goes
through several stages before it gets registered. There are basic processes in which the
Registrar may raise a concern that must be resolved before the trademark status is changed to
Registered.

If the response is not submitted within the time frame specified, the request is refused. As a
result, the applicant must check the status of the submission regularly. Now, let us talk about
the status of “Formalities Chk Failed”.

Reasons for "Formalities Chk Failed" status in Trademark Registration

Process:

1. Incorrect goods and services description.

2. Incorrect documentation, Incorrect class
3. The brand name and logo are distinct from one another
4. The logo should be unique and one-of-a-kind

When submitting an application form, make sure to select the appropriate

category. The categories are divided into four sections, which are as
follows:

 Enterprise Limited
 Startup
 Personal/Single Proprietorship
 Other

Some Important considerations to ensure proper trademark application:

1. Under the individual/sole proprietor group, a power of attorney notarized on

non-judicial stamp paper must be filed in pdf format. The applicant must
submit separate documents by the categories mentioned.
2. As a result, it proper documentation is not submitted, the application will be
marked as “formalities chk failed”
3. It is possible that the uploaded documents are corrupts or that the examiner is
unable to open and access them.

Now will discuss some steps to take to avoid this problem

The Department shall issue a notice of failure to comply with the trademark's Formalities
audit, as well as the reasons why the application could not be reviewed. The applicant must
file a response within 30 days of receiving the notice. In the absence of action within a
specified time frame, the appeal is considered as “Abandoned” for lack of prosecution under
Section 132 of the Trademarks Act, 1999.

The Trademark Registry will issue a notice for Formalities check failure, along with
explanations. The applicant must file a response within 30 days of receiving the notice. If the
Registry does not receive a response within the specified time frame, the application will be
marked as “ABANDONED”.

Applicant can file a formalities chk reply from the ‘MISCELLANEOUS REPLY’ (MIS-R)
by entering the application number.

Thank you