BASICS ON TRADEMARK FILING
INDIAN SCENARIO
CONTENTS
1. Coining and Identification of Trademark
2. Identification of Trademark
3. Trademark Requisition form
4. Identification of Classes, Jurisdiction
5. Classification of Goods & Services
6. Jurisdiction
7. Trademark Search
8. Advantages
9. Procedure for Registration
10.Filing
11.Use of TM & R
12.Online status Check of TM Applications
13.Examination & hearing
14.Publication
15.Trademark Watch
16.Advantages
17.Opposition
18.Stages of Opposition
19.Registration
20.Trademark Process-Flow charts
21.Annexure A- classification of goods
22.Annexure B- Forms & Fees
23.Annexure C- Guidelines for Public Search
24.Annexure-D- Juridiction
25.International Scenario
Page 1 of 35
I. COINING AND IDENTIFICATION OF TRADEMARK
· If it is a word it should be easy to speak, spell and remember.
· The best trade marks are invented words or coined words.
· Please avoid selection of a geographical name, personal names etc. No one can
have monopoly right on it.
· Avoid adopting laudatory word or words that describe the quality of goods
(such as best, perfect, super etc)
· It is advisable to conduct a market survey and a search at Trademark office to
ascertain if same/similar mark is used in market.
· Whether to file the trademark in Black & White or Colour- The advantage of
filing Trademark in Black and white is that, you could use the trademark in
any color combination of your choice at a later stage
Identification Of Trademark
i) Business unit to provide the trademark to be searched to the legal team.
ii) Business unit to provide the below mentioned TRADEMARK SEARCH
REQUISITION FORM along with the trademark to be searched to the legal
team
iii) Criteria of a good trademark- distinctive, unique, not deceptively similar, no
direct reference to character or quality of the goods,, not identical/ similar
with an earlier pending/registered mark
Requisition Form for Search /Filing of new TRADEMARKS
Details required.
1. Name of the brand to be searched
2. Is this a word mark or device mark or label? Please attach the same in PDF
format.
3. Briefly state the purpose of the brand name ie intention to be used on which
category of services/products
4. Name of the country in which search / registration is desired.
5. Class of goods in which search / registration is desired.(if aware).
6. Have you started using this brand name in the market.
7. Name of the company in which mark is to be registered.
II. IDENTIFICATION OF CLASSES, JURISDICTION
i) Classification of Goods and Services
· Almost all jurisdictions including India employ a classification system in which goods
and services have been grouped into classes for registration. Most countries follow
the same classification system, namely the International Classification of Goods and
Services also known as NICE CLASSIFICATION, which consists of 34 classes of goods
and 8 classes of services. (The WIPO recently revised the Nice Classification, adding
three service classes (43, 44, 45) and restructuring Class 42, retaining certain
services. This provision has not yet been implemented in India). Section 7 of the
Trade Marks Act of 1999 provides that the Registrar shall classify goods and services
in accordance with the 7th Edition of International Classification for registration of
trademarks. India follows a system wherein there are 42 classes, of which goods in
Page 2 of 35
classes 43, 44, 45 of the latest edition of the International Nice Classification is also
considered in the same class ie class 42. The detailed list attached to this document
at ANNEXURE A and is available online at
https://ipindia.nic.in/tmr_new/default.htm. The exhaustive list of goods/services in
each class is available at the World Intellectual Property Organizations (WIPO) link
ie; https://www.wipo.int/classifications/nivilo/nice/index.htm
·
ii) Jurisdiction
The registration procedure in India is based on the ‘first to file’ system. It is therefore
important that the rights holder apply for the registration of its mark as soon as
possible. The registration of a trademark in India typically takes about 2 to 3 years,
subject to the trademark not being opposed by a third party. The Office of the Controller
General of Patents, Trade Marks, Industrial Designs and Geographical Indications is the
appropriate office for filing of a trademark application in India. This office has branches
in Mumbai, Delhi, Chennai, Ahmedabad and Kolkata. The detailed address is mentioned
in ANNEXURE D. A trademark application may be filed in any of these offices based on
the territorial jurisdiction.
III. TRADEMARK SEARCH
i) conduct trade mark search in the Indian Trade Marks Registry in the
classes that are of interest to your business unit, including the ancillary
classes.
a) Search can be done officially and unofficially. The fees for each class is Rs.500
(official fee) to be filed through TM-54. ANNEXURE B gives the details of various
applications, costings etc. Search also can be done online as specified in
ANNEXURE C.
For instance, if the trademark is to be used for entertainment related services, it is
advisable to do the trademark search in classes 35,38, 41 & 42 and file the
trademark in all the 4 service class along with category of goods such as class 9,16,
25,28 etc depending on requirements of the business unit and the manner in which
the trade mark would be used.
ii) It is also advisable to conduct a common law search (through the websites
of WIPO, European Union –OHIM, USPTO
https://www.wipo.int/ipdl/en/search/madrid/search-struct.jsp,
https://oami.europa.eu/CTMOnline/RequestManager/en_SearchBasic
https://tess2.uspto.gov/bin/gate.exe?f=tess&state=92vqvf.1.1 and a
a google search to ascertain if there are any third parties that might already be
using the trademark.
iii) Advantages of search
a) to determine if the trademark is eligible and available for registration
b) to ascertain if there is any deceptively similar marks
c) to identify pre-existing trademarks that have the potential to conflict with your
trademark.
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d) It helps in ascertaining whether or not there exists an identical or similar mark
registered or pending for the identical or similar goods.
PROCEDURE FOR REGISTRATION
STEP 1: The Application is filed.
STEP 2:Then the application is examined by the Trade Mark Office and objections, if
any, are raised.
STEP 3:After clearing the objections, if any, the mark is advertised in Trade Marks
Journal & is open to third party for opposition, the period being (3+1) months.
STEP 4: The registration certificate is issued after the completion of opposition
period, if there is no opposition by the third party during this period.
In case of opposition, registration certificate is issued when the opposition is
dismissed.
IV. FILING
1. Full name, address & nationality of applicant(s).
2. descripttion of trade mark, one print if the mark is in label form.
3. List of all items (goods) / services to which the mark is applied or
proposed to be applied for-identification of the classes/sub classes.
4. User date, if the mark is already being used in India.
5. List of countries with date, where the mark has already been applied for.
6. TM-48 ( if applied through a TM attorney).
7. Check whether to be associated with existing applications
1. Application is to be made before The Registrar of Trademarks in prescribed
manner along with official fee as specified in the annexure.
2. The Applicant to register a trademark or service be contain the complete name,
address, status and address of service in India.
3. Application can be made in one class or multiple classes for a single mark
4. Every application for the registration of a trade/ service mark shall be in respect of
goods comprised in one class only of the Fourth Schedule of the Trademark Rules
2002.However, if any goods are not specified in any of the classifications, in such
case the Registrar in his own discretion shall determine the classification of those
goods.
5. An application to register a trade mark shall, unless the trade mark is proposed to
be used, contain a statement of the period of user.
6. The application to the Registrar for the registration of a trademark shall be signed
by the applicant or his agent.
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7. Incase of the application is filed through an agent, a power of attorney in his/her
favour be submitted alongwith application.
8. Where a trade mark contains a word or words in a language other than Hindi or
English, the Registrar may ask for an exact translation thereof together with the
name of the language
9. The applicant from the earliest corresponding application in a Convention country
can claim priority provided that application is filed in India within six months of the
priority date. Multiple and partial priorities are allowed.
Use of TM & ®
Once you have filed an application for registration of trademark, the "TM" symbol
may be used with the mark. Anyone who claims rights in a mark may use the TM
(trademark) designation with the mark to alert the public to the claim. However, the
registration symbol, R, may only be used once the mark is actually registered in the
Trademark Registrar's Office. Even though an application is pending, the registration
symbol may not be used before the mark has actually become registered.
Online Status check of TM application
Once you receive a filing receipt containing the serial number of your application, you
may check on the status online from the official website of the Trademarks Registry
https://www.ipindiaonline.gov.in/etmr/tmrstatus/onlinestatus.aspx
V. EXAMINATION & HEARING
The Trademark Office will examine the registrability of the application, which
includes distinctiveness, existing similarity with prior registrations, and completion of
supporting documents, if accepted, the Trademark Office will issue an acceptance
order and the Trademark is ordered for publication. Examination generally occurs
within 3-4 months of filling of Trademark application, but the request for the expedite
examination of an application can also be made, which costs 5 times the govt. fee for
filing the Trademark application. The process flow is as follows:
Application Received → Application No. & Receipt given → First Examination Report
(FER)issued → Reply to the FER to be filed → Hearing if any → publication in the
journal
VI. PUBLICATION:
Trademark applications accepted by the Registrar are published in Trademark
Journal. Trademark journal is available online at
https://ipindia.nic.in/tmr_new/default.htm
Any interested party may file a notice of opposition to the registration of the mark
within 3 months from the date of last publication.
TRADEMARK WATCH
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Trademark watching is an insurance against preventing the third party from
registering a similar or identical Trademark in respect of identical or similar goods
by regularly checking the newly issued trademark journals available online.
Trademark journal published need to be checked by adopting the following criteria.
1. Prefix Match
2. Suffix Match
3. Phonetic Match
4. Identical Match
Advantages of Watch keeping
1. Warn you when identical or deceptively similar marks are published in
the Trademark journal for identical or similar goods.
2. Warn you when Trademark application is filed in the Trademark
registration office.
3. Help you in taking the action against the confusing or deceptively similar
mark
VII. OPPOSITION:
When the Trademark is advertised in the Trademark Journal, then third
party can oppose the registration of the Trademark within the 3 months
from the date of the Trademark journal made available to the public.
Normally the following person opposes the registration of Trademark:
a) The owner of an earlier Trademark application or registration covering
a similar Trademark for similar goods.
b) A person who has used the same or a similar Trademark prior to the
client, but who has not sought registration of the Trademark.
If the Trademark application is opposed, then the Trademark office will
request evidence in writing from both parties. If the dispute is not settled
by the parties, then matter is determined at a hearing. Registration of an
opposed Trademark application will be delayed pending till the
determination of the opposition.
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Stages and Timeframes of an Opposition
Sl.
No
By Whom Action Performed To Time frame
1 Opponent Lodge Opposition Registrar Advt dt + (3+1)
months
2 Registrar Serve Notice of Opp Applicant Receipt of Opp + 2
months
3 Applicant Lodge
Counterstatement
Registrar Receipt of Notice
+ 2 months
4 Registrar Serve
counterstatement
Opponent Receipt of
counterstatement + 2
months
5 Opponent Serve Evidence in
support of Opp
Registrar &
Applicant
Receipt of Evidence
+ (2+1) months
6 Applicant Serve Evidence in
support of Application
Registrar &
Opponent
Receipt of Evidence
+ (2+1) months
7 Opponent Serve Evidence in reply Registrar &
Applicant
Receipt of Evidence
+ (1+1) months
8 Registrar Serve notice of hg Applicant &
Opponent
Receipt of Evidence
+ 3 months
9 Applicant &
Opponent
Notify attendance of hg Registrar Receipt of Notice
+ 15 days
The above duration may vary from case to case subject to miscellaneous issues that would arise
from time to time
The opposition procedure is as follows:
1. The Opposition Notice is filed on Form No. TM-5 within three months from the date
of publication of the Trademark with fee of Rs. 2500/- at the Trademark Registry
office by the Opponents (in Triplicate).
2. The Trademark Registry office sends one copy of the Notice of Opposition Notice on
TM – 5 to the Applicants.
3. The Applicants sends his Counter- Statement in triplicate on Form No. TM- 6 to the
Trademark Registry with fee of Rs. 1000/-.
4. The Trademark Registry then sends one copy of the Counter Statements to the
Opponents (who has filed TM –5).
5. On receipt of the Counter Statement, the opponents file their evidence by the use of
Affidavit supported by documentary evidence of the use and advertisement of the
mark to the Trademark Registry and also sends one set of his evidence to the
Applicants simultaneously.
6. On receipt of the documents from the opponents, the Applicants file their evidence
by way of Affidavit and documentary evidence of the use and advertisement of the
mark to the Trademark Registry and one complete set to the opponents.
7.On receipt of the documents from the Applicants, the opponents file their rebuttal
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evidence within one month.
8. Hearing takes place thereafter and final order is passed by the Registrar based on
which the application moves to the next phase ie registration
VIII. REGISTRATION:
In the absences of opposition, a Trademark is registered, and the relative certificate of
registration is issued for 10 years from the date of filing of an application. Now it is
taking 24-30 months from the filling of the Trademark application to the final
registration of the Trademark which would vary from time to time depending on
various circumstances.
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TRADEMARK PROCESS
SAMPLE 1
Page 9 of 35
SAMPLE 2
Filing of
Application
Numbering &
Dating of
Application
Examination of
Application
Abandoned
Refusal
Appeal of
Appellate Board
Non compliance
of Objection
Hearing of
Objections is
contested
Waiving or
Removal of
Objection
Incase of
Allowance of
Appeal
Communication
of Objections
Compliance of
Objection
Acceptance
No Objections
from Registrar
Notification of
Advertisements
Opposition
Disallowed
Supreme Court
Disallowed
Opposition
Appeal
Disallowed
Allowed
Opposition
Allowed
Appeal to be
filled in Appellate
Board
Appeal Allowed
Registration
Renewal every 10
Year
Page 10 of 35
ANNEXURE A
THE FOURTH SCHEDULE TO TRADE MARKS RULES, 2002
Classification of goods and services – Name of the classes
https://ipindia.nic.in/tmr_new/default.htm (indian list)
https://www.wipo.int/classifications/nivilo/nice/index.htm (exhaustive list)
(Parts of an article or apparatus are, in general, classified with the actual article or apparatus, except
where such parts constitute articles included in other classes).
Class 1. Chemical used in industry, science, photography, agriculture, horticulture and forestry;
unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering
and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesive
used in industry
Class 2 . Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood;
colorants; mordents; raw natural resins; metals in foil and powder form for painters; decorators; printers
and artists
Class 3 . Bleaching preparations and other substances for laundry use; cleaning; polishing; scouring and
abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices
Class 4 . Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions;
fuels(including motor spirit) and illuminants; candles, wicks
Class 5 . Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical
use, food for babies; plasters, materials for dressings; materials for stopping teeth, dental wax;
disinfectants; preparation for destroying vermin; fungicides, herbicides
Class 6. Common metals and their alloys; metal building materials;
transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of
common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of
common metal not included in other classes; ores
Class 7 . Machines and machine tools; motors and engines (except for land vehicles); machine coupling
and transmission components (except for land vehicles); agricultural implements other than handoperated;
incubators for eggs
Class 8 . Hand tools and implements (hand-operated); cutlery; side arms; razors
Class 9 . Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing,
measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments;
apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers,
recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash
registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus
Page 11 of 35
Class 10 . Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and
teeth; orthopaedic articles; suture materials
Class 11 . Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying ventilating,
water supply and sanitary purposes
Class 12 . Vehicles; apparatus for locomotion by land, air or water
Class 13 . Firearms; ammunition and projectiles; explosives; fire works
Class 14 . Precious metals and their alloys and goods in precious metals or coated therewith, not
included in other classes; jewellery, precious stones; horological and other chronometric instruments
Class 15. Musical instruments
Class 16 . Paper, cardboard and goods made from these materials, not included in other classes; printed
matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes;
artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and
teaching material (except apparatus); plastic materials for packaging (not included in other classes);
playing cards; printers' type; printing blocks
Class 17 . Rubber, gutta percha, gum, asbestos, mica and goods made from these materials and not
included in other classes; plastics in extruded form for use in manufacture; packing, stopping and
insulating materials; flexible pipes, not of metal
Class 18 . Leather and imitations of leather, and goods made of these materials and not included in other
classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips,
harness and saddlery
Class 19 . Building materials, (non-metallic), non-metallic rigid pipes for building; asphalt, pitch and
bitumen; non-metallic transportable buildings; monuments, not of metal.
Class 20 . Furniture, mirrors, picture frames; goods(not included in other classes) of wood, cork, reed,
cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother- of-pearl, meerschaum and substitutes
for all these materials, or of plastics
Class 21 . Household or kitchen utensils and containers(not of precious metal or coated therewith);
combs and sponges; brushes(except paints brushes); brush making materials; articles for cleaning
purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware,
porcelain and earthenware not included in other classes
Class 22 . Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other
classes) padding and stuffing materials(except of rubber or plastics); raw fibrous textile materials
Class 23 . Yarns and threads, for textile use
Class 24 . Textiles and textile goods, not included in other classes; bed and table covers.
Class 25 . Clothing, footwear, headgear
Page 12 of 35
Class 26 . Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial
flowers
Class 27 . Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors;
wall hangings(non-textile)
Class 28 . Games and playthings, gymnastic and sporting articles not included in other classes;
decorations for Christmas trees
Class 29 . Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and
vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats
Class 30 . Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made
from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard;
vinegar, sauces, (condiments); spices; ice
Class 31. Agricultural, horticultural and forestry products and grains not included in other classes; live
animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt
Class 32 . Beers, mineral and aerated waters, and other non-alcoholic drinks; fruit drinks and fruit
juices; syrups and other preparations for making beverages
Class 33 .Alcoholic beverages(except beers)
Class 34 . Tobacco, smokers' articles, matches
SERVICES
Class 35 .Advertising, business management, business administration, office functions.
Class 36 .Insurance, financial affairs; monetary affairs; real estate affairs.
Class 37 . Building construction; repair; installation services.
Class 38. Telecommunications.
Class 39. Transport; packaging and storage of goods; travel arrangement.
Class 40. Treatment of materials.
Class 41. Education; providing of training; entertainment; sporting and cultural activities.
Class 42. Providing of food and drink; temporary accommodation; medical, hygienic and beauty care;
veterinary and agricultural services, legal services, scientific and industrial research; computer
programming; services that cannot be classified in other classes.
Page 13 of 35
ANNEXURE B
All the forms are available online at
https://ipindia.nic.in/tmr_new/first_schedule_forms/the_first_schedule.htm
THE FIRST SCHEDULE
[See rule 11]
FORMS AND FEES
Entry
No.
On what payable Amount
Rs.
Corresponding
Form Number
1. On application to register a trade mark for
a specification of goods or services
included in one class [Section 18(1)]
2500.00 TM-1
2. On application to register a textile trade
mark (other than a certification trade
mark or a collective mark) consisting
exclusively of numerals or letters or any
combination thereof for a specification of
goods or services included in one item of
the Fifth Schedule under rule25(5) & 145.
2500.00 TM-22
3. On application to register a trade mark for
goods or services included in a class from
a convention country under section 18(1)
& 154(2)
2500.00 TM-2
4. On a single application under section
18(2) for the registration of a trade mark
for different classes of goods or services
from a convention country under section
154(2)
2500.00 for
each class
TM-52
5. On a single application under section
18(2) for the registration of a trade mark
for different classes of goods or services.
2500.00 for
each class
TM-51
6. On application to register a series trade
mark under section 15 for a specification
of goods or services included in a class or
different classes
2500.00 for
each trade
mark and
for each
separate
class thereof
TM-8
7. On application to register a series of trade
mark from a convention country under
section 154(2) for a specification of goods
or services included in a class or classes
2500.00 for
each trade
mark and
for each
separate
class thereof
TM-37
8. On application under section 63(1) to
register a collective mark for a
specification of goods or services included
in a class
10,000.00 TM-3
Page 14 of 35
9. On application under section 71(1) to
register a certification trade mark for a
specification of goods or services included
in a class.
10,000.00 TM-4
10. On application for the registration of a
textile trade mark (other than a
certification trade mark or a collective
mark ) consisting exclusively of numerals
or letters, or any combination thereof for
a specification of goods or services
included in one item of the Fifth Schedule
under rule 145 from a convention country
under section 154(2).
2500.00 TM-45
11. On a request under rule 40(1) to state
grounds of decision.
1000.00 TM-15
12. On a notice of opposition under section 21
(1), 64, 66 or 73 for each class opposed.
2500.00 TM-5
13. On application for extension of time for
filing notice of opposition under section
21(1)
500.00 TM-44
14. On a counter statement in answer to a
notice of opposition under section 21, for
each application opposed, or in answer to
an application under any of the section 47
or 57 in respect of each trade mark or in
answer to a notice of opposition under
section 59 or rule 101 for each application
or conversion opposed.
1000.00 TM-6
15. On notice of intention to oppose hearing
under any of the section 21, 47, 57 and
59 by each party to the proceeding
concerned.
500.00 TM-7
16. On application under section 16(5) to
dissolve the association between
registered trade marks.
500.00 for
each
dissolution
TM-14
17. For renewal under section 25 of the
registration of a trade mark at the
expiration of the last registration not
otherwise charged.
5,000.00 TM-12
18. For renewal under section 25 of the
registration of a series trade mark at the
expiration of the last registration- For the
first two marks of the series of each
separate class:
For every additional mark of the series of
each
separate class.
5,000.00
2500.00
TM-12
19. For renewal under section 25 of a single 5,000.00 TM-12
Page 15 of 35
application of a trade mark for goods or
services in more than one class-in respect
of every class.
for each
class
20. For renewal under section 25 of the
registration of a collective
mark/certification trade mark.
20,000.00 TM-12
21 On application under section 25(4) for
restoration of a trade mark removed from
the register.
3000.00 TM-13
22. On application for renewal under proviso
to section 25(3) within six months from
the expiration of last registration of the
trade mark.
3000.00 as
surcharge.
TM-10
23. On application for certificate of the
Registrar under section 40(2) :
For the first mark proposed to be
assigned.
For every additional mark of the same
proprietor
included in that assignment .
2500.00
500.00
TM-17
24. On application for approval of the
Registrar under
section 41-
For the first trade mark .
For every additional mark of the same
proprietor included in the same transfer.
2500.00
500.00
TM-19
25. On application under section 42 for
direction of a Registrar for advertisement
of assignment without goodwill of a trade
mark in use-
For the first mark assigned.
For every additional mark assigned with
the
same devolution of title.
2500.00
2500.00
500.00
TM-20
26. On application for extension of time for
applying for directions under section 42
for advertisement of assignment without
goodwill of trade mark in use in respect of
devolution of title-
Not exceeding one month
Not exceeding two months
Not exceeding three months
500.00
1000.00
1500.00
TM-21
27. On application under section 45 to
register a subsequent proprietor in a case
of assignment or transfer of a single trade
5000.00
7500.00
TM-23 OR TM
-24
TM-23 OR TMPage
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mark:
If made within six months from the date
of acquisition of proprietorship.
If made after expiration of six months but
before 12 months from the date of
acquisition of proprietorship.
If made after 12 months from date of
acquisition of proprietorship.
10,000.00
24.
TM-23 OR TM-
24.
TM-23 OR TM-
24.
28. On application under section 45 to
register a subsequent proprietor of more
than one trade mark registered in the
same name, the devolution of title being
the same in each case:-
If made within six months from the date
of acquisition of proprietorship-
For the first mark
For every additional mark
If made after the expiration of six months
but before twelve months from the date
of acquisition of proprietorship:-
For the first mark
For every additional mark
If made after expiration of twelve months
from the date of acquisition of
proprietorship:-
For the first mark
For every additional mark
5000.00
1000.00
7500.00
1500.00
10,000.00
2000.00
TM-23 OR TM-
24.
TM-23 OR TM-
24 .
TM-23 OR TM-
24 .
TM-23 OR TM-
24 .
TM-23 OR TM-
24 .
TM-23 OR TM-
24.
29. On application under section 46(4) for
extension of time for registering a
company as subsequent proprietor of
trade marks on one assignment :-
Not exceeding two months
Not exceeding four months
Not exceeding six months
500.00
1000.00
1500.00
TM-25
30. On application under any of the sections
47 or 57 for rectification of the register or
removal of a trade mark from the register
or cancellation of a registered collective
mark or a certification trade mark
3000.00 TM-26
31. On application under rule 94 for leave to
intervene in proceeding under any of the
sections 47 or 57 for rectification of the
register or removal of trade mark from
the register or under rule 133 or 139 in
respect of a collective mark or
certification trade mark.
500.00 TM-27
32. On application under section 49 to 5000.00 TM-28
Page 17 of 35
register a registered user of a registered
trade mark in respect of goods or services
within the specification thereof.
33. On application under section 49 to
register the same registered user of more
than one registered trade mark of the
same registered proprietor, where all the
trade marks are covered by the same
registered user agreement in respect of
goods or services within the respective
specification thereof and subject to the
same conditions and restrictions in each
case:-
For the first mark
For every additional mark of the
proprietor included in the application, and
in the registered user agreement
5000.00
3000.00
TM-28
34. On application under clause (a) of subsection
1 of section 50 to vary the entry
of a registered user of one trade mark
where the trade marks are covered by the
same registered user in respect of each of
them:-
For the first mark
For every additional mark included in the
application
5000.00
2500.00
TM-29
35. On application under clause (b) of subsection
(1) of section 50 for cancellation
of the entry of a registered user of one
trade mark-
Where the application includes more than
one trade mark-
For the first mark
For every additional mark included in the
application
2500.00
2500.00
500.00
TM-30
36. On application under clause (c) or (d) of
sub-section (1) of section 50 to cancel the
entry of a registered user of one trade
mark:-
Where the application includes more than
one trade mark:-
For the first mark
For every additional mark included in the
application
5000.00
5000.00
2000.00
TM-31
37. On notice under rule 90(2 ) of intention to
intervene in one proceeding for the
variation or cancellation of entries of a
registered user of a trade mark
500.00 TM-32
Page 18 of 35
38. On application under section 58 to change
the name or descripttion of a registered
proprietor or a registered user of a trade
mark
where there has been no change. In the
proprietorship or in the identity of the
registered user (except where the
application is made as a result of an order
of a public authority or in consequence of
a statutory requirement as per law in
India
where the application includes more than
one trade mark -
For the first trade mark
For every additional mark included in the
application
1000.00
1000.00
1000.00
500.00
TM-33
39. On application under section 58 to alter
an entry of the address of a registered
proprietor or of a registered user of a
trade mark unless exempted from fee
under rule 96(3):
Where the application include more than
one trade mark - and where the address
in each case is the same and is altered in
the same way-
For the first entry
For every other entry included in the
application
500.00
500.00
200.00
TM-34
40. On application to make an entry of an
address for service in India of a registered
proprietor or a registered user of a trade
markwhere
the application include more than
one trade mark and the address for
service to be entered is the same in each
case-
For the first entry
For every other entry included in the
application.
500.00
500.00
200.00
TM-50
41. On application to alter or substitute an
entry of an address for service in India in
the register unless exempted from fee
under rule 96(3) .
Where the application includes more than
one trade mark and the address in each
case is the same and is altered or
substituted in the same way-
For the first entry
For every other entry included in the
500.00
500.00
200.00
TM-50
Page 19 of 35
application
42. On application under clause (c) of subsection
(1) of section 58 for canceling the
entry or part thereof from the register or
under clause (d) to strike out goods or
services from the register.
200.00 TM-35 OR TM-
36
43. On application under section 59(1) for
leave to add or alter a registered trade
mark (except where the application is
made as a result of an order of a public
authority or in consequence of statutory
requirement)-
Where the application includes more than
one trade mark and the addition or
alteration to be made in each case being
the same-
For the first mark
For every other mark included in the
application.
2500.00
2500.00
1000.00
TM-38
44. On notice of opposition under sub-section
(2) of section 59 to an application for
leave to add or to alter a registered trade
mark for each application opposed
1500.00 TM-39
45. On application under section 60 for
conversion of specification.
1000.00 TM-40
46. On notice of opposition in each separate
class under sub-section 2 of section 60 to
a conversion of the specification or
specifications of a registered trade mark:
For the first mark
For every additional mark included in the
notice of opposition.
1500.00
1500.00
700.00
TM-41
47. On application under section 66 for
amendment of the deposited regulations
of a collective mark or alteration under
section 74(2) for the regulation of a
certification trade mark-
Where the marks are entered in the
register as associated trade marks-
For the regulation of one registration.
For the same or substantially same
regulation of each additional registration
proposed to be altered in the same way
and included in the same application.
1000.00
1000.00
200.00
TM-42
48 On application under section 68 to remove
the registration of a collective mark or
cancel or vary the registration of a
1000.00 TM-43
Page 20 of 35
certification trade mark under section 77
49. For a search under rule 24(1) in respect
of one class
500.00 TM-54
50. On request for the Registrar's preliminary
advice under section 133(1) for a trade
mark in respect of one class.
1000.00 TM-55
51. On request for certificate of the Registrar
under section 137( other than a certificate
under section 23(2)).
500.00 TM-46
52. On request for certificate of the Registrar
[other than certificate under section
23(2)] of the registration of a series of
the trade mark under section 15 for each
class.
500.00 TM-46
53. On request for a certified copy of any
entry in the register or of any document
under section 148(2).
500.00 TM-46
54. On request to enter in the register and
advertise a note of certificate of validity,
under rule 124 in respect of one mark in a
class
200.00 TM-47
55. On request, not otherwise charged for
correction of a clerical error or for
amendment under section 18(4), 22 and
58, except where the request is made as
a result of an order of a public authority
or in consequence of a statutory
requirement as per law in India.
500.00 TM-16
56. On application for extension of time for a
month or part thereof under section 131
[not being a time expressly provided in
the Act or prescribed by rule 79 or by rule
80(4)]
500.00 TM-56
57. On application for review of the
Registrar's decision under section 127 (c)
2000.00 TM-57
58. On petition (not otherwise charged) for
obtaining Registrar's order on any
interlocutory matter in a contested
proceeding.
2500.00
59. On request to Registrar for particulars of
advertisement of a mark under rule 46.
250.00 TM-58
60 For inspecting the documents mentioned
in section 148(1):-
relating to any particular trade mark
for every hour or part thereof.
computer search (when made
200.00
400.00
200.00
Page 21 of 35
available) for every fifteen minutes
search of index mentioned in section
148 for every hour or part thereof
61 For copying of documents, (photocopy or
typed) for every page of part thereof in
excess of one page.
5.00 per
page(subject
to a
minimum of
Rs. 5.00)
62. On request for a duplicate or further copy
of certificate rule 62(3)
500.00 TM-59
63. On a counter statement in answer to a
notice of opposition in respect of a
collective trade mark or a certification
trade mark under section 64, 66,73 or 77.
1500.00 TM-9
64. For search and issue of certificate under
rule 24(3).
5000.00 TM-60
65. On application under sub-section (b) of
section 25 of Geographical Indications of
Goods (Registration and Protection )Act,
1999 to refuse or invalidate the
registration of a trade mark which
conflicts with or which contains or consists
of a geographical indication identifying
goods or class or classes of goods notified
under sub-section (2) of section 22 of the
said Act.
3000.00 TM-74
66. On application under sub-section (a) of
section 25 of Geographical Indications of
Goods (Registration and Protection )Act,
1999 to refuse or invalidate the
registration of a trade mark containing or
consisting of a geographical indicating not
originating in the territory of a country or
a region or locality in that territory which
the geographical indication indicates.
3000.00 TM-73
67. Notice of intention to attend hearing
under section 64, 66, 73 or 77 in respect
of a collective mark or in respect of a
certification trade mark, as the case may
be.
500.00 TM-7
68. On a request to divide an application or to
divide a single application under proviso
to section 22.
1000.00
plus
appropriate
class fee
TM-53
69. On application under sub-rule 16 of rule
25 towards inclusion of specification of
goods or services in excess of five
hundred characters at the time of filing of
10.00 per
character
TM-61
Page 22 of 35
application as excess space fee.
70. On application under section 43, rule
140(2) for consent of Registrar to the
assignment or transmission of certification
trade mark.
1000.00 TM-62
71. On application under rule 38(1) for the
expedited examination of an application
for the registration of a trade mark.
12,500.00 TM-63
72. On application under section 63(1) to
register a collective mark of a
specification of goods or services included
in a class from a convention country
under section 154(2).
10,000.00 TM-64
73. On application under section 71 to
register a certification trade mark for a
specification of goods or services included
in class from a convention country under
section 154(2).
10,000.00 TM-65
74. On request for an expedited certificate of
the Registrar (other than a certificate
under section 23(2) of the Act) or certified
copies of documents under proviso to rule
119.
2500.00 TM-7
75. On request for an expedited search under
proviso to rule 24(1).
2500.00 TM-71
76. On request for an expedited search and
issuance of a certificate under rule 24(5).
25000.00 TM-72
77. On application for registration as a trade
mark agent under 152.
1000.00 TMA-1
78. For registration of a person as a trade
mark agent under rule 154.
1000.00
Page 23 of 35
79. For continuance of the name of a person
in the Register of Trade Marks Agents
under rule 156:-
For every year (excluding the first year)
to be paid on the 1st April, in each year.
For the first year to be paid along with the
fee or registration, in the case of a person
registered at any time between the 1st
April, and 30th September.
N.B. A year for this purpose will
commence on the 1st day of April, and end
on the 31st day of March following.
1000.00
1000.00
80. On application for restoration of the name
of a person to the Register of trade marks
agents under rule 159.
1000.00
plus
continuance
fee under
entry no.
79.
TMA-2
81. On application for an alteration of any
entry in the Register of Trade Marks Agent
under rule 160.
200.00 TMA-3
82. For each addition to the registered entry
of a trade mark that may be associated
with a newly registered mark under
section 16(1).
500.00
83. On a single application under section
18(2) for the registration of a collective
mark for different classes of goods or
services.
10,000.00
for each
class.
TM-66
84. On a single application under section
18(2) for the registration of a collective
mark for different class of goods or
services from a convention country.
10,000.00
for each
class.
TM-67
85. On a single application under section
18(2) for the registration of a certification
trade mark for different class of goods or
services.
10,000.00
for each
class.
TM-68
Page 24 of 35
86. On a single application under section
18(2) for the registration of a certification
trade mark for different class of goods or
services from a convention country under
section 154(2).
10,000.00
for each
class.
TM-69
87. On request for search and issuance of a
certificate pursuant to clause (ii) of subsection
(2) of section 20 of the Companies
Act, 1956.
5000.00 TM-75
Page 25 of 35
THE SECOND SCHEDULE FORMS
List of Forms
Form No Section Title Entry Act No
TM-1 18(1),rule 25(2)
Application for registration of a trade mark for
goods or services (other than a collective mark or
a certification trade mark)
1
TM-2 18(1),154(2)
Application for registration of a trade mark from
convention country (other than a collective mark
or a certification trade mark)
3
TM-3 63(1) Application for registration of a collective mark 8
TM-4 71(1) Application for registration of a certification trade
mark. 9
TM-5 21(1),64, 66, 73
Notice of opposition to an application for
registration of a trade mark, collective mark or
certification trade mark.
12
TM-6 21(2), 47, 57, 59(2) Form of counterstatement 14
TM-7 21, 47, 57, 59,
64,66 73 and 77 Notice of intention to attend hearing. 15
TM-8 15(3) Application for registration of series trade marks
for goods or services in a class or different classes 6
TM-9 64, 66, 73 and 77
Form of counterstatement in answer to Notice of
Opposition in respect of a collective mark or a
certification trade mark
63
TM-10 25(3)
Proviso Payment of surcharge towards renewal of
to trade mark, certification trade mark and
collective mark.
22
TM-12 25
Application for renewal after expiry of last
registration of a trade mark/collective
mark/certification trade mark
17 to 20
TM-13 25(4) Application for restoration of a trade mark
removed from the register 21
TM-14 16(5) Application to dissolve association between
registered trade mark 16
TM-15 40(1) rule Request for statement of grounds of decision 11
TM-16 18(4), 22 and 58 Request for correction of clerical error or for
amendment rule 41 55
TM-17 40(2),rule 77
Application for the certificate of the Registrar
under Section 40(2) with regard to proposed
assignment of registered trade mark.
23
TM-18 40(2) Affidavit in support of statement of case. rule 68
Page 26 of 35
TM-19 41, Rule 77
Application for approval by the Registrar of a
proposed assignment or transmission of trade
mark resulting in exclusive rights in different
parts of India.
24
TM-20 42, rule 74(1)
Application for directions for advertisement of an
assignment of trade marks otherwise than in
connection with goodwill of the business.
25
TM-21 42, rule 74(3)
and rule Application for extension of time in which
to apply for the Registrar’s directions for the
advertisement of an assignment of trade marks
otherwise than in connection with the goodwill of
the business.
26
TM-22 18(1) rule 25(5), 144
and 145
Application to register a textile trade mark (other
than a certification trade mark or a collective
mark) consisting exclusively of numerals or letters
or any combination thereof for a specification of
goods or services included in one item of the Fifth
Schedule under rule 145
2
TM-23 45
Joint request by registered proprietor and
transferee to register the transferee as subsequent
proprietor of trade marks upon the same
devolution of title.
27,28
TM-24 45,rule 68
Request to register a subsequent proprietor of a
trade mark or trade marks upon the same
devolution of title.
27,28
TM-25 46(4), rule 79
Application for extension of time for the
registration of the name of a company as a
subsequent proprietor of a trade mark in the
register.
29
TM-26 47, 57 Application for the rectification of the register or
the removal of a trade mark from the register. 30, rule 92
TM-27 rule 94, 133, 139
Application for leave to intervene in proceedings
relating to the rectification of the register or the
removal of a trade mark from the register or a
collective mark or a certification trade mark.
31
TM-28 49, rule 80 Application for registration of registered user 32,33
TM-29 50 (1)(a),
rule 87
(a) Application by the registered proprietor of a
trade mark for variation of the registered user
thereof with regard to the goods or services or the
condition or restriction.
34
TM-30
50(1)(b),
rule 88(1)
(b) Application by the Registered Proprietor of a
trade mark or by any of the registered users of the
trade mark for the cancellation of entry of a
registered user thereof.
35
TM-31 50(1)(c) or (d), rule
88(1)
(c) Application for cancellation of entry of a or
(d) registered user of a trade mark of a trade
mark.
36
Page 27 of 35
TM-32 rule 90(2)
Notice of intention to intervene in proceedings for
the variation or cancellation of an entry of a
registered user of a trade mark
37
TM-33 58,
rules 91,97
Request to enter change of name or descripttion of
registered proprietor (or registered user of trade
mark upon the register).
38
TM-34 58, rules 91, 96, 97
Request for alteration of the address of the
principal place of business of residence in India or
of the address in the home country abroad in the
Register of Trade Marks
39
TM-35 58 (1)(c ), rule 97 Application by registered proprietor of trade mark
for the cancellation of entry thereof in the register. 42
TM-36 58(1)(d).
rule 97
Application by registered proprietor of trade 42 mark to strike
out goods or services from those for which the trade mark is
registered
TM-37
154(2) and 15(3), rule
25(11), 26 and 31
Application in respect of series trade mark from convention
countries under section 154(2) 26 & 31 for goods or services
in a class or for different classes
7
TM-38 59(1) Application by registered proprietor under Section 59 for an
addition to or alteration of a registered trade mark 43
TM-39 59(2), rule 99(2) Notice of opposition to application for addition to or
alteration of a registered trade mark 44
TM-40 60, Rule 101 Application by the proprietor of a registered trade mark for
the conversion of the specification 45
TM-41 60(2), Rule 101(4) Notice of opposition to proposal for conversion of
specification under section 60(2) 46
TM-42 66 or 74(2) rule 132(a),
140
Request for amendment of deposited regulations governing
the use of a collective mark or alteration of deposited
regulation of a certification trade mark
47
TM-43 68,77 and rules 92,
133,139
Application for removal from the register of a collective mark
or to cancel or vary the registration of a certification trade
mark.
48
TM-44 21(1) rule 47(6) rule Application for extension of time for giving notice of
opposition to a trade mark 13, 47(6)
TM-45
18(1), 154(2) rule 25(6),
26, 144, and 145
An application to register a textile trade mark (other than a
collective mark or certification trade mark) consisting
exclusively of numerals or letters or any combination thereof
for a specification of goods or services included in one item
of the Fifth Schedule from a convention country u/s
10, 154 (2)
TM-46 137 or 148(2), rule 119
and 120
Request for certificate of the Registrar or certified copies of
documents 51 to 53
TM-47 141 rule 124 Request for entry in the register and advertisement of a note
of the certificate of validity by the Appellate Board. 54
TM-48 145 and
rule 21
Form of Authorisation of Agent in a matter or proceeding
under the Act
Page 28 of 35
TM-49 63, 71 Rule
128(1),135(1)
Regulations for governing the use of a rule 128(5) collective
trade mark or acertification trade mark or 135(1)
TM-50 rule 91,96,97
Form of request by a registered proprietor or a registered user
of a trade mark who has no principal place of business in
India, to enter, alter or substitute an address for service in
India.
40,41
TM-51 18(2), rule 25(9), 103
A single application under section 18(2) for rule 25(9)
registration of a trade mark for goods or services in different
classes.
5
TM-52 18(2) rule 25(4), 103 A single application u/s 18(2) for registration rule 25(4) of a
trade mark from convention country u/s 154(2) 4
TM-53 22 rule 104(1) Proviso Divisional application to section 22 68
TM-54 rule 24(1) Request for search 49
TM-55 133(1) rule 23 Preliminary advice as to distinctiveness 50
TM-56 131, rule 105 Request for extension of time 56
TM-57 127(c), rule 115 On application for review of Registrar’s decision 57
TM-58 rule 46 Application for particulars of advertisement of a trade mark 59
TM-59 rule 62(3) Application for duplicate or further copy of certificate of
registration 62
TM-60 rule 24(3) Application for search and certificate under Section 45(1) of
the Copyright Act, 1957 64
TM-61 rule 25(16) Application for inclusion of specification of goods or services
in excess of five hundred characters 69
TM-62 43, rule 140(2) Application for the consent of the Registrar to rule 140(2) the
assignment or transmission of certification trade mark 70
TM-63 rule 38(1) Request for expedited examination of an application for the
registration of a trade mark under rule 38(1) 71
TM-64 63(1), 154(2), Rule
128(1)
Application to register a collective mark for rule 128(1) a
specification of goods or services included in a class from
convention country under section 154(2)
72
TM-65 154(2), rule 25(8)(b),
135(1)
Application under section 71 to register a Certification trade
mark for a specification of goods or services included in a
class from convention country under section 154(2)
73
TM-66 18(2),63(1). rule
25(17(a),103, 128(1).
Single application for registration of a collective trade mark
for different classes of goods or services 83
TM-67
18(2), 63(1), 154(2),
rule 25(17)(b),
103,128(1)
Single application for registration of a collective trade mark
for different classes of goods or services from a convention
country under section 154(2)
84
TM-68 18(2), 71 Single application for registration of a certifi- cation trade
mark for different classes of goods or services 85
TM-69 18(2), 71, 154(2), Single application for registration of a certifiation trade mark
for different classes of goods or services from a convention
86, 71
Page 29 of 35
country under section 154(2).
TM-70 137, 148. rule 8(2)( c),
Provision to rule 119
proviso Request for expedited certificate of the Registrar or
certified copies of documents 74
TM-71 rule 8 (2)(c) Provision to
rule 24(1).
Proviso to Request for expedited search in respect of one
class 75
TM-72 rule 8(2)(c ), 24(5) Request for expedited search certificate under section 45(1)
of the Copyright Act,1957 76
TM-73 Section 25(a),
rule 74(2)
Request to refuse or invalidate a trade mark Of Geogra-
Consisting of a geographical indication. phical Indi- cations
of . Goods (Registration and Protection)Act, 1999, rule 74(2)
of Geographical Indications Goods Rules, 2001 and rule 102
of Trade Marks Rules, 2001
66
TM-74 Section 25(b), rule 75(2)
Request to refuse or invalidate a trade mark of Geograconflicting
with or containing or consisting phical Indi- of a
geographical indication notified under cations of sub-section
(2) of section 22 of the Goods Geographical Indications of
Goods (Regi- (Registration stration and Protection)Act,1999
and Protection)Act, 1999, rule 75(2) of Geographical
Indications Goods Rules and rule 102 of Trade Marks Rules,
2001
65
TM-75 rule 32 Request for search and issuance of certificate under rule 32 87
TMA-1 rule 153 Application for registration as a trade mark agent 77
TMA-2 rule 159 Application for restoration of the name of person to the
register of trade marks agents 80
TMA-3 rule 160 Application for the alteration of an entry in the Register of
Trade Marks Agents. 81
Page 30 of 35
ANNEXURE C
GUIDELINES FOR PUBLIC SEARCH OF TRADE MARKS ON WORLD WIDE WEB
(INDIA)
1• Public Search can be accessed by visiting the home page of Controller General of Patents, Designs
and Trade Marks(CGPDTM) at https://ipindia.nic.in or through URL
https://www.ipindiaonline.gov.in/etmr/publicSearch/searchMain.aspx
1• The Public Search facility is on payment basis. This facility can be availed either by paying online
through Net Banking Facility or by paying offline at respective Trade Marks Offices.
PUBLIC SEARCH WITH OFFLINE PAYMENT OPTION
11 Users intended to pay search fee offline at respective TMR front office counters for using Public
Search facility on the web need to register themselves (for the first time) as a Search User. In order to
register online, the user needs to click the option “Registration with Payment at TMR office” on
https://www.ipindiaonline.gov.in/ etmr/publicSearch/searchMain.aspx. On entering the desired details
like name, address and password, a Search User Party Code and Password will be generated, which
the User(s) has to remember for performing searches in the future. Kindly note that this activity is
required to be done only once.
12 After obtaining Search User Party Code, User can fill MIS-P form and submit at respective TMR
Office by paying a fees of Rs. 400/- per Search-ID. While filling the MIS-P form, the user has to
mention his Search User Party Code obtained after registration (as mentioned above in Point No. 1.)
13 The TMR office will provide Search ID and Password in the receipt itself which shall be used for
availing Public Search facility on the Internet within 7 days after issue of the receipt.
14 User can make their Search by Clicking “Public Search Login” and typing Search ID and Password
printed in the receipt obtained from TMR Office.
15 On successful login, the system will prompt to enter Search User Party Code and Password for
authentication.
16 On successful authentication, User will be given fifteen minutes time to perform on-line search in
any Class by typing search string and print the search reports. It is advised not to logout or close the
window until all searches are over as the search id will be treated as utilized after logging out or closing
the window while availing on-line search facility.
7. The system will auto logout after fifteen minutes.
Page 31 of 35
PUBLIC SEARCH WITH ONLINE PAYMENT OPTION
1• To avail search facility by paying on-line, Users shall register on the Public Search page by clicking
“Registration with online Payment” on
2 (https:// www.ipindiaonline.gov.in/etmr/publicSearch/searchMain.aspx) by entering Name, Address
and State.
1• Online Payments can be made by Net Banking facility available on the Registration Page by paying a
fee of Rs. 400/- in INR.
1• On successful payment, a Login ID and a Password will be generated by the System. (Please Note
down this Login ID and Password Carefully)
1• Login to the Public Search page on (https://www.ipindiaonline.gov.in/etmr/
publicSearch/searchMain.aspx) by entering Login ID and Password
1• The system will allot 15 minutes time to perform on-line search.
1• System generated Login ID and Password will not be valid once the search for 15 minutes is over. To
perform another Search, re-registration on the page
(https://www.ipindiaonline.gov.in/etmr/publicSearch/searchMain.aspx) is required.
1• It is advised not to logout or close the window until all searches are over as the search id will be
treated as utilized after logging out or closing the window while availing on-line search facility.
1• The system will auto logout after fifteen minutes.
Page 32 of 35
ANNEXURE D
LOCATION AND JURISDICTION
Trade Marks Registry, Mumbai (Head Office)
Intellectual Property Bhavan, Near Antop Hill Head Post Office,
S.M. Road , Antop Hill, Mumbai 400037
Tel: 022-2410 1144, 24101177, 24148251, 24112211
Fax: 24120808, 24132295
Jurisdiction: State of Maharashtra, Madhya Pradesh and Goa
Trade Marks Registry, Delhi
Intellectual Property Bhavan, Plot NO.32, Section 14,
Dwarka, Delhi
Tel. 011-28082915/ 16/17 Fax:
Jurisdiction: State of Jammu & Kashmir, Punjab,
Haryana, Uttar Pradesh, Himachal Pradesh, Union
Territory of Delhi and Chandigarh
Trade Marks Registry, Kolkata,
CP-2, Sector V, 5th floor, I.P.Bhavan, Salt Lake,
Kolkata-700091
(Telfax. 033-23677311
Jurisdiction: State of Arunachal Pradesh, Assam, Bihar,
Orissa, West Bengal, Manipur, Mizoram, Meghalaya,
Sikkim , Tripura and Union Territory of Nagaland,
Andamar & Nicobar Island.
Trade Marks Registry, Ahmedabad,
15/27 National Chambers, 1st floor,
Ashram road,
Ahmedabad-380 009.
Tel: 079-26580567
Jurisdiction: The state of Gujarat and Rajasthan and
Union Territory of Damman, Diu, Dadra and Nagar
Haveli
Trade Marks Registry, Chennai
IP building, GST Road, Guindy
Chennai-600032
Tele: 044-22502041, Fax : 044-22502042
Jurisdiction: The state of Andhra Pradesh, Kerala, Tamil
Nadu, Karnataka and Union Territory of Pondicherry and
Lakshadweep Island.
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INTERNATIONAL SCENARIO
Trademark rights are granted on a country-by-country basis. An Indian registration
provides protection only in India and its territories. If the owner of a mark wishes to
protect a mark in other countries, the owner must seek protection in each country
separately under the relevant laws.
International trademark protection
There is no system as yet wherein a single trademark application is sufficient to
protect the trademark right internationally. However, Paris convention* provides
certain privileges to member countries in trademark registration. A party that files
their first trademark application in a member state of the Convention, such as India,
can within six months of that filing date file applications in other member countries
claiming the priority of the first application. If such a trademark is accepted for
registration it will be deemed to have registered from the same date on which the
application is made in the home country.
It is also possible to utilize multinational filing systems in certain regions in order to
obtain trademark protection. For example, Belgium, the Netherlands and
Luxembourg have a single trademark registry, commonly referred to as the Benelux
Trademark Register. The European Union consisting of 27 countries has adopted
its own trademark system, known as the Community Trademark (OHIM). The African
Organization for Intellectual Property (OAPI), a group of African nations, have
replaced their national trademark offices with a common trademark office which
offers a single trademark registration valid in all of the member states.
Almost all countries have trademark offices in which applications may be filed.
Therefore, when contemplating trademark protection in various countries, it is most
helpful to start with a list of countries where registered trademark protection is
available. Deciding where to register a trademark involves various considerations.
Countries where a trademark is currently in use, but prior use of trademark is not
recognized, should be the first to be considered for seeking registered protection. If
commencing use shortly or expanding use to other countries within a few years, then
such countries should also be included. The last group of countries should be those
have a history of unauthorized registration of other's trademarks.
* Paris Convention is the most basic and important multilateral convention relating
to intellectual property, including trademarks, of which India is a member. It defined
the meaning and scope of industrial property rights protection and established basic
principles and rules.
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Various foreign sites which would help you in filing international trademarks
https://www.uspto.gov/web/offices/tac/tmfaq.htm
https://www.uspto.gov/web/trademarks/workflow/start.htm
https://oami.europa.eu/ows/rw/pages/QPLUS/forms/electronic/fileApplicati
onCTM.en.do
https://www.wipo.int/madrid/en/
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