Registration is not complicated, but the two decisions that matter are taken before you file: whether the mark is registrable at all, and which classes to file in.
Step 1: search before you file
Run a public search on the Trade Marks Registry database, and a wider search including company names, domain names and common law use. Filing a mark that conflicts with an existing one wastes the fee and the year, and worse, it can invite an infringement claim from a prior user.
Search phonetically as well as literally, because the Registry and the courts compare marks by sound and idea rather than by spelling, and search the neighbouring classes too. Then search beyond the register: the corporate name database, domain registrations, app stores and ordinary trade use. An unregistered prior user with real goodwill can stop you even after you are registered. Our note on trademark registration in Bangalore and what it costs sets out the searches in the order we run them.
Step 2: pick the right classes
India follows the Nice Classification, 45 classes in all, 1 to 34 for goods and 35 to 45 for services. Protection is class-specific. Software is typically class 9, software as a service and technology services class 42, retail and business services class 35, education class 41. Filing in too few classes leaves gaps; filing in too many wastes money on classes you will never use and cannot defend against a non-use challenge.
That last risk is statutory, not theoretical. A registered mark may be taken off the register, for the goods or services concerned, where it was registered without any bona fide intention to use it, or where a continuous period of five years and three months has passed with no bona fide use. A defensive filing across a dozen classes is therefore not only expensive but vulnerable, and it hands a future opponent a ready made rectification application. Our guide to trademark classes and the Nice Classification works through how to draft the specification of goods and services, which matters more than the class number itself.
| Stage | What happens | What you can do |
|---|---|---|
| Search | Check the register for conflicting marks | Change the mark now, cheaply |
| Filing | Application in the chosen classes | Use of the TM symbol begins |
| Examination | Registry issues an examination report | Reply within the period stated |
| Publication | Mark advertised in the Trade Marks Journal | Third parties may oppose |
| Opposition | If opposed, evidence and hearing | Defend, or negotiate coexistence |
| Registration | Certificate issues | Use of the R symbol begins |
| Renewal | Every ten years | Diary it, restoration is costlier |
Step 3: the process
- File Form TM-A online. Fees are lower for individuals, startups recognised by DPIIT, and small enterprises, so claim that status if you have it.
- Examination. The Registry issues an examination report raising objections, commonly under Section 9 (the mark is descriptive or non-distinctive) or Section 11 (it conflicts with an earlier mark).
- Reply, and a hearing if the objection is maintained.
- Publication in the Trade Marks Journal, opening a four month window for third parties to oppose.
- Registration if unopposed or if opposition is decided in your favour. Valid for 10 years, renewable indefinitely.
You may use the TM symbol as soon as you file, and the ® symbol only after registration. Registration relates back to the filing date, so your priority runs from the day you file, not the day the certificate issues. That is why filing early matters more than filing perfectly.
Which office, and what it costs
The appropriate office of the Registry is fixed by the applicant's principal place of business, and for a business based in Karnataka that is the Chennai branch. It matters less than it used to: filing, replies and status checks are online and hearings are ordinarily by video conference, so a Bengaluru applicant rarely needs to travel.
On fees, plan around the structure. The official fee is charged per mark and per class, so a two class application costs twice a one class application. There is a concessional rate for an individual, a recognised startup or a small enterprise, and a lower rate for electronic filing than for paper. The First Schedule to the Trade Marks Rules is amended from time to time, so take the current figure from the Registry. Budget separately for the examination reply and for an opposition.
Renewal, and what happens if you miss it
Registration runs for ten years and is renewable for ten years at a time, indefinitely. A missed renewal is not fatal at once: the mark can be renewed with a surcharge within six months of expiry, and after that restored on an application made after six months and within one year, if the Registrar is satisfied it is just to do so. Beyond that it comes off the register and you file afresh, losing your priority date. Diarise the renewal five years out, not five months.
What cannot be registered
Marks that are purely descriptive of the goods, generic terms, marks likely to deceive or cause confusion, marks that hurt religious sensibilities, and names or emblems protected under special statutes. A descriptive mark can sometimes be registered on proof of acquired distinctiveness through long use, but that is an uphill and evidence-heavy route.
The list also catches things founders do not expect: marks that have become customary in the trade, scandalous or obscene matter, and shapes which result from the nature of the goods, are necessary to obtain a technical result, or give substantial value to the goods.
What you actually get at the end
Two things are worth understanding before you spend the money. The original registration and every subsequent assignment are prima facie evidence of validity, which shifts the work in a dispute onto whoever attacks your mark. And in a suit for infringement of a registered mark you may sue in the district court where you reside or carry on business, rather than following the infringer. For an early stage company that reversal of home ground is often worth more than the certificate. Our guide to IP protection for startups in India puts the trade mark alongside the copyright and assignment steps that belong at the same stage.