General information only. This is not legal advice, reading it creates no advocate-client relationship, and it is not an advertisement or solicitation.
A brand usually starts as a name on a signboard, an invoice or a WhatsApp catalogue. The trademark question arrives later, often when someone else is already using something similar. In India, registration under the Trade Marks Act, 1999 gives the owner a statutory right that can be enforced directly. An unregistered brand has to rely on passing off, which means proving reputation first. This post looks at three decisions that shape an application before it is filed: who the applicant is, which classes to claim, and what happens once the application is in.
Contents
Who should be the applicant
The applicant must be the person who owns, or will own, the mark. A trademark filed in the wrong name is a common and avoidable problem, because the registration then sits with someone other than the business. It can later be transferred by assignment and recorded with the Registry, but that takes time and invites questions.
| Business structure | Applicant | Point to check |
|---|---|---|
| Sole proprietorship | The individual proprietor, with the trading name described | The mark belongs to the person, not to the shop name. |
| Partnership firm | The firm, with the partners' names and address | Check that the partnership deed says who owns brand assets. |
| LLP | The LLP by its registered name | Match the name and address to the LLP's registration record. |
| Private limited company | The company by its registered name | Founders who used the brand earlier should assign it to the company in writing. |
The last row matters most for new companies. When a partnership is converted into an LLP or a company, the brand does not move on its own. Our note on converting a partnership firm into an LLP explains why contracts and property need to be addressed expressly, and the same care applies to a trademark.
Choosing the mark and the classes
India uses the Nice Classification: 45 classes, 34 for goods and 11 for services. One application can cover several classes, but protection is limited to the classes claimed. A bakery that sells cakes (Class 30) and also runs a cafe (Class 43) needs to think about both. Claiming classes with no real plan to use them is unwise, since a registered mark can be challenged for non-use.
Before filing, search the Registry's public search for identical or similar marks in the same and related classes. The Registry may refuse a mark on absolute grounds under Section 9, for example because it is descriptive, generic or lacks distinctiveness. It may also refuse it on relative grounds under Section 11, because of an earlier identical or similar mark. A search does not remove the risk, but it shows it early.
The application also states whether the mark is already in use, and since when, or is proposed to be used. That statement should match the business's actual records. Spice and food brands with an export plan should read about protecting a Kerala spice brand abroad before deciding the order of filings.
What happens after filing
The Registry issues an application number and examines the application. If it raises objections, the applicant replies in writing within the time stated in the examination report, and may be heard. An accepted mark is published in the Trade Marks Journal, and any person may oppose it within four months of publication. Our post on the four month opposition window covers that stage in detail.
If nothing stands in the way, the Registry issues the registration certificate. Registration takes effect from the date of application, and runs for ten years from that date, subject to renewal. We have written about why the ten year period passes faster than owners expect. Until registration, the symbol TM can be used, while the registered mark symbol should wait for registration.
Questions people ask
Can I use the mark while the application is pending?
Use is not prohibited, and the symbol TM may be used. The registered mark symbol is for registered marks only. Remedies for infringement under the Act arise from registration, although an action for passing off remains available to a business with goodwill.
Does company or LLP name approval give trademark rights?
No. Name approval by the Registrar of Companies is a step under company or LLP law. It does not create trademark rights, and a registered trademark does not by itself guarantee that a company name will be approved.
What if the Registry raises an objection?
An examination report can raise objections under Section 9 or Section 11. The applicant may reply in writing within the time stated in the report, and may ask to be heard before a decision is made.
Questions on a specific matter depend on the facts, and advice should be taken before acting.