The Lifecycle of a Trademark in India: From Filing to Renewal

The Indian Trademark Lifecycle: From Registration to Renewal
It is crucial for any aspiring Indian brand to comprehend the trademark journey. Protecting your brand identity and intellectual property is a continuous process rather than a one-time event. The Indian trademark lifecycle, which is overseen by the Indian Trademark Registry (a division of IP India) and regulated by The Trademarks Act, 1999, includes several significant phases, from the inception of a brand name or logo to its sustained market presence.

Here’s a detailed look at the typical lifecycle of a trademark, highlighting the most searched keywords associated with each phase:

Phase 1: Pre-Filing – The Genesis of Your Brand

Before you even think about trademark registration, two critical steps set the foundation:

1. Brand Ideation & Selection: This is where you brainstorm your unique brand name, logo design, or slogan. It’s crucial for your mark to be distinctive and capable of distinguishing your goods or services from others. Avoid generic or descriptive terms, as these are difficult to register.
2. Trademark Search (Crucial First Step!): This is arguably the most vital pre-filing stage. A comprehensive trademark search in India involves checking the IP India public search portal to ensure that your proposed mark isn’t already registered or deceptively similar to existing trademarks in relevant classes. This includes:
   • Wordmark search: For your chosen name or slogan.
   • Phonetic search: To identify marks that sound similar.
   • Vienna Code search: For logo designs and device marks.
   • Performing a thorough search helps avoid trademark objections and oppositions later, saving time and trademark registration cost.

Phase 2: Filing the Application – Bringing Your Brand to Life Legally

Once your search is clear, you proceed to formal application:

3. Filing the Trademark Application: You file Form TM-A with the Indian Trademark Registry. This can be done online trademark registration through the IP India e-filing portal, which is generally faster and preferred. You’ll need to specify:
   • The exact representation of your trademark.
   • The trademark class(es) (as per the Nice Classification) for your goods or services.
   • Applicant details (individual, MSME, company, startup, etc.).
   • Whether the mark is “proposed to be used” or “in use” (with a user affidavit for prior use).
   • Payment of the prescribed trademark filing fees.

Phase 3: Examination – The Scrutiny

After filing, your application enters the examination phase:

4. Formalities Check: The Registry checks if your application meets all basic formal requirements.
5. Trademark Examination: A Trademark Examiner reviews your application on two main grounds:
   • Absolute Grounds (Section 9): Checks if the mark is distinctive, not descriptive, generic, or likely to cause confusion, and doesn’t offend public sentiments.
   • Relative Grounds (Section 11): Compares your mark with existing registered trademarks and prior-filed applications to check for deceptive similarity.
6. Examination Report (Objection/Acceptance):
   • “Marked for Exam”: Your application is under review.
   • “Examination Report Issued” / “Objected”: If objections are raised (common), you’ll receive an examination report detailing the reasons.
   • Reply to Examination Report: You typically have one month to file a detailed reply to trademark objection, addressing all points raised by the examiner, sometimes requiring additional documents or arguments.
   • Hearing (if required): If the examiner is not satisfied with the written response, a trademark hearing may be scheduled.
   • “Accepted” / “Advertised before Acceptance”: If the examiner is satisfied, the application proceeds to publication.

Phase 4: Publication – The Public Scrutiny

This is a critical transparency stage:

7. Publication in Trademark Journal: Once accepted, your trademark is published in the official Trademark Journal (available on the IP India website). This serves as public notice.
8. Opposition Period: The mark remains open for trademark opposition by any third party who believes the registration of your mark would prejudice their rights. This opposition period is strictly four months from the date of publication and cannot be extended.
9. Opposition Proceedings (if applicable):
   • “Opposed”: If an opposition is filed (Form TM-O), the applicant must file a counter-statement (Form TM-O) within two months.
   • Evidence and Hearing: Both parties submit evidence and may attend hearings before the Trademark Registrar, who then decides on the opposition.

Phase 5: Registration – The Milestone

If all hurdles are cleared:

10. Trademark Registration: If there is no opposition, or if an opposition is decided in your favor, the trademark proceeds to registration.
11. Issuance of Registration Certificate: The Indian Trademark Registry issues a Certificate of Registration, officially confirming your exclusive rights to the mark for a period of 10 years from the date of filing the application. You can now proudly use the ® symbol with your brand.

Phase 6: Post-Registration – Maintenance and Enforcement

Registration is just the beginning of lifelong protection:

12. Use of the Mark: It’s vital to continuously use your registered trademark in commerce for the goods and services it covers. Non-use for a continuous period of three years can make your mark vulnerable to cancellation by third parties.
13. Monitoring for Infringement: Proactively monitor the market and new trademark applications (via the IP India public search) for any potentially infringing or deceptively similar marks.
14. Enforcement of Rights: In case of trademark infringement, a registered trademark provides strong legal grounds to take action, including issuing cease and desist notices, filing civil suits for infringement, and even initiating criminal proceedings against counterfeiters.
15. Trademark Renewal: A trademark validity in India is 10 years from the date of filing. To maintain your exclusive rights, you must file a trademark renewal application (Form TM-R) with the Indian Trademark Registry before the expiry of each 10-year period.
    • Renewal can be filed up to six months before expiration.
    • There’s a grace period of six months after expiration with a surcharge.
    • Even if removed, restoration is possible within one year of expiration, subject to additional fees and conditions.

The lifecycle of a trademark is dynamic, requiring diligence from brand owners. By understanding each stage, from the initial trademark search to ongoing trademark renewal, businesses can effectively protect their intellectual property and ensure their brand thrives for generations in the competitive Indian market.

Avinash Bhatt
Email: Bhattavi93@gmail.com