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Home › Services › Document Guides › Trademark Registration

Two silences can take your trade mark away.

Registration is treated as the end of the matter, and it is neither the beginning of safety nor the end of risk. Two silences can undo it, and both of them are periods that run while nobody is looking. The first begins when your accepted application is advertised. From that date, section 21(1) gives any person — no earlier mark required, no locus required, no damage to be shown — four months to oppose it. And if you are opposed and do not send a counter-statement within two months of receiving the notice, section 21(2) deems the application abandoned. Not refused after argument. Abandoned, with nobody having decided whether your mark was registrable at all. That is the most expensive deadline on this page. The second begins only after registration. Under section 47, any person aggrieved may have the mark struck off where five years or more from the date it was actually entered in the register have passed without bona fide use. Registering a name you are not going to use buys five years, not a reservation. One more correction, because it changes how urgent this feels. Registration is not the source of your right to stop a copier. Section 27(1) does bar an infringement proceeding for an unregistered mark, but section 27(2) preserves passing off, which rests on reputation rather than on the register. Registration makes the case very much easier to run. It does not create the right. And the forum changed. The Intellectual Property Appellate Board was abolished in 2021; appeals from the Registrar now go to a High Court within three months. Any page still naming that Board, and any copy of this Act that still says Appellate Board in the removal and appeal sections, is out of date.

From ₹5,999 2 – 5 days filing Opposition — 4 months Counter-statement — 2 months Non-use — 5 years
Sir namaste. I run a small snack food business in Indore since 2016, we make namkeen and sell in about 40 shops in the city, turnover last year was around 92 lakh. Brand name is ours, we print it on all packets, we have the design also. In 2019 one agent did trademark for us, he took 12000 rupees and gave us one paper with a number on it, and he told us now you can put R on packets. We have been printing R since then on all packets. Last month we got a letter from a lawyer in Mumbai saying one company has the same brand name registered in class 30 since 2014 and we should stop immediately, and also they said we are falsely using R symbol which is a criminal offence. Sir I checked on the government website with that number the agent gave and it is showing status as "Abandoned". I did not know this. Nobody told me anything. The agent number is switched off since 2021. Sir please tell me, am I in criminal case for the R symbol. Can they stop my business which I have built for 9 years. Can I register now in different class. And one more thing sir, in 2014 that company registered but I have never seen their product in Indore in 9 years, is that useful for me.There is a great deal here, and I want to start with the part that is genuinely in your favour, because your letter is mostly bad news and the good news is real. You have nine years of continuous use in a defined market, with packets, shops, invoices and turnover behind it. That is not nothing in this field. It is the single strongest thing a person in your position can have, and it is the reason I would not write off your brand on the strength of that lawyer letter. Let me take your four questions in the order that matters, which is not the order you asked them in. First, the R symbol, because that is the one with a criminal edge and the one you should fix this week. The lawyer is right about the law. Section 107 of the Trade Marks Act, 1999 makes it an offence to represent that a mark is a registered trade mark when it is not, and three years is the outer limit of custody the section permits, with a fine instead or as well. Your application was abandoned, so your mark is not on the register, so every packet printed with the R has carried a representation the section prohibits. I am not going to soften that. What I will tell you is what to do about it, and it is simple and immediate. Stop printing the R today. Change the artwork to TM, which asserts nothing about the register and which anybody may use on any mark. Keep a dated record of when you changed it and instruct your printer in writing, because the fact that you corrected it the moment you understood the position, and that you had been told otherwise by the person you paid, is the material anybody would want later. Do not go back and try to collect packets that are already in shops; just stop producing them and document the change. Second, your abandoned application, because understanding how that happened tells you what to do differently. Abandoned on the Registry status almost always means a deadline was missed, and there are two common ones. If an examination report issued and nobody replied within its period, the application is treated as abandoned. If the application was advertised and somebody opposed it, then under section 21(2) you had two months from receiving the notice to send a counter-statement, and if none was sent the Act says the applicant shall be deemed to have abandoned his application. Deemed. No hearing, nobody deciding whether your mark was registrable, no judgment against you. Given that a company had the same name registered in class 30 since 2014, an opposition is quite likely what happened. And here is the part I want you to sit with, because it is the real lesson in your letter: the correspondence would have gone to the address for service on the record, which was almost certainly your agent, and he stopped answering his phone in 2021. Service on the address the Registry holds is good service even when that address belongs to somebody who stopped working for you years ago. Whatever you do next, the address on the record must be an address that you read. Third, can they stop your business. Not as easily as that letter implies, and section 34 of the Act is why. It provides that a registration does not entitle the proprietor to interfere with or restrain the use by a person of an identical or nearly resembling mark which that person has used continuously from a date earlier than the dates the section sets, and it goes further: the Registrar is not to refuse that earlier user a registration on the ground of the later registration alone. Your use began in 2016. Their registration dates from 2014. So the question becomes a question of dates and of evidence, and it is a question for an advocate on your documents, not something I will answer from a letter. What I can tell you is what to assemble, and to do it before you reply to anybody. Every invoice you can find from 2016 onwards, in date order. Purchase orders and bills from the shops that stock you. Printing bills for the packets, which carry dates and which show the mark. GST returns. Photographs of the shelf. Any newspaper or local advertisement. Bank statements showing receipts. Build that file first, because every option you have is worth more with it and almost nothing without it. Fourth, your own observation about their product, which was the sharpest question in your letter and which you asked last. Yes, it is potentially very useful, and the provision is section 47. It permits any person aggrieved to apply to have a registered mark removed from the register where, up to a date three months before the application, a continuous period of five years or more from the date on which the mark was actually entered in the register has elapsed during which there was no bona fide use of it in relation to those goods. Nine years of you not seeing their product in Indore is not by itself proof of that, and I want to be careful here: absence of a product from one city is not absence of bona fide use in India, and the courts have required clear evidence rather than an inference before striking a mark off. But it is a line of enquiry worth taking seriously, and it is the kind of thing that changes the shape of a negotiation even when it is not pursued to a conclusion. Now, one thing about where that would be done, because it is a trap. A great many websites and even many copies of this Act will tell you that a removal or rectification application goes to the Intellectual Property Appellate Board. That Board was abolished in 2021. Appeals from the Registrar now lie to a High Court, within three months of the order being communicated, and rectification may be sought before the appropriate High Court in addition to the Registrar. If you read anything that names the Board, it is pre-2021 text. I should add, honestly, that which High Court is itself not fully settled: the Delhi High Court referred three questions on exactly that to a larger bench in February 2024 and so far as I can establish they have not been answered. Your advocate will need to check that before anything is filed. On your question about registering now in a different class, I would not do that first and I would be wary of anybody who suggests it. Changing class does not avoid the problem, because the objection is about the name and the goods, and namkeen is squarely in the class their mark sits in. Filing a fresh application in a class you do not actually trade in would create a registration you cannot use, exposed to removal for non-use on the very provision we just discussed, and it would not answer the letter you have received. The sequence I would follow is this. This week: stop the R, switch to TM, instruct the printer in writing. Also this week: build the evidence file I described, and do not reply to the Mumbai lawyer until it exists. Next: take that file and the letter to an advocate practising in trade mark matters and get two opinions on paper, one on your position as a prior user under section 34 and one on whether their registration is vulnerable under section 47. Then, and only then, decide between a fresh application prepared properly, a negotiated coexistence, or a defence. What we can do is the documentation half of it: assemble and index that evidence file so it is usable, draft a fresh application with the class and specification settled against what you actually sell, and put the address for service in your own name so that this never happens to you again. What we cannot do is appear for you or argue the section 34 point, and on a letter like the one you have received you need somebody who will.

What is on this page

  1. What registration does not give
  2. The shield people imagine
  3. Passing off without registration
  4. Section 27 in two parts
  5. Prima facie, not conclusive
  6. The register is rebuttable
  7. The prior user saving
  8. Whom that saving protects
  9. So why register at all
  10. The honest case for it
  11. The form that starts it
  12. Classes, and what they cost
  13. The specification problem
  14. Wide, narrow and refused
  15. Use, or proposed to be used
  16. What that declaration binds
  17. The fees we will not print
  18. Why the figure is not here
  19. Examination, in one line
  20. The report and the reply
  21. Where that page takes over
  22. Acceptance and advertisement
  23. What advertisement starts
  24. The journal nobody reads
  25. Why you must watch it
  26. The four month window
  27. What changed in 2013
  28. Anybody may oppose
  29. No locus required
  30. The counter-statement
  31. The two month trap
  32. Deemed abandoned
  33. No hearing, no argument
  34. Evidence, and a hearing
  35. The Registrar own objection
  36. Security for costs
  37. Correcting the error
  38. Registration and the certificate
  39. The date it runs from
  40. The term, in one line
  41. The second silence
  42. Five years of non-use
  43. The three month cut-back
  44. What bona fide use means
  45. The Board that no longer exists
  46. What the Reforms measure did
  47. Three months to the High Court
  48. Pending matters transferred
  49. Which High Court, though
  50. The questions referred
  51. Still unanswered
  52. The text trap
  53. The symbol people misuse
  54. Four ways to get it wrong
  55. What that exposes you to
  56. The refusals on this file
  57. When an agent or a counsel takes over
  58. What this work includes
  59. What sits outside it
  60. What goes into your file

What registration does not give

Almost every page on this subject opens with what a registration gives you. This one opens at the other end, because the money is lost in the distance between what buyers assume they are getting and what the Act in fact confers.

A certificate does not make your mark unchallengeable. It does not settle a dispute with somebody who was using the name before you. It does not reach goods or services outside the ones it names. And it is not the thing that lets you stop a copier, because that right exists without it.

Every one of those four is written into the Act in terms, and each has its own section. Read them before you decide how urgent your filing is.

The shield people imagine

The belief runs roughly like this, and it is held with real conviction.

Once the mark is registered, nobody else may use that name anywhere in India for anything; a copier can be stopped by producing the certificate; and the registration, once granted, is a closed question. On that picture, registration is a wall and the only question is how fast it can be built.

It is not a wall. It is a set of statutory advantages, each with an edge to it, and knowing where the edges are is what makes the filing worth doing properly rather than cheaply.

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Place Order — no advance, pay after work

Passing off without registration

Start with the one that changes how urgent everything feels.

An unregistered business with genuine goodwill is not defenceless. The action of passing off protects a trader against another trader representing goods or services as his, and it rests on reputation and the likelihood of deception rather than on anything in the register.

So a nine year old business with invoices, packaging, shop placement and customers has something to protect even if it never filed anything. That is worth knowing both ways: it is a comfort if you have not filed, and it is a warning if you have filed against somebody who has been trading longer than you.

Section 27 in two parts

The Act says both halves of that in one section, and the two sub-sections pull in opposite directions by design.

Trade Marks Act, 1999, section 27 — (1) no person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark. (2) Nothing in the Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.

Read together: registration is what gives you the statutory action called infringement. It is not what gives you the right to object to somebody trading off your name.

Prima facie, not conclusive

The second edge is in the section that tells you what a certificate proves, and the key words are easy to read past.

In all legal proceedings, the original registration of a trade mark, and of all subsequent assignments and transmissions, is to be prima facie evidence of the validity of the mark.

Prima facie is doing real work in that sentence. It means the registration is a strong starting position which the other side may displace, not a finding that the mark was properly registered.

The register is rebuttable

Which has a consequence that surprises proprietors in the middle of their first dispute.

A defendant sued for infringement does not have to accept the registration. He may attack it, by rectification or cancellation, on grounds that go to whether it should ever have been granted. A registration obtained on a weak application, with a specification nobody examined closely, is exactly the registration that invites that attack.

Which is the practical argument for doing the filing properly. A well drafted application is not a formality that delays the certificate. It is the thing that makes the certificate hold when somebody pushes on it.

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The prior user saving

The third edge cuts deepest, and of the four it is the likeliest to settle a real fight between two Indian businesses.

The Act protects a person who was there first, even against a registered proprietor.

Trade Marks Act, 1999, section 34 — nothing in the Act entitles the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or resembling it in relation to goods or services in relation to which that person, or a predecessor in title of his, has continuously used that trade mark from a date prior to the qualifying dates the section sets out; and the Registrar shall not refuse to register that earlier mark by reason only of the registration of the first-mentioned mark.

Whom that saving protects

That provision reads two ways depending on which side of it you stand, and most readers of this page need only one of them.

If your trading under a name goes back years and a letter arrives from somebody holding a later registration, the section is the first thing to put in front of an advocate, with your dates. Continuous use from an earlier date is not a technicality; it is a statutory answer.

If you are the one with the registration, the section tells you that your certificate does not reach a genuine prior user, and that discovering one after filing is worse than finding one before. That is the argument for a trademark search that looks at the market and not only at the register.

So why register at all

Having spent four sections on the limits, the obvious question deserves a straight answer rather than a sales paragraph.

Because the alternative is harder. A passing off action requires you to establish goodwill and reputation, misrepresentation and damage, on evidence, before you get anywhere near the question of similarity. An infringement action starts from the register.

There is a commercial answer alongside the legal one, and for a growing business it is often the larger of the two. A registration is an asset standing on a public register in your name, and that matters when the business is sold, when a licence or franchise is granted, and when an investor asks what the company actually owns. Unregistered goodwill is real, and it is considerably harder to put in a schedule.

The honest case for it

Stated as the three things a registration actually buys.

A statutory action in which the right is proved by producing the certificate rather than by proving your reputation. A presumption of validity that puts the burden of unpicking it on the other side. And deterrence, which is the one nobody counts: the register is searched by other businesses and their advisers before a name is adopted, so a registration prevents a great many disputes that therefore never happen.

That is a real and limited case, and it is the one we make. We do not say a certificate ends your exposure, because the sections above say the opposite, and a client who files on that understanding is a client who will be surprised later.

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The form that starts it

The mechanics are simple enough to state in a paragraph, and almost none of the difficulty lies in them.

An application is made to the Registrar for the registration of a mark in respect of particular goods or services, naming the proprietor, stating the mark, and stating the position on use. It is filed electronically in the ordinary case, and the official fee is paid with it.

Everything that goes wrong later is decided in that filing: which classes, what specification, who the proprietor is, and what was said about use. Those four choices are the work.

Classes, and what they cost

Goods and services are divided into classes, and your application covers only the ones it names.

The official fee is charged per class, so each additional class has an immediate price at filing. That much everybody understands, and it tends to push applicants in one of two wrong directions: filing in too few classes to save money, or filing in many to feel safe.

Too few is a real risk for a business that sells goods and also provides a service around them, because those sit in different classes and a registration for one does not reach the other. Settle it from what the business invoices for, line by line.

The specification problem

Within each class, the application sets out a specification: the list of goods or services the mark is to be registered for. This is where most of the avoidable damage is done.

A specification is not a wish list and it is not a description of the industry. It is a statement of what this proprietor supplies under this mark, and it will be read against you at three separate stages.

A useful test before signing one off, and it takes five minutes. Read the specification to somebody in the business who has never seen a trade mark document, and ask whether the company could raise an invoice for every item on the list today. Anything producing a hesitation is either a plan that belongs in a later application or a claim that should not be made in this one.

Wide, narrow and refused

The three stages, in the order they arrive.

At examination, a wide specification collides with more earlier marks, because the comparison is made against what you have claimed rather than what you sell. At opposition, it hands an opponent a ready ground: you have claimed goods you do not supply. And five years after registration, the parts you never used are the parts a competitor may apply to have struck off.

Width bought cheaply at filing is paid for at examination, again at opposition, and a third time at non-use. The advice to claim everything in the class in case you need it later is the commonest bad advice in this field, and it is usually given by somebody who will not be there when the bill arrives.

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Use, or proposed to be used

The application has to say whether the mark is already in use or is proposed to be used, and if in use, from when.

Both are legitimate positions. An established business claims use from its actual starting date; a new venture files on a proposed to be used basis before launching, which is often the right thing to do and is how a name gets secured ahead of a product.

Each position carries a cost. A proposed to be used application secures the name early, which is its whole purpose, but it starts no clock in your favour on prior use and it leaves the registration exposed to the non-use provision if a launch slips by years. A use-based application carries the opposite burden: the date claimed has to be capable of proof on documents, not on memory.

What that declaration binds

What is not legitimate is a date nobody can prove, and the reason is not morality.

A claimed date of first use becomes a fact in your file. It will be relied on if you ever assert priority against somebody else, and it will be tested if an opponent or a defendant decides to test it. A date claimed because it sounded better, with nothing behind it, is a weakness installed at the foundation.

So the rule we apply is simple: the date we put in the application is the earliest date a document supports. An invoice, a printing bill for the packaging, a dated advertisement, a purchase order. If an affidavit as to use is required, it is drafted as a notary affidavit on those documents rather than on recollection, and where somebody is to sign on the proprietor behalf, that authority is a power of attorney in its own terms.

The fees we will not print

On the official fee this page does something that will look like an omission and is a deliberate rule.

The fee is fixed by the First Schedule to the Trade Marks Rules, 2017. It is charged per class. It is lower for an individual, a startup or a small enterprise than for other applicants. And it is lower for filing electronically than on paper. Those four facts are the structure, and the structure is what you need in order to plan.

Knowing the structure is usually enough to plan with. An individual, startup or small enterprise intending to file in three classes electronically knows it is paying the reduced rate three times over, and can budget on that shape without a figure. What you need from us, and what you get in writing before anything is filed, is that computation against the Schedule rather than a round number somebody remembered.

Why the figure is not here

The number itself is not here, and we state why because the same rule governs every figure on this website.

Every source we checked that offered a current figure was a commercial filing website rather than the Schedule. We do not take figures for this site from commercial rate lists, on any subject, because a page that repeats another seller number has no way of knowing when that number was last right.

The fee is computed from the Schedule at the time of filing and paid at cost. If a figure matters to your budget before you engage anybody, ask for it in writing with the Schedule entry identified, and treat a number offered without that reference as an estimate rather than a fee.

Place Order — no advance, pay after work

Place Order — no advance, pay after work

Examination, in one line

After filing, the application is examined, and an examination report may issue.

Objections fall into two families. Some concern your own mark and ask whether it can distinguish anything at all. Others point at marks already on the register and ask whether somebody reached that ground before you.

The report is produced by one examiner reading a register against a checklist within the time the Registry allows, and it is not a judicial assessment of your business or your mark. Understanding that it is a first filter rather than a verdict is the difference between answering it properly and either panicking about it or ignoring it, and applicants do both in roughly equal numbers.

The report and the reply

A report is not a refusal, and treating it as one is the most common overreaction on this subject.

It is a statement of what the examiner, reading a register against a checklist, considers has to be answered. It has its own period, and an unanswered report is how a great many applications quietly become abandoned without anybody having decided anything.

The reply is also the first document on the file that somebody else will read closely, and it is read again at opposition if one comes. A reply conceding something it did not need to, or describing the business in terms wider than the specification, can be quoted back later. It is worth drafting as a pleading rather than as correspondence, for that reason alone.

Where that page takes over

We do not deal with that stage here, deliberately, and we would rather point you at it than cover it twice.

The two families of objection, how each is actually answered, what distinctiveness is really asking, how similarity is weighed, and the discipline of the reply window are all set out on our trademark objection reply page. That is a separate exercise with its own deadline and we price it separately, as trademark objection reply. Renewal, which arrives much later and is a different kind of failure, is on our trademark renewal page and is ordered as trademark renewal.

Acceptance and advertisement

If the application survives examination it is accepted, and acceptance is followed by advertisement.

The application is advertised in the Trade Marks Journal, which is the Registry own publication, in the form the Rules require. An application may also be advertised before acceptance, or re-advertised, in circumstances the Act provides for.

The form the advertisement takes is prescribed, and it reproduces the particulars of the application: the mark, the class, the specification and the proprietor. Anybody reading it is reading what you claimed. That is one more reason a specification drafted to the business rather than to a template is worth the hour it takes, because the template version is what a watching competitor sees.

What advertisement starts

Applicants read acceptance as the end of the risk. It is the beginning of the only period on this page that somebody else controls.

Advertisement exists so that the world can object. From its date, the Act gives anybody who wishes to oppose a fixed window, and that window runs whether or not you are watching it.

Acceptance means the Registry has no objection of its own left. It says nothing about whether anybody else has one, and the next four months are when you find out.

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The journal nobody reads

The Journal is published regularly and it is the only official notice that your application has reached this stage.

Nobody writes to tell you that the clock has started. The advertisement is the notice, and the date of the advertisement is the date from which the period is counted.

It is published on the Registry own site and it is searchable, which makes watching it a mechanical task rather than a skilled one. That is precisely why it gets dropped. Nobody is made accountable for a task requiring no judgment, and the consequence of dropping it does not surface for four months, by which time the person who should have been watching has forgotten the application exists.

Why you must watch it

Which makes status monitoring a part of the work rather than an optional extra, and it is why we treat it as one.

An applicant who files and then waits for a certificate learns about the advertisement when an opposition notice arrives, if it reaches the right address, and learns nothing at all if it does not. An applicant whose status is checked on a schedule knows the advertisement date on the day it appears, and can diarise the window from it.

One related discipline matters more than any other and it costs nothing: the address for service on the record must be an address that you, the proprietor, actually read. An agent address that stops being monitored is the single most common cause of an application dying without the proprietor knowing.

The four month window

The period itself, stated from the sub-section.

Note what the period runs from. Not the date you learn of the advertisement, not the date the Journal reaches anybody, and not the date of acceptance. The date of the advertisement or re-advertisement, which is a date printed in a document somebody has to go and look at. The window is therefore the one period in this process that can expire without a single letter arriving.

Trade Marks Act, 1999, section 21(1) — any person may, within four months from the date of the advertisement or re-advertisement of an application for registration, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration, on payment of the prescribed fee.

What changed in 2013

That sub-section has not always read that way, and the difference matters if you are working from anything written earlier.

It was substituted by Act 40 of 2010, section 3, with effect from 8 July 2013. The earlier structure was a shorter period with a provision for extension, and a great deal of material online still describes three months extendable by one month on request.

Four months, from the advertisement or re-advertisement, with no extension to apply for. If a page, a template or an adviser is working on three plus one, they are working on the pre-2013 position, and that is a reliable signal about everything else on that page.

Anybody may oppose

Two words in that sub-section carry more weight than the period does, and they are the two most applicants read past.

The opening words are any person. Not any proprietor of an earlier mark. Not any person likely to be damaged. Not any person in the trade.

That is a deliberate feature of the design rather than an oversight in the drafting. The register is a public instrument, and advertisement exists so that the public may object to an entry in it, not merely so that rival proprietors may. A system requiring an opponent to establish standing first would let unregistrable marks through whenever nobody with standing happened to be watching the Journal that fortnight.

The Act imposes no requirement that an opponent own anything, trade in anything, or show that your registration would hurt him. Anybody who notices the advertisement and pays the fee may file.

No locus required

In practice oppositions come from a small number of recognisable sources, and knowing them tells you what to expect.

Owners of similar earlier marks, who watch the Journal or pay somebody to. Competitors in the same trade, whether or not they own a registration. Businesses with a similar name in an adjacent field. And occasionally a party whose interest is purely tactical, because an opposition costs the opponent comparatively little and costs the applicant a great deal of time.

The absence of a locus requirement is precisely why the window has to be watched rather than assumed, and why a wide specification is dangerous: it widens the set of people who have a reason to look at you.

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The counter-statement

When a notice of opposition is filed, the Registrar serves it on the applicant, and the applicant has one thing to do.

He must send a counter-statement setting out the grounds on which he relies for his application. It is a pleading rather than a letter: it answers the grounds in the notice and states the applicant own case for registration.

What it is not is a request for time, a letter disputing the opponent standing, or an offer to settle. Each of those has its place and none of them is a counter-statement. Sending one of them inside the period, in the belief that the notice has been answered, is a way of losing an application on a misunderstanding rather than on a merit.

The two month trap

The period for it is short, and the consequence of missing it is unlike anything else in this Act.

Trade Marks Act, 1999, section 21(2) — the Registrar shall serve a copy of the notice on the applicant for registration, and within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application.

Deemed abandoned

Read the last clause again, because it is doing something that very few procedural provisions do.

The application is not refused. It is not dismissed. Nobody weighs the opposition, nobody considers whether the mark was registrable, and nobody makes a decision that could be appealed on its merits. The sub-section deems the application abandoned, and the deeming happens by the passage of time.

You can lose a perfectly registrable mark, against an opposition that had no merit, without anybody ever reading either side. That is the single most expensive sentence in this Act for an ordinary applicant, and it is why this page is organised around it.

No hearing, no argument

Which has a consequence for how a matter should be run, and it runs against the grain of how people react.

The natural reaction is that a weak opposition leaves room to think about the answer. The sub-section takes no interest in how weak it is. A hopeless opposition and a formidable one abandon your application in exactly the same way if the two months pass.

So the sequence is always the same. Diarise the two months from receipt. File a counter-statement that answers the grounds, even if it is not the final word on them. Then consider the merits, with the application still alive. We draft these as reply drafting work on the notice itself, and any accompanying request as an application in its own form.

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Evidence, and a hearing

Once a counter-statement is on the file, the opposition becomes a proceeding with two sides.

Both the opponent and the applicant may leave with the Registrar such evidence as they may rely upon, in the prescribed manner and within the prescribed time, and the Registrar is required to give either party a hearing if that party so desires. He then decides whether registration is to be permitted, and subject to what conditions or limitations.

Evidence here means evidence of the ordinary kind: documents establishing use, dates, trade channels, and the market. It is assembled rather than asserted, and it is the stage at which a file kept carefully from the first day of trading is worth more than any argument.

The Registrar own objection

And a feature of the same section that catches applicants who answer only the notice in front of them.

In deciding the opposition, the Registrar may take into account a ground of objection whether relied upon by the opponent or not.

So an answer confined to the grounds the opponent happened to plead is not necessarily a complete answer. The decision is about whether the mark should be registered, not only about whether the opponent made out his case, and a weakness the opponent missed is still a weakness.

Security for costs

There is a provision worth knowing about where the other side is outside India, and it is a request rather than an argument.

Where a party giving notice of opposition, or an applicant sending a counter-statement, neither resides nor carries on business in India, the Registrar may require that party to give security for the costs of the proceeding, and where the security is not duly given he may treat the opposition or the application, as the case may be, as abandoned.

It is a real lever against a tactical opposition from abroad, and it is used by asking for it early and properly rather than by mentioning it at a hearing.

Correcting the error

The Act also allows mistakes in these documents to be put right, which is more mercy than procedural provisions usually extend.

On request, the Registrar may permit correction of any error in, or any amendment of, a notice of opposition or a counter-statement, on such terms as he thinks just.

Two things follow. An error in a counter-statement filed in time is ordinarily recoverable, which is another reason to file within the two months even if the document is not perfect. And the correction is a thing applied for, in writing, identifying the error, rather than something assumed because it was obvious.

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Registration and the certificate

If no opposition is filed within the window, or if an opposition is decided in the applicant favour, the mark proceeds to registration.

The Registrar registers the mark and issues a certificate of registration under the seal of the Trade Marks Registry. That certificate is what you hand across when asked, and only from then may the registered symbol properly go on anything.

Two practical steps follow at once and both get forgotten. The certificate particulars should be checked against the application, because an error in the register is far easier to correct early than late. And the symbol on your packaging, invoices and signage may now properly be changed, which is a change to make deliberately and to date, for a reason set out towards the end of this page.

The date it runs from

One detail about dates is worth having, because it is counter-intuitive and it works in the applicant favour.

Where a mark is registered, the date of the application for registration is deemed to be the date of registration. So the protection relates back to the filing date rather than beginning on the day the certificate issues, which is why filing early matters even when the process takes a long time.

Keep that distinction in mind, because a different date governs the non-use clock discussed below. That one runs from the date the mark was actually entered in the register, which is not the same date at all, and the difference can be years.

The term, in one line

A registration lasts for ten years and is renewable, indefinitely, on payment of the renewal fee within the periods the Act and the Rules provide.

We do not deal with renewal here. It is a different kind of failure from everything on this page, it has its own periods and its own restoration provisions, and it is set out on our trademark renewal page rather than summarised twice.

The one point worth carrying away here is about the start date rather than the length. Because the date of the application is deemed to be the date of registration, the ten years runs from the filing date and not from the certificate, so a first renewal falls due earlier than most proprietors expect. Diarise it from the filing date on the day the certificate arrives.

The second silence

Which brings the page to the period that begins only once you have the certificate, and which almost nobody is told about at filing.

A registration is not a reservation. The Act does not permit a person to take a name off the market and hold it unused against the day he might want it, and it provides the machinery for somebody else to clear it away.

Registering a name you are not going to use buys you five years. After that, anybody with an interest can apply to have it removed, and your certificate is not an answer.

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Five years of non-use

The provision, in the words that matter.

Trade Marks Act, 1999, section 47(1)(b) — a registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered, on application in the prescribed manner by any person aggrieved, on the ground that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register, or longer, had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being.

The three month cut-back

That phrase about three months is not decoration and it has a practical point.

The five years of non-use is measured up to a date three months before the application is made, not up to the date of the application itself. The effect is that a proprietor cannot defeat an application by hurriedly arranging some use once he hears it is coming: the three months immediately before the application are carved out of the enquiry.

Read that as a warning rather than as a technicality. Use arranged in a hurry, after a problem appears, is both outside the period and unlikely to be bona fide.

What bona fide use means

The Act asks for bona fide use in relation to those goods or services, and the adjective is where the argument happens.

What it is not: a certificate in a drawer, a dormant website, a single arranged sale produced to defeat an application, or use of a different mark that happens to resemble the registered one.

What it is: genuine commercial use of that mark, for those goods or services, in the ordinary course of trade. Courts have required clear evidence before striking a mark off, so the question is resisted with records rather than with assertions.

Which produces the one piece of housekeeping that matters most after registration, and it costs nothing if done as you go. Keep dated evidence of use, per class: invoices, packaging and printing bills, advertisements, listings, purchase orders. Assembling five years of it in arrears, after an application to remove has been served, is close to impossible. A file kept for the purpose is the whole defence.

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The Board that no longer exists

The last part of this page is about where you go when something has to be challenged, and it begins with a correction rather than a description.

For two decades, appeals from the Registrar and applications for rectification went to a specialist tribunal, the Intellectual Property Appellate Board. An enormous quantity of writing on this subject, including many copies of the Act itself, still says so.

That Board was abolished in 2021. It does not exist. If a page, a template or an adviser tells you to approach the Appellate Board, they are describing a forum that was wound up years ago, and that single fact tells you how current the rest of their material is.

What the Reforms measure did

The change came through the Tribunals Reforms measure of 2021, promulgated as an Ordinance on 4 April 2021 and subsequently enacted.

It abolished the Board and redistributed its work. Appeals from orders of the Registrar now lie to the High Court. Rectification may be sought before the appropriate High Court in addition to the Registrar. And the various powers that the Act had vested in the Board now sit with the High Court instead.

The redistribution went well beyond appeals. Powers the Act had given the Board over colour limitations, over the assessment of distinctiveness, over security for costs and over directing the Registrar to rectify the register all moved with it. That is why so many sections had to be amended at once, and it is why an unamended copy of the Act now reads oddly in a dozen different places rather than one.

Three months to the High Court

The period for an appeal is short enough to be worth writing in a diary the day any adverse order arrives.

An appeal against an order or decision of the Registrar has to be brought inside three months, and the period starts when that order or decision is communicated.

Communicated, not dated, and not discovered. Which is the second reason the address for service on the record has to be an address somebody reads: the period runs from communication to that address whether or not it reached you personally. Where an appeal or a petition has to be prepared, that is petition drafting work and the argument belongs to counsel.

Pending matters transferred

For completeness, because a few matters from that era are still alive.

Proceedings pending before the Board when it was abolished stood transferred to the relevant High Court, which may proceed with them from the stage at which they stood, from any earlier stage, or afresh, at its discretion.

That discretion matters to anybody whose matter travelled. A High Court electing to begin afresh is not bound by the way a case was presented before a specialist tribunal, and a file built for the Board is not always the file a court wants. Whether the record carries over intact is a question to settle with counsel rather than an assumption to proceed on.

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Which High Court, though

Now the honest difficulty, and it is a real one rather than a quibble.

The amendment put the work in the High Court without defining, for this purpose, which High Court. For an appeal from the Registrar there is at least an obvious candidate in the office that passed the order. For a rectification or cancellation petition, the question is genuinely open.

Three answers are arguable. That jurisdiction follows the appropriate office of the Trade Marks Registry that granted the registration. That any High Court before which the effect of the registration is felt may entertain it. Or that the expression takes its meaning from the ordinary territorial rules.

The questions referred

The Delhi High Court confronted it directly and declined to decide it alone.

In The Hershey Company v. Dilip Kumar Bacha, 2024 DHC 945, decided on 9 February 2024, three questions were referred to a larger bench: whether a Full Bench decision arising under the Designs Act, 1911 applies to this Act as amended by the Tribunals Reforms measure; whether jurisdiction should be determined by the appropriate office of the Registry which granted the disputed registration; and whether the expression the High Court can bear different meanings in sections 47, 57 and 91 of the same Act.

Still unanswered

So far as we have been able to establish, those questions have not been answered.

There is a workaround that costs nothing and is worth doing now. Before filing anything, establish which office of the Trade Marks Registry granted the registration under attack, and keep the answer in the file with the document that proves it. Whichever way the question is eventually resolved, that single fact is what every one of the candidate answers turns on.

We are telling you that rather than picking one of the three answers and printing it as the law. A page that states a settled rule here is stating something the court itself has referred for decision. Before any rectification or cancellation petition goes in, have the current position confirmed by whoever will be acting, because a petition filed in the wrong High Court is not a defect anybody cures on the day.

The text trap

Which leaves one instruction that applies to everything you will read on this subject, including this page.

A great many online copies of this Act predate 2021 and still carry references to the Appellate Board in the sections dealing with removal, rectification and appeals. They are not wrong about the words that were once there; they are describing a version that has been amended.

The test takes ten seconds. Open the section you are relying on and look for the words Appellate Board. If they are there, in the removal, rectification or appeal provisions, you are reading pre-2021 text, and you should find a current source before acting on anything else on that page. Where a demand or a reply has to go out while this is being settled, it is drafted as a legal notice on its own footing rather than as a step in a proceeding whose forum is uncertain.

The symbol people misuse

There is a small act of optimism that business owners commit within days of filing, and the Act treats it as an offence rather than as optimism.

The mark goes in. A logo gets redrawn. Somebody adds the letter R inside a circle to the packaging, the invoice template and the shopfront, because the application has been made and registration feels like a formality now.

Filing is not registration, and putting the registered symbol on a mark that is not yet on the register is a criminal offence under this Act, not a technicality.

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Four ways to get it wrong

The provision is wider than most people expect, and it catches four separate misstatements rather than one.

Trade Marks Act, 1999, section 107(1) — no person shall make any representation: (a) with respect to a mark, not being a registered trade mark, to the effect that it is a registered trade mark; (b) with respect to a part of a registered trade mark, not being a part separately registered as a trade mark, to the effect that it is separately registered; (c) to the effect that a registered trade mark is registered in respect of goods or services in respect of which it is not in fact registered; or (d) to the effect that the registration gives an exclusive right in circumstances where, having regard to limitations entered on the register, it does not. Sub-section (3) provides that use in India of the word registered, or of any word or symbol referring expressly or impliedly to registration, is to be read as referring to registration on the Indian register, with an exception for a mark registered under the law of a foreign country.

What that exposes you to

The Act attaches a penalty, and we state it as a ceiling rather than in the statutory phrasing because the phrasing is the part everybody copies and the ceiling is the part that matters.

Three years is the outer limit of custody the section allows. A fine may be imposed instead, or in addition.

Two practical readings follow. The first is to use the letters TM, which assert nothing about the register, until the certificate is actually in hand. The second is subtler and catches established proprietors rather than beginners: a mark registered for one set of goods, with the symbol used across a catalogue that has since grown well beyond that set, is caught by the third limb above.

So the symbol audit is worth doing once a year, and it takes an hour. List every place the symbol appears, list what the register actually says, and reconcile the two. A trademark search on your own portfolio is the quickest way to get the second list right, and anything the register shows as limited should be read against those limitations rather than around them.

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The refusals on this file

This is documentation work with narrow edges, and the edges are worth stating before anybody engages anybody.

We will not file an application declaring use from a date no document supports. We will not draft a specification that claims goods or services the business does not supply and has no settled intention of supplying, because a wide specification bought cheaply at filing is a liability at opposition and again at non-use. We will not advise that the registered symbol may be used before the certificate exists. And we will not tell you that a mark can be pronounced safe to adopt on a search alone, for the reason set out on our trademark search page.

Court work is for your advocate, whose fee is engaged and paid by you directly; we do not quote, collect or share it.

And one refusal that costs us work every month. Where an examination report has already issued, the drafting of the reply is its own exercise with its own deadline, and we deal with it as such on our trademark objection reply page rather than treating it as part of a filing package. Where a renewal is what is actually due, that is on our trademark renewal page. We would rather send you to the right page than sell you the wrong service.

When an agent or a counsel takes over

Three points at which this stops being documentation, named so that nobody discovers them late.

At a hearing before the Registrar, whether in opposition or after a refusal. At an appeal, which now lies to a High Court and is litigation in the ordinary sense. And at infringement or passing off, which is a suit with its own forum, its own pleadings and its own interim applications.

Each of those belongs to somebody who will appear. Our part ends with a file assembled so that the person appearing does not have to rebuild it, and a dated note of every period running.

What this work includes

Set out as the division of labour, so that nobody is waiting on anybody.

Point in the processThe taskWho carries it
Before filingClasses settled, specification drafted to what the business actually supplies, proprietor details and the use position fixed against documentsOurs
FilingApplication prepared and filed, official fee computed from the Schedule, acknowledgement and number recordedOurs; fee at cost
WatchingStatus monitored through examination, acceptance and advertisement, with the four month window diarised from the advertisement dateOurs
If an objection issuesReply drafted to the reportOurs, as a separate exercise
If an opposition is filedCounter-statement inside two months, evidence assembledDrafting ours, hearing counsel
Hearings, appeals, infringement suitsAppearance and argumentYour advocate or registered agent

Where the mark sits inside a wider arrangement, the surrounding documents are drafted against their own services rather than bundled in: a franchise agreement where the mark is to be licensed, a trademark assignment where it is to be transferred, and a partnership deed or the company papers where the question of who the proprietor should be has not actually been settled.

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What sits outside it

Four things are not inside our charge, and each is stated against its own service rather than estimated here.

The official fee, which is fixed by the Schedule to the Rules, is charged per class and paid at cost. Any reply to an examination report. Any opposition work beyond the counter-statement and the assembly of evidence. And appearance of any kind, before the Registrar or a court.

Nor does a trade mark registration do the work of the other registers. Artwork, text and software sit under copyright registration; the shape or surface pattern of an article sits under design registration; a technical solution sits under patent filing. A logo frequently engages two of those at once, and treating one registration as covering all of it is a common and expensive assumption.

A business that wants the benefit of the reduced official fee should settle its MSME registration or its Startup India recognition before filing rather than after, because the entitlement is tested against the applicant as it stands on the filing date.

What goes into your file

What the work leaves behind is a file, and it is assembled so that somebody who has never seen the matter can act on it.

The written note on the classes chosen and the specification as drafted, with the reasoning. The application as filed, its number and its acknowledgement. The receipt for the official fee. The dated record of the use position and the documents behind it. The advertisement reference with the four month window computed on its face. And a diary note of every other period that can run against the mark, including the one that begins only after registration.

Nothing goes into that set unchecked: each paper is put against its source first, and anything that could not be obtained again has a certified true copy made of it while it is still in the building. A portfolio runs for decades rather than months, so keeping the set current instead of historical is itself a standing job, which is what legal file management is for.

Settle the classes and the specification before anything is filed

Send us the mark as you intend to use it, a plain list of what the business actually supplies today, the earliest date you can prove you used the mark, and the proprietor details. We will come back with the classes, a specification drafted to that list rather than to a template, the use position as the documents support it, and the official fee computed from the Schedule. If a search should come first, we will say so before taking anything.

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One Act and one set of Rules govern this, and the live difficulty is not in the Act at all but in what Parliament deleted from it in 2021. The statute is the Trade Marks Act, 1999 with the Trade Marks Rules, 2017. On what registration is worth, section 27(1) provides that no person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark, while section 27(2) provides that nothing in the Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods or services of another, or the remedies in respect of it. Section 31(1) makes the original registration, and all subsequent assignments and transmissions, prima facie evidence of the validity of the mark in all legal proceedings — prima facie, not conclusive. Section 34 saves vested rights: nothing in the Act entitles the proprietor or a registered user of a registered mark to interfere with or restrain the use by a person of an identical or nearly resembling mark which that person has used continuously from a date earlier than the qualifying dates the section sets, and the Registrar shall not refuse that earlier user registration on the ground of the later registration alone.

On opposition, which is the stage this page is built around, section 21(1) (as substituted by Act 40 of 2010, section 3, with effect from 8 July 2013) allows any person to give notice in writing of opposition to the registration, in the prescribed manner and on payment of the prescribed fee, within four months from the date of the advertisement or re-advertisement of the application. Section 21(2) requires the Registrar to serve the notice on the applicant, who must then, within two months of receiving it, send a counter-statement setting out the grounds on which he relies for his application; where the applicant does not do so he shall be deemed to have abandoned his application. Section 21(3) requires the counter-statement to be served on the opponent. Section 21(4) allows both sides to leave evidence in the prescribed manner and within the prescribed time, and requires the Registrar to give a hearing if either party so desires. Section 21(5) requires the Registrar, after hearing and considering the evidence, to decide whether registration is to be permitted and on what conditions or limitations, and permits him to take into account a ground of objection whether relied upon by the opponent or not. Section 21(6) permits the Registrar to require security for costs from an opponent, or from an applicant sending a counter-statement, who neither resides nor carries on business in India, and to treat the opposition or the application as abandoned if the security is not given. Section 21(7) permits correction of an error in, or amendment of, a notice of opposition or a counter-statement on such terms as the Registrar thinks just. The substitution in 2013 matters because accounts written before it describe a period of three months extendable by one, and that is no longer the structure.

On what may be stripped away once a mark is on the register, section 47 permits a registered mark to be taken off the register, on the application of any person aggrieved, where there has been no bona fide use — relevantly under section 47(1)(b), where up to a date three months before the date of the application a continuous period of five years or longer from the date on which the mark was actually entered in the register has elapsed during which the mark was registered and there was no bona fide use of it in relation to the goods or services by the proprietor. Section 57 provides for rectification and cancellation. On the forum, the Tribunals Reforms measure of 2021, promulgated as an Ordinance on 4 April 2021, abolished the Intellectual Property Appellate Board: appeals from the Registrar now lie to the High Court and must be filed within three months of communication of the order, rectification may be sought before the appropriate High Court in addition to the Registrar, the powers formerly exercised by the Board now sit with the High Court, and matters pending before the Board stood transferred to the relevant High Court, which may proceed from the stage reached, from an earlier stage, or afresh. ⚠ Many online copies of sections 47, 57 and 91 still carry the pre-2021 wording and still say Appellate Board; treat any such text as out of date. Which High Court is a question the amendment left open, the Act not defining the expression for this purpose: in The Hershey Company v. Dilip Kumar Bacha, 2024 DHC 945, decided 9 February 2024, the Delhi High Court referred three questions to a larger bench — whether the Full Bench decision in Girdhari Lal Gupta, which arose under the Designs Act, 1911, applies to the 1999 Act as amended; whether jurisdiction should follow the appropriate office of the Trade Marks Registry that granted the registration; and whether the expression the High Court can bear different meanings in sections 47, 57 and 91 — and so far as we could establish those questions remain unanswered. Section 107 is quoted above. On the official fee, we work only from the First Schedule to the Trade Marks Rules, 2017: the fee runs per class, it is lower for an individual, a startup or a small enterprise than for others, and it is lower for electronic filing than for physical filing. We print no figure, because every source offering one that we checked was a commercial filing site rather than the Schedule. Confirm the fee, and every period on this page, against the current Schedule and the current text of the Act before filing anything.

Questions business owners put to us

Do I have to register a trade mark to stop somebody copying it?
No. Put that first, because it changes how urgent the rest of this feels. Section 27(1) of the Trade Marks Act, 1999 does bar a proceeding for infringement of an unregistered mark, but section 27(2) preserves rights of action for passing off, which rest on reputation and on the likelihood of deception rather than on the register. So an unregistered business with real goodwill is not defenceless. Registration makes the case very much easier to run; it is not the source of the right.
Then what does registration actually give me?
Three things worth paying for. A statutory right to sue for infringement, which is a narrower and far more mechanical case than passing off, because you prove the register and the similarity rather than your reputation. A presumption: section 31(1) makes the registration prima facie evidence of validity. And deterrence, because other businesses and their advisers search the register before adopting a name. Certainty is the one thing it does not give, and most of this page explains that.
Is a registration final once granted?
It is not. Section 31(1) says prima facie evidence of validity, and prima facie is doing real work there: a registration can be attacked by rectification or cancellation, and it can be removed for non-use. A certificate is a strong position rather than a closed question, and anybody who tells you a registered mark cannot be challenged has not read the section that makes it evidence.
Someone has been using the same name longer than me. Can I stop them?
Probably not, and you should find this out before you file rather than after. Section 34 saves vested rights: a registration does not entitle its proprietor to interfere with the use of an identical or nearly resembling mark by a person who has used it continuously from a date earlier than the dates the section sets, and the Registrar is not to refuse that earlier user a registration on the ground of the later one alone. A prior user with evidence is the hardest opponent there is.
How many classes do I need?
As many as cover what the business actually supplies, and not one more. The fee is charged per class, so every extra class costs real money at filing. The deeper cost is at the other end: a class or a specification covering goods you do not supply invites an opposition you did not need, and leaves that part of the registration exposed to removal for non-use five years later. We settle the list from what the business does today and what it has settled plans to do, not from a template.
Should I write a wide specification to be safe?
It is the commonest piece of bad advice in this field. A wide specification is cheap to draft and expensive to keep: it increases the number of earlier marks your application collides with, it hands an opponent an easy ground, and the parts you never use are the parts a competitor will later apply to have struck off. Width bought at filing is paid for at opposition and again at non-use. Draft to the business, and extend by a fresh application when the business extends.
What is the official government fee?
We will not print a figure here, and the reason is a rule we apply across this site. The fee is fixed by the First Schedule to the Trade Marks Rules, 2017; it goes per class; an individual, a startup or a small enterprise pays less than other applicants; and electronic filing costs less than paper. Every source we checked that offered a number was a commercial filing website rather than the Schedule, and we do not take figures from those. It is computed from the Schedule at the time of filing and paid at cost.
Can I claim the reduced fee as a small business?
If you genuinely qualify on the filing date, and that is the point most applicants miss. The entitlement is tested against the applicant as it stands when the application is made, so a recognition obtained a month later does not reduce a fee already paid. If the reduced rate matters to you, settle your MSME registration or your Startup India recognition first and file afterwards.
What happens after I file?
The application is examined, and an examination report may issue raising objections about your own mark or citing earlier marks. That stage has its own deadline and its own craft, and we deal with it on our trademark objection reply page rather than here. If the application is accepted it is advertised in the Trade Marks Journal, and that advertisement starts the period this page is really about.
What does advertisement start?
The opposition window. Under section 21(1), any person may give notice of opposition within four months from the date of the advertisement or re-advertisement. Four months is the current period: the sub-section was substituted with effect from 8 July 2013, and accounts written before that describe three months extendable by one, which is no longer the structure. If you are reading a page that says three plus one, it is out of date.
Who can oppose my application?
Any person. The section says so, and it does not require the opponent to own an earlier mark, to be in your trade, or to show that he would be damaged. In practice oppositions come from owners of similar marks, from competitors, and occasionally from parties whose interest is tactical. The absence of a locus requirement is why the four month window has to be watched rather than assumed.
My application has been opposed. What is the deadline?
Two months from receipt of the notice, to send a counter-statement setting out the grounds on which you rely for your application. Section 21(2) is unambiguous about the consequence of missing it: the applicant shall be deemed to have abandoned his application. Not refused after a hearing. Abandoned, by operation of the sub-section, without anybody deciding whether your mark was registrable. That is the single most expensive deadline on this page.
Can the abandonment be undone?
Do not plan on it. The sub-section deems the application abandoned, and getting behind that deeming is a contested exercise on the facts of why the period was missed, conducted by somebody who will appear. It is not a correction you request. The practical answer is the boring one: the address on the record must be an address somebody actually reads, and the two months must be diarised from receipt rather than from when the file was next looked at.
What happens in the opposition itself?
Both sides may leave evidence in the prescribed manner and within the prescribed time, and the Registrar must give a hearing if either party asks for one. Then he decides whether registration is to be permitted, and on what conditions or limitations. One feature catches applicants out: section 21(5) allows the Registrar to take into account a ground of objection whether the opponent relied on it or not, so answering only what the notice says is not enough.
The opponent is a foreign company. Does that change anything?
It gives you one thing worth asking for. Section 21(6) permits the Registrar to require security for costs from an opponent who neither resides nor carries on business in India, and if the security is not given he may treat the opposition as abandoned. The same power applies to an applicant in that position who sends a counter-statement. It is a request to make early and properly, not an argument to raise at the hearing.
I made a mistake in my counter-statement. Is it fatal?
Usually not, and the Act provides for it. Section 21(7) permits the Registrar, on request, to allow correction of an error in, or amendment of, a notice of opposition or a counter-statement, on such terms as he thinks just. That is a discretion exercised on an application, so it is asked for in writing with the correction identified, rather than assumed because the error was obvious.
My mark is registered. Can I now relax?
There is a second silence that can undo it, and it begins only after registration. Under section 47, any person aggrieved may apply to have the mark taken off the register where, up to a date three months before his application, a continuous period of five years or more from the date the mark was actually entered in the register has passed without bona fide use of it in relation to those goods or services. Registering a name you are not going to use buys you five years, not a permanent reservation.
What counts as use for that purpose?
The Act requires bona fide use in relation to the goods or services for which the mark is registered, which is more than keeping the certificate in a drawer and more than a token sale arranged to defeat an application. Courts have treated the question as one of genuine commercial use, and removal for non-use is resisted with evidence rather than assertion. The practical discipline is to keep dated evidence of use, per class, as you go, because reconstructing five years of it later is close to impossible.
Where does an appeal from the Registrar go now?
To a High Court, and this changed in 2021. The Tribunals Reforms measure of that year abolished the Intellectual Property Appellate Board; appeals from the Registrar now go to the High Court and have to be brought inside three months, counted from when the order is communicated, rectification may be sought before the appropriate High Court in addition to the Registrar, and matters pending before the Board stood transferred to the High Courts. A page that still names the Board is describing a forum that no longer exists.
Which High Court?
That question has not been settled, and we would rather say so than guess. The Act does not define the expression for this purpose, and in The Hershey Company v. Dilip Kumar Bacha, 2024 DHC 945, decided 9 February 2024, the Delhi High Court referred three questions to a larger bench — including whether jurisdiction follows the Registry office that granted the registration, and whether the expression can mean different things in different sections of the same Act. So far as we could establish, the questions remain unanswered. Confirm the position before filing.
Why do different websites quote different sections to me?
Because a great many online copies of this Act were published before 2021 and have not been updated, so they still refer to the Appellate Board in the sections dealing with removal, rectification and appeals. That is the pre-2021 text. No other error on this subject misleads as many readers, and the cure is to take the provision from a current source and discard anything that names the Board.
Can I use the R symbol after filing?
No. Filing is not registration, and section 107 makes it an offence to represent that a mark is a registered trade mark when it is not, with three years as the outer limit of custody, a fine, or both. The section also catches claiming that part of a mark is separately registered, claiming a registration covers goods or services it does not cover, and claiming an exclusive right that the limitations on the register do not give. Use TM until the certificate exists, because TM asserts nothing about the register.
Does a trade mark cover my logo artwork and my product shape?
Not by itself, and a logo commonly engages more than one register at once. The artwork as a creative work sits under copyright registration; the shape or surface pattern of an article sits under design registration; a technical solution sits under patent filing. Treating one registration as covering the lot is an assumption that shows itself on the day somebody copies the part nobody protected.
Which parts of this do you handle, and which not?
We settle the classes and draft the specification to what the business supplies; we fix the proprietor and the use position against documents; we file; we watch the status through examination, acceptance and advertisement and diarise the four months from the advertisement date; and we draft a counter-statement inside two months if an opposition comes. We do not appear before the Registrar or any court, we do not conduct hearings, and we do not run infringement or passing off suits. Court work is for your advocate, whose fee is engaged and paid by you directly; we do not quote, collect or share it.
How long will registration take?
Nobody honest will give you a date, and our stated time is for the filing rather than for the grant. The duration is driven by whether an examination report issues, how quickly it is answered, when the Registry advertises, and above all whether anybody opposes — and an opposed application runs on a different scale from an unopposed one. What you will get from us is the stage you are actually at, and the period running against you at that stage. If you would rather understand the whole sequence before spending anything, online legal consultation is where to start.
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