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FAQ’s

  • Patent
  • Trade Mark
  • Design
  • Copyright
  • Geographical Indications
  • WIPO Domain Disputes
  • Litigation
What exactly is a patent?

A patent refers to an exclusive legal right that allows the inventor or patent owner to make, use, and sell the invention. This right prevents others from making, using, selling, offering for sale, or importing the invention without the owner’s authorization. Patents are territorial in nature, which means an Indian patent provides protection only within India. A patent is granted only when the invention meets the prescribed requirements of patentability under the law.

Before filing a patent application, it is advisable to conduct a prior art search, also referred to as a patentability search. This search helps identify existing technologies related to the field of the invention. Based on the findings, the patent specification can then be prepared. A specification may be either provisional or complete. A provisional specification is typically filed when the invention is still at a conceptual or early stage to secure an initial priority date. If the invention is fully developed and all supporting data is available, a complete specification is prepared. Once the specification is finalized, the patent application can be filed.

  • True and original inventor,

  • Assignee of the inventor, or

  • Legal representative of the inventor

An assignee may be a legal entity, including a small entity or a startup. The small entity category was introduced in February 2014 and has been defined as follows:

In the case of an enterprise engaged in the manufacture or production of goods, it refers to an enterprise where the investment in plant and machinery does not exceed the limit specified for a medium enterprise under section (7)(1)(a) of the Micro, Small and Medium Enterprises Development Act, 2006; and

In the case of an enterprise providing or rendering services, it refers to an enterprise where the investment in equipment does not exceed the limit specified for medium enterprises under section (7)(1)(b) of the Micro, Small and Medium Enterprises Development Act, 2006.

The startup category was introduced in May 2016 and has been defined as an entity for which (i) not more than five years have passed since its incorporation or registration; (ii) its turnover did not exceed twenty-five crore rupees in any financial year during the said five-year period; and (iii) it is engaged in innovation, development, deployment, or commercialization of new products, processes, or services driven by technology or intellectual property. However, an entity created by splitting up or reconstructing an existing business is not considered a startup. Further, merely developing (a) products, services, or processes without commercialization potential, or (b) undifferentiated offerings, or (c) offerings with no or limited incremental value for customers or workflow, shall not qualify under this definition.

In India, an invention must relate to a product or a process that is new, involves an inventive step, and is capable of industrial application.

An invention that is neither a product nor a process cannot be patented. In the United States, plant patents allow protection for any new and distinct plant variety that has been asexually reproduced. However, in India, plant patents are not permitted. New plant varieties are protected under the Protection of Plant Varieties and Farmers’ Rights Act, 2001. Likewise, a design patent provides protection for the visual appearance of a product. In India, design patents are not allowed, and protection of new designs is regulated by the Designs Act, 2000. Utility models are also not recognized under the Indian Patents Act. Utility models provide protection for small innovations relating to existing products.

The product or process must be new, not previously known or used, non-obvious to a person skilled in the art, industrially useful, and not fall under the exclusions from patentability.

The Indian patent law restricts patenting of products or processes if they fall under any of the following categories:

  • An invention that is frivolous or clearly contrary to well-established natural laws;

  • An invention whose primary use or commercial exploitation could be against public order or morality or cause serious harm to human, animal, or plant life, health, or the environment;

  • The mere discovery of a scientific principle, formulation of an abstract theory, or discovery of any living or non-living substance occurring in nature;

  • The mere discovery of a new property or new use of a known substance or the mere use of a known process, machine, or apparatus unless such process results in a new product or employs at least one new reactant;

  • A substance obtained by mere admixture resulting only in the aggregation of properties of its components, or a process for producing such a substance;

  • The mere arrangement, re-arrangement, or duplication of known devices that function independently in a known manner;

  • A method of agriculture or horticulture;

  • Any process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic, or other treatment of human beings or animals to eliminate disease or enhance economic value or the value of their products;

  • Plants and animals in whole or in part (other than microorganisms), including seeds, varieties, species, and essentially biological processes for their production or propagation;

  • Mathematical or business methods or computer programs per se or algorithms;

  • A literary, dramatic, musical, or artistic work, or any other aesthetic creation including cinematographic works and television productions;

  • A mere scheme, rule, or method for performing a mental act or method of playing a game;

  • A presentation of information;

  • Topography of integrated circuits;

  • An invention which, in effect, constitutes traditional knowledge or is an aggregation or duplication of known properties of traditionally known components;

  • Inventions relating to atomic energy.

Patents safeguard an inventor’s creation by granting exclusive rights to make, use, sell, and offer the invention for sale. This system promotes and incentivizes further innovation, contributing to technological and industrial development. The exclusive rights are granted in exchange for full disclosure of the invention. Once the exclusivity period expires, the public may use the disclosed information to advance the field and build future innovations.

Different types of applications can be filed in India to obtain a patent. The types of patent applications include ordinary applications, convention applications, PCT national phase applications, applications for patent of addition, and divisional applications.

An application for a patent that is filed first in the Patent Office without referring to any earlier application is termed an ordinary application. An ordinary application may be filed with either a provisional specification or a complete specification.

A patent application accompanied by a provisional specification is filed to secure the priority date of the invention. A provisional application is typically used when the invention is still under development and requires additional time for completion. A patent is never granted on the basis of a provisional specification. The provisional specification must be converted into a complete specification within 12 months from the date of filing.

A complete patent specification provides full and detailed disclosure of the invention. Claims form an essential part of the complete specification. It is the complete specification that is published, examined, and ultimately granted.

When a complete specification is filed within 12 months from the filing of a provisional specification, it is referred to as a complete after provisional specification.

When an application is filed initially with a complete specification, it is referred to as a direct complete specification.

When an application is filed within twelve months from the date of first filing of a similar application in a convention country and claims the priority of that earlier application, it is considered a convention application. A convention application is filed with a complete specification.

An application filed by claiming the priority and filing date of an international application made under the Patent Cooperation Treaty (PCT) is referred to as a PCT national phase application. A PCT national phase application must be filed within 30 or 31 months from the priority date or from the filing date of the international application, whichever is earlier. In India, the PCT national phase application is filed within 31 months from the priority date or from the filing date of the international application, whichever is earlier.

When an invention undergoes a minor modification or improvement after a patent application for the original invention has been filed, the applicant may file an application for a patent of addition. The filing date of a patent of addition must be the same as or later than the filing date of the application for the main invention, and it cannot be granted before the patent for the main invention is granted.

A divisional application is an application that is separated from a parent application when the parent application contains more than one invention. A divisional application may be filed voluntarily by the applicant or to address an objection that the claims of the complete specification cover multiple inventions. The filing date of a divisional application is deemed to be the same as the filing date of the parent application.

India has four patent offices situated in New Delhi, Mumbai, Chennai, and Kolkata.

For Indian applicants:
The appropriate office is determined by the territorial limits where the applicant resides or has a place of business. In the case of joint applicants, the office is based on where the first applicant resides or has a place of business.

For foreign applicants with no place of business or domicile in India:
The appropriate office is determined by the address for service in India provided by the applicant or by the party in a proceeding, which may include the agent’s place of business.

A patent is a territorial right, meaning a patent granted in India allows the owner to protect the invention only within India’s borders. Likewise, a U.S. patent provides protection only within the United States.

There is no such thing as an international patent. An international application is filed under the Patent Cooperation Treaty. The PCT itself does not grant any patent.

Filing a PCT application enables an applicant to seek patent protection simultaneously in each of the 152 PCT member countries through a single international application. The PCT is not a granting authority; it functions as a filing, searching, and examining authority.
PCT applications may be filed at the Indian Patent Office as the Receiving Office for Indian nationals.
The Indian Patent Office may also be selected as the ISA and the IPEA.
An Indian resident is not permitted to file or cause the filing of a PCT application as the first filing without obtaining prior permission from the Indian Patent Office.

Applications may be filed either manually or electronically. Electronic filing is encouraged since paper filing carries a 10% surcharge on fees.

Filing requirements for an ordinary application:

  • Application form

  • Provisional or complete specification

  • Drawings (if required)

  • Sequence listing (if applicable)

  • Abstract of the invention

  • Information and undertaking disclosing the number, filing date, and current status of foreign patent applications (if any)

  • Declaration of inventorship when a provisional specification is followed by a complete specification

  • Power of attorney (if filed through a patent agent)

  • Prescribed fees (payable in cash, cheque, demand draft, or online)

  • Permission from the National Biodiversity Authority if biological material from India is used, otherwise the source must be disclosed in the specification; permission may be obtained later but before grant

  • If microorganisms are used that are not available to the public and cannot be adequately described, they must be deposited with an International Depository Authority before filing; the identification number may be furnished to the Patent Office later

Filing requirements for a national phase application:

  • Copy of the PCT publication with the specification and drawings

  • Copy of the specification (if the PCT application is not in English) for filing in India

  • Copy of the International Search Report

  • Copy of the International Preliminary Report on Patentability

  • Amended pages, if any, on the basis of which examination in India is sought

  • Power of attorney in favor of the authorized agent

  • Copy of Form PCT/IB/304

  • Entry into the Indian national phase must be made with the same specification filed under the PCT along with any amendments made during the international phase

No. Any disclosure of the invention prior to filing a patent application can adversely affect its patentability.

This can be determined by conducting a universal patentability or prior art search using various search tools across patent and non-patent databases.

Under Indian patent law, if biological material is used in an invention, the applicant must disclose its source and geographical origin in the specification. If the material is not publicly available, the applicant must deposit it with an international depository recognized under the Budapest Treaty and provide a reference to the deposit in the specification.

If an invention utilizes biological material sourced from India, the applicant is required to obtain approval from the National Biodiversity Authority. This requirement arises under Section 6(1) of the Biological Diversity Act (BDA), 2002, which provides that no person shall apply for any intellectual property right, in India or abroad, for an invention based on research or information obtained from a biological resource originating in India without first securing approval from the National Biodiversity Authority.

However, in the case of patents, permission from the National Biodiversity Authority may be obtained after the application is accepted, but before the patent is granted by the concerned patent authority. The National Biodiversity Authority must decide on such applications for approval within ninety days from the date of receipt.

The BDA defines biological resources as plants, animals, and micro-organisms or their parts, genetic material, and by-products (excluding value-added products) that have actual or potential use or value. Human genetic material is specifically excluded from this definition.

In recent years, the Indian Patent Office has adopted a strict approach, requiring inventions involving biological material sourced from India to obtain NBA approval. It has also been clarified that a patent will not be granted until such approval is received by the applicant. In a few extreme instances, failure to obtain NBA permission has even been used as a ground for refusing a patent application.

Indian patent law requires an applicant to keep the Patent Office informed about the status of any corresponding foreign applications filed outside India that relate to the same or substantially the same invention. This information must be provided within six months from the date of such filing.
The applicant is also required to submit search and examination reports (office actions or communications issued by examining authorities), along with the allowed claims of all corresponding foreign patent applications, whenever requested by the Patent Office.

Proof of right is a declaration of the true and first inventor provided on Form 1 or through a separate assignment document. If the application is filed by a legal representative, a death certificate or certificate of inheritance of the deceased must be submitted as proof of right. Proof of right must be submitted within six months from the date of filing the application.

A patent application is published after the expiry of 18 months from the date of filing or from the priority date of the application, whichever occurs earlier. This publication in the official journal is referred to as the 18-month publication and marks the beginning of the pre-grant opposition period.
Alternatively, the applicant may request early publication before the expiry of this period by submitting a request along with the prescribed fee.

The examination of a patent takes place only after a request for examination is filed along with the prescribed fee. This request must be submitted within 48 months from the priority date or the filing date of the application, whichever is earlier.
An express request for examination before the expiry of 31 months may be made only for PCT national phase applications upon payment of the prescribed fee.
Additionally, an expedited examination mechanism has been in effect since May 2016, under which applications requesting expedited examination are placed in a queue separate from applications requesting ordinary or express examination. This expedited option is available only to startups and to applicants who have designated India as the International Searching Authority (ISA) or the International Preliminary Examining Authority (IPEA) in their PCT applications.

The term of a patent is 20 years from the date of filing of the patent application.

A patent can be maintained in force by paying the renewal fee each year for the duration of the patent term. The renewal fee is payable at the end of the second year from the date of the patent or at the end of any subsequent year, and it must be submitted to the Patent Office before the expiry of that respective year.
A renewal may also be made after the due date during an extended period of six months upon filing a request with the prescribed fee. This six-month extension period is not further extendable.
If the renewal fee is not paid, the patent will lapse and cease to be in force. However, a lapsed patent may be restored by submitting a valid request within the prescribed period.

If a design registration lapses due to failure to pay the extension fee, an application for restoration may be filed within one year from the date of lapse.

Trademark registration grants the proprietor the exclusive right to use the registered trademark for the goods or services covered under Indian law, subject to certain exceptions.
Use of the ® symbol enhances brand value and builds consumer confidence regarding quality.
It serves as a notice to potential infringers that the trademark enjoys statutory protection.
The trademark registration certificate acts as prima facie evidence of the rights vested in the registered proprietor in legal proceedings.

An SPC is a right generally granted by the European Union to extend the term of protection for an active product covered by a patent. It compensates for the time lost in obtaining marketing authorization for the product. India does not provide for SPCs.

Pre-grant opposition:
Any person may file a representation before the Controller opposing the grant of a patent at any time after the publication of the patent application but before the grant of the patent, on any of the grounds provided under the Act.

Post-grant opposition:
Any interested person may file a post-grant opposition against the grant of a patent within twelve months from the date of publication of the grant at the appropriate office.

Any interested person or the Central Government may file a petition for revocation on one or more of the grounds provided under the law before the Appellate Board, or raise a counterclaim for revocation in an infringement suit before the High Court.

The patentee and every licensee must submit details regarding the working of the invention for each calendar year within three months from the end of that year, and within two months whenever required by the Controller. Failure to provide such information is punishable with a fine that may extend to ten lakh rupees.

Any interested person may apply to the Controller for the grant of a compulsory license for a patent after three years from the date of grant of that patent if either the reasonable requirements of the public have not been met, or the patented invention is not available to the public at an affordable price, or the patented invention is not being worked in India.

Patents may be assigned or licensed. An assignment generally records the transfer of ownership of a patent, whereas a license may involve a full or partial transfer of rights, title, and interest.

Judicial actions available to a patentee include civil remedies, and an administrative remedy is also available against the importation of infringing products through customs law.

Civil territorial jurisdiction:
An infringement suit may be instituted in any court not lower than a District Court. A patentee may also choose to file an infringement suit before the High Courts of Delhi, Bombay, Calcutta, and Madras, which exercise original jurisdiction subject to the pecuniary limits prescribed under their respective rules.

The defendant may file a counterclaim seeking revocation of the patent, or may choose to file a petition for revocation before the Intellectual Property Appellate Board on the grounds provided under the law.

Certain acts under Indian patent law are not regarded as infringement. This is governed by Section 107A. Section 107A(a) states that the act of making, constructing, using, selling, or importing a patented invention solely for purposes reasonably related to the development and submission of information required under any law in force in India or in any other country regulating the manufacture, construction, use, sale, or import of such products shall not be considered infringement. This aligns with the Bolar provision.
Additionally, the importation of a patented product by any person from a party duly authorized by the patentee to produce and sell or distribute the patented product is also not treated as infringement of patent rights.

A trademark is a distinctive sign that identifies certain goods or services as originating from a particular person or enterprise.
A trademark, often referred to as a brand, is a mark that can be represented graphically and is capable of distinguishing the goods or services of one person from those of others. A trademark may consist of a word, name, device, label, numerals, a combination of colors, sound, or shape used on goods or services to indicate their source.
A trademark grants the owner exclusive rights to use the mark in connection with the sale of goods and/or the provision of services. The owner may prevent others from making, using, selling, offering for sale, or importing goods and/or services bearing the registered mark.

A trademark identifies the source of goods and services and differentiates them from those of other entities.
A trademark serves as a primary tool for promoting and marketing goods or services.
A trademark enables consumers and buyers to recognize the goods they are purchasing.
A trademark allows consumers to develop brand loyalty and affiliation, thereby encouraging repeat sales.
A trademark helps build goodwill, which eventually translates into valuable brand equity.

A trademark should be memorable and appealing.
A trademark should be short and easy to spell.
A trademark should not be laudatory or descriptive of the goods or services.
A trademark should not be identical or deceptively similar to an existing mark.
It is advisable to conduct a search on the official website of the Trademarks Registry before applying to minimize the risk of conflict with prior proprietors of identical or similar marks.

A trademark cannot be registered if:

  • It lacks distinctive character and is not capable of distinguishing the goods or services of one person from those of another;

  • It consists exclusively of marks or indications that designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production, or other characteristics of the goods or services;

  • It consists exclusively of marks or indications that have become customary in current language or in bona fide and established trade practices, such as commonly used terms, place names, or generic references;

  • It is of a nature that may deceive the public or cause confusion;

  • It contains matter likely to offend religious sentiments of any class or section of Indian citizens, or contains scandalous or obscene matter;

  • Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950;

  • It consists exclusively of the shape of goods resulting from the nature of the goods themselves, the shape necessary to obtain a technical result, or the shape giving substantial value to the goods;

  • It is similar to a prior adopted, registered, or used trademark of another trader for identical or similar goods or services;

  • It is prohibited from registration under government directions, such as devices or words like “Ashok Chakra,” or names such as “Sai Baba” or “National”;

  • It is identical or similar to well-known trademarks for similar or dissimilar goods or services, such as Bajaj, Sony, Infosys, Kit Kat, Amul, or Tata;

  • It is the commonly used and accepted name of any single chemical element or chemical compound (as opposed to mixtures), or is declared by the World Health Organization and notified by the Registrar as an international non-proprietary name, or is deceptively similar to such a name.

Any person claiming to be the proprietor of a trademark, whether the mark is in use or proposed to be used, may file an application for its registration before the appropriate Trademarks Registry office. A trademark may be registered in the name of an individual, sole proprietor, joint owner, or a body such as a company, LLP, partnership firm, society, trust, or HUF.

A rectification application may be filed before the Trademarks Registry or the Intellectual Property Appellate Board seeking removal of a registered trademark from the Register of Trademarks on the grounds provided under the Trademarks Act, 1999.
The proprietor of a registered trademark may initiate civil action against any person who infringes the mark by filing an infringement lawsuit. Statutory infringement remedies are available only for registered trademarks, whereas passing off actions may be filed against third parties based on common law rights, whether the mark is registered or unregistered. The trademark owner may seek remedies such as injunctions, damages, and accounts. No court lower than a District Court has jurisdiction over civil suits concerning trademark infringement.

A design refers to the features of shape, configuration, pattern, ornament, or composition of lines or colors, or any combination thereof, applied to an article in two-dimensional form, three-dimensional form, or both.
A design may be applied by any industrial process or means—manual, mechanical, chemical, or a combination thereof—and in the finished article it must appeal to and be judged solely by the eye.
A design does not include any mode or principle of construction or anything that is essentially a mechanical device.
A design also does not include trademarks, property marks, or artistic works as defined under the Trademarks Act, 1999, the Indian Penal Code, 1860, and the Copyright Act, 1957.

Copyright is a statutory right granted to creators or authors of literary, dramatic, musical, and artistic works, as well as producers of cinematograph films and sound recordings. Copyright comprises a bundle of rights, including the rights of reproduction, communication to the public, adaptation, and translation. Copyright protects the rights of authors over their creations, thereby rewarding originality and creativity. By providing such protection, it supports social and economic development and contributes to the advancement of society.

Copyright protection granted under the Indian Copyright Act applies only within India. However, India is a member of several international conventions on copyright and related rights, which enable Indian works to receive protection in foreign countries. These include:

  • Berne Convention for the Protection of Literary and Artistic Works

  • Universal Copyright Convention

  • Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms

  • Multilateral Convention for the Avoidance of Double Taxation of Copyright Royalties

  • Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement

As a result, works originating from countries listed in the International Copyright Order, 1999 receive copyright protection in India as if they were Indian works.

A geographical indication, commonly referred to as a GI, is a name or sign used to denote the geographical origin of certain products, such as a town, region, or country. A GI enables consumers to identify products that possess specific qualities arising from traditional methods of production or from reputation and distinctive characteristics that are essentially linked to their origin in a particular geographical locality, region, or country.

The .IN Domain Name Dispute Resolution Policy (the “Policy”) sets out the terms and conditions for resolving disputes between a registrant and a complainant arising from the registration or use of a .in internet domain name (for example, www.xyz.in
). The policy is administered by the National Internet Exchange of India (NIXI).
A complaint under this procedure begins with the filing of a complaint before the .IN Registry and constitutes an arbitration proceeding, in which the .IN Registry appoints an arbitrator to decide the domain name dispute. The arbitrator is required to conduct the proceedings in accordance with the Arbitration and Conciliation Act, 1996 as well as the INDRP policy and rules. A personal hearing may be scheduled at the discretion of the arbitrator. The grounds for filing a complaint and the available remedies are similar to those under the UDRP.

Examples include Darjeeling Tea, Mysore Sandal Soap, Nagpur Orange, Agra Petha, Kashmir Pashmina, Lucknow Chikan Craft, Baluchari Saree, and Kancheepuram Silk. The complete list of registered GIs in India can be accessed on the official website of the Geographical Indications Registry.

Goods and services are classified according to the current edition of the International Classification of Goods and Services (Nice Classification) issued by the World Intellectual Property Organization. The classification consists of 45 classes, with Classes 1–34 covering goods and Classes 35–45 covering services.
The Trademarks Registry has also published an alphabetical index of goods and services, including items of Indian origin. In cases of ambiguity regarding classification, the decision of the Registrar on the appropriate class is final.

Online design searches are not available to the general public, and to determine whether a prior registration exists for a particular design, a request must be made to the Controller with details of the design proposed to be registered. A design search may be conducted either by providing the registration number or by submitting drawings or photographs of the article.The Trademarks Registry has also published an alphabetical index of goods and services, including items of Indian origin. In cases of ambiguity regarding classification, the decision of the Registrar on the appropriate class is final.

A registered geographical indication is infringed when a person who is neither the registered proprietor nor an authorized user applies the indication to goods or represents that the goods originate from a geographical area other than their true place of origin, thereby misleading the public.

Civil action:
The rights holder may initiate infringement and/or passing off proceedings against an infringer. Infringement proceedings are available only if the geographical indication is registered. In cases of infringement and/or passing off, the court may grant injunctions and may also award damages or accounts of profits, along with delivery-up of infringing labels and indications for destruction or erasure.

Criminal action:
Criminal remedies are also available for violations involving geographical indications. The police may conduct raids and seize infringing goods on their own motion; however, before conducting any search or seizure, the police must obtain the opinion of the Registrar of Geographical Indications regarding the facts of the case and act only upon such opinion.

The Government has established a Copyright Enforcement Advisory Council to periodically review the enforcement of the Copyright Act and to advise on measures for improving its implementation. The Copyright Act also provides for a quasi-judicial body known as the Copyright Board, consisting of a Chairman and not fewer than two and not more than fourteen members, to adjudicate certain categories of copyright matters.

A petition for cancellation of a registered design may be filed at any time during the term of registration before the Controller of Designs on grounds such as prior publication, prior registration in India, or lack of novelty and originality.

The Madrid Protocol came into effect in July, 2013. The Madrid Protocol is a gateway to protect trade marks in countries who are members of the Madrid Protocol. It aims to provide a cost-effective and efficient way for trademark holders, individuals and businesses to ensure protection for their trade marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency.
For Indian trade mark owners/applicants one can file an international application with the Trade Marks Registry, India based on a basic application/basic registration and designate the countries in which they seek protection of the concerned trade mark. The Trade Marks Registry will charge a handling fee to conduct an eligibility check and certify the contents and forward the international application to the International Bureau of the WIPO within a period of 2 months. The International Bureau upon receipt of the application and the requisite fee (which will depend on the countries designated) will conduct a formality check. Once a formality check is successful the International Bureau will proceed to register the mark in the international register thereby leading to an international registration. The International Bureau will also publish the mark in a periodical gazette(WIPO Gazette of International Marks) issued by the International Bureau.
Request for designation (territorial extension) can also be made after the filing of the international application and subsequent to the international registration. Once an International registration has been issued the International Bureau shall immediately notify the Trade Marks Office of concerned designated country of such designation. The concerned designated countries will examine the trade mark application under their own national law and rules and within a fixed time line (which will vary for each country that is designated) notify its acceptance and/or refusal and/or objection by way of an opposition to the said application to the International Bureau. As far as India is concerned a foreign national/body incorporate filing in India through the Madrid Protocol upon acceptance of the application(subject to no opposition) by the Trade Marks Registry, India will grant a status reflecting that the trade mark is ‘PROTECTED’ in India. No separate registration certificate will be granted to such foreign national/body incorporate. The registration of an international application happens at the International Bureau and not at the individual designated countries. The individual designated countries accord PROTECTION as per their national trade mark law.
Some countries additionally issue registration certificates as a matter of procedure or on request, as the case may be.In particular, the United States issues a registration certificate with a United States registration number, whereas India will not. An international registration certificate is issued by the International Bureau.

A patent may be restored within 18 months from the date of cessation, subject to the Controller’s discretion, upon filing the following:

  • An application form for restoration of the lapsed patent with the prescribed fee; and

  • Evidence demonstrating that the failure to pay the renewal or maintenance fee was unintentional.

Litigation in intellectual property rights in India is diverse because multiple courts exist, and different courts follow different practices. These variations require different litigation strategies. In IPR disputes, obtaining ex parte orders is important where prior notice to the defendant would defeat the purpose of the action. Some courts in India do not grant ex parte injunctions due to internal policies, while others do, which often leads litigants to choose favorable forums, a practice that is legitimate but subject to certain limitations.

Jurisdictional considerations also differ among IPR categories and require distinct strategies. In trademark matters, a proprietor may sue within his own territorial jurisdiction if the mark is registered; however, in passing off cases involving unregistered marks, such jurisdictional advantage is not available. In patent and design matters, actions must be filed where the defendant resides or where the infringing goods are manufactured or sold. In copyright infringement cases, the owner may sue within his own jurisdiction regardless of where the infringement occurred. Court-made law has periodically modified these principles, sometimes restricting forum choices to prevent inconvenience to defendants. For example, even if a trademark owner has places of business in several cities, courts have held that the suitable forum may be confined to the defendant’s place of business to avoid abuse of multiple presences.

With rising awareness, the number of IPR cases has increased, giving courts more frequent opportunities to handle such disputes and gain experience, which is helping to streamline enforcement and promote more uniform application of the law. However, given the size of the country and the existence of over 600 courts, uniform practices remain difficult. Most Indian states have a single High Court with additional benches in other cities, and the approximately 24 High Courts each have appellate jurisdiction over about 30 District Courts on average.

While this reflects the position for civil actions, criminal law also plays a significant role in trademark and copyright counterfeiting cases. Criminal law does not apply to patents and designs in India. Investigation also plays a major role in litigation, as effective strategies require accurate information regarding defendants and counterfeiters. Many successful litigations are possible only because of prior intelligence relating to the infringement and the infringers.

In a straightforward case, where no objections are raised by the Trademarks Registry and no oppositions are filed, trademark registration in India generally takes approximately eight to ten months from the date of filing. However, the duration depends entirely on the facts of each case. If objections or oppositions arise, the timelines may vary on a case-to-case basis.

The Internet Corporation for Assigned Names and Numbers (ICANN) is responsible for managing internet protocol address spaces, allocating address blocks to regional registries, maintaining registries of internet protocol identifiers, and administering the top-level domain name system.
ICANN requires all registrars to comply with the Uniform Domain-Name Dispute-Resolution Policy. Under this policy, most trademark-based domain name disputes between a registrant and another party (other than the registrar) must be resolved through agreement, court action, or arbitration before a registrar, who has the authority to cancel, suspend, or transfer the disputed domain name. Disputes arising from abusive registrations may also be addressed through expedited administrative proceedings initiated by a trademark holder by filing a complaint with an approved dispute-resolution service provider. Most generic top-level domains, such as com, info, net, org, biz, name, and pro, fall within the scope of the policy. To invoke the policy, a trademark owner may either file a complaint in a court of competent jurisdiction against the domain name holder, or in cases involving abusive registrations, submit a complaint to an approved dispute-resolution service provider.
The World Intellectual Property Organization Arbitration and Mediation Center is one such provider operating under the ICANN-mandated policy. A complainant may file a complaint based on the UDRP guidelines on grounds such as bad-faith registration, use of a registered trademark to register a deceptively similar domain name, and lack of legitimate rights or interest in the disputed domain name by the registrant. Available remedies include deactivation and cancellation of the disputed domain name and transfer of the domain name to the complainant.

The procedure for registration is as follows:

  • The author, publisher, copyright owner, or any person interested in the copyright in a work may file an application for registration with the Registrar of Copyrights in the prescribed form and with the prescribed fee;

  • Separate applications must be filed for the registration of each individual work;

  • The application must be signed by the applicant.

  • The design must be new and original.

  • The design must not have been previously published or used in any country before the date of filing the application.

  • Novelty may lie in applying a known shape or pattern in a new manner.

  • The design must relate to features of shape, configuration, pattern, or ornamentation applied or applicable to an article.

  • The design must be capable of being applied to an article by an industrial process.

  • In its finished form, the design must appeal to and be judged solely by the eye.

  • The design must be capable of being sold separately.

  • The design must not contain any obscene or scandalous matter.

The Third Schedule of the Designs (Amendment) Rules, 2008 sets out the classification of goods, which is based on the Locarno Agreement. Only one class number may be specified in a single application.
Goods are classified on the basis of the articles to which the design is applied. Articles are grouped into 32 classes, which are further divided into sub-classes. For example, Class 1 covers foodstuffs, Class 2 covers articles of clothing and haberdashery, and Class 3 covers travel goods, cases, parasols, and personal belongings.

To file a design application, the following information and documents are required:

  • Name, address, and nationality of the applicant;

  • Front, back, top, bottom, left side, right side, and perspective views of the design (photographs are preferred; clear line drawings may be submitted if the product has not yet been manufactured);

  • Name of the article and, if possible, the international class number;

  • Description of the nature of the article and its purpose of use;

  • Details of any priority application, where applicable;

  • Certified copy of the priority document (along with an English translation if required) when claiming priority; the priority document may be filed after the application, but within three months from the filing date, subject to payment of late fees;

  • Power of attorney or general power of attorney signed by the applicant.

A copyright owner may initiate a civil action against any person who infringes the copyright in the work. The owner is entitled to remedies such as injunctions, damages, and accounts. No court lower than a District Court has jurisdiction over civil suits involving copyright infringement.
Any person who knowingly infringes or abets the infringement of copyright also commits a criminal offence under the Copyright Act and may be punished with imprisonment for a term not less than six months and up to three years, and with a fine not less than fifty thousand rupees and up to two lakh rupees.
Copyright infringement is a cognizable offence, and any police officer not below the rank of Sub-Inspector may, upon being satisfied that an infringement is being or is likely to be committed, seize without warrant all infringing copies and any plates used for producing them, wherever found. All seized goods must be produced before a magistrate as soon as possible. No court lower than that of a Metropolitan Magistrate or a Judicial Magistrate of the First Class may try an offence under the Copyright Act.

Ownership in a registered design may be transferred through assignment, transmission, or operation of law. A person may also acquire rights in a design as a mortgagee, licensee, or otherwise.
The instrument of transfer must be in writing.
The person claiming title under the transfer must apply for registration of that title within six months from the date of execution of the instrument.

Pre-filing search:
It is strongly advisable to conduct a trademark availability search before filing any trademark application.

Requirements:

Description or representation of the mark;

Full name, nationality, and registered office address of the applicant;

List of goods or services according to the current edition of the Nice International Classification (multi-class applications are permitted);

Date of first commercial use of the mark in India, if applicable (applications may also be filed on an intent-to-use basis);

Power of attorney.

After a trademark application is advertised in the Trademarks Journal, it may be opposed by any person within four months from the date of publication. If an opposition is filed, opposition proceedings will take place, after which the Registrar of Trademarks will either allow or refuse the application based on the merits of the case. An appeal may be filed against the Registrar’s decision before the Appellate Board. If no opposition is filed within the four-month period, the trademark application proceeds to registration.

India follows a “first to use” system rather than a “first to file” system, meaning that the prior user of a trademark has stronger proprietary rights than a prior registrant. The user date of a trademark refers to the date from which the trademark has been commercially used in the market. Mere advertisements or test marketing do not constitute commercial use.
It is essential to declare the user date when applying for registration before the Trademarks Registry if the trademark has already been used, and this date may need to be supported by relevant documents during prosecution. A trademark may also be filed as a “proposed to be used” mark where no commercial use has yet commenced.

The owner of copyright in an existing work, or the prospective owner of copyright in a future work, may assign the copyright to any person either wholly or partially, either generally or subject to limitations, and either for the full term of the copyright or for any part of that term.

A geographical indication is public property belonging exclusively to the producers of the relevant goods, and therefore it cannot be assigned, transmitted, licensed, pledged, mortgaged, or made the subject of any similar agreement.

A request for expedited examination of a trademark application may be filed in the prescribed form with the prescribed fee and with a statement providing cogent reasons for seeking such request. However, once the examination report is issued, the application proceeds under the normal timelines and no further priority is accorded to the application.

Although copyright protection is acquired automatically without any formal registration, obtaining copyright registration serves as prima facie proof of ownership in disputes concerning copyright ownership.

Both trademarks and geographical indications identify the source of goods. However, a geographical indication identifies goods that share a common geographical origin and possess qualities attributable to that origin, whereas a trademark distinguishes the goods of one trader from those of another. A geographical indication refers to a place, and all producers within that region may use it upon meeting specified standards. A trademark identifies a particular trader, who has the exclusive right to use that mark.

The Appellate Board or the Registrar of Geographical Indications may remove a geographical indication or an authorized user from the register either on its own motion or upon an application filed by an aggrieved person.

Piracy of a registered design occurs when a registered design, or an obvious imitation of it in the same class, is used without the consent or permission of the registered proprietor for purposes such as sale, importation, publication, or exposure for sale, with knowledge of such unauthorized use.
The registered proprietor may file a suit for infringement, injunction, and recovery of damages before a court not lower than that of a District Judge. Any person who infringes the copyright in a design is liable to pay the registered proprietor a sum not exceeding ₹25,000 for each instance of infringement, subject to a maximum of ₹50,000 for any one design, recoverable as a contractual debt. There is no criminal remedy under the Designs Act.

The Copyright Act, 1957 protects the rights of authors in the following categories:

Literary works, including computer programs;

Dramatic works;

Musical works;

Artistic works;

Cinematograph films;

Sound recordings.

Computer programs are protected as literary works under the Copyright Act. In addition to the rights granted to literary works, the owner of copyright in a computer program has the exclusive right to sell or give on hire, or to offer for sale or hire, copies of the program, regardless of whether such copies have been previously sold or hired.

Unlike patents, copyright protects the expression of an idea and not the idea itself. There is no copyright in mere ideas or concepts. Moreover, copyright does not generally extend to titles or names, short word combinations, slogans, short phrases, methods, plots, or factual information. To be eligible for copyright protection, a work must be original.

  • It grants legal protection to geographical indications in India;

  • It prevents unauthorized use and dilution of a registered geographical indication by others;

  • It provides legal protection and assurance to consumers and safeguards the interests of producers;

  • It helps in promoting and increasing exports;

  • It encourages producers operating within the relevant geographical territory.

After filing a design application, the Design Office generally issues an examination report within two to three months. The applicant must respond to the official communication within three months from its date, failing which the application is deemed withdrawn. Once the examiner’s requirements are complied with, the Design Office typically issues the registration certificate within four to five months. Ordinarily, a design application should be disposed of within six months from the filing date, and if the procedure is not completed within that period due to the applicant’s neglect or default, the application is deemed abandoned.

An “article” refers to any article of manufacture and any substance that is artificial or partly artificial and partly natural, and includes any part of an article that is capable of being made and sold separately.

The registration of a design is valid for an initial term of ten years from the date of registration. Where priority has been claimed and allowed, the term is ten years from the priority date. The term may be extended for an additional period of five years. The registered design holder may apply for such extension once the design has been registered.

After a design is registered, the relevant views of the article along with other information are published in the Official Gazette, which is issued every Saturday.

Copyright protection is granted for a limited duration and generally lasts for sixty years. For original literary, dramatic, musical, and artistic works, the sixty-year term is calculated from the year following the death of the author. For cinematograph films, sound recordings, photographs, posthumous publications, anonymous and pseudonymous publications, government works, and works of international organizations, the sixty-year term is calculated from the year following the year in which the work was first published.

Registration of a geographical indication is valid for ten years and may be renewed from time to time upon payment of the prescribed fees. If a geographical indication is not renewed, it may be removed from the register.

A trademark is initially registered for ten years and must be renewed every ten years upon payment of the prescribed renewal fee within the validity period. A trademark may continue indefinitely through timely renewal.
If the renewal fee is not paid within the validity period, the Registry may restore the trademark upon payment of the additional fee or surcharge within one year from the expiry of the validity period. Failure to renew within this time results in removal of the trademark from the register.

The owner of a registered trademark may initiate a civil action against any person who infringes the trademark by filing an infringement suit. Such statutory infringement actions may only be brought on the basis of a registered trademark. A passing off suit, however, may be brought against third parties by the owner of either a registered or an unregistered trademark under common law rights. The trademark owner may seek remedies including injunctions, damages, and accounts. No court lower than a District Court has jurisdiction over civil suits involving trademark infringement.

Any person claiming to be a producer of the goods for which a geographical indication has been registered may become an authorized user. A person who wishes to be an authorized user must apply to the Registrar in the prescribed manner and upon payment of the requisite fee.

Ordinarily, the author is the first owner of copyright in a work.
For literary or dramatic works, the author is the person who creates the work.
For musical works, the author is the composer.
For cinematograph films, the author is the producer.
For sound recordings, the author is the producer.
For photographs, the author is the photographer.
For computer-generated works, the author is the person who causes the work to be created.
Where a work is created in the course of employment under a contract of service, the employer is the first owner of copyright in the absence of an agreement to the contrary.

Any association of persons, producers, organization, or authority representing the interests of the producers of the concerned goods or products may apply in writing to the Registrar for registration of a geographical indication in the prescribed format.
Although registration of a geographical indication is not compulsory, it affords better legal protection and enables the registered proprietor or any authorized user to initiate infringement proceedings.