TRADE MARK FILING BEFORE REGISTRATION
1. What is a Trademark?
A trademark is any word, logo, label, device, symbol, numeral, or combination that identifies your goods/services.
2. Why is Trademark Registration Important?
- Because it gives "Exclusive rights"
- "Protection against misuse",
- "Brand value creation" and
- "Useful in licensing and disputes".
3. Can I Amend the Trademark After Filing?
Only minor changes allowed (spelling, address). Applicant cannot change the mark or goods/services substantially.
Rule 37 - Legal Scope Correction of clerical error or amendment, provided such amendment does not substantially affect the identity of the trade mark or the rights of parties.
Examples:
a) To add Tagline / Slogan - NOT allowed under Rule 37, because it changes the essential feature, the Examiner / Registry treats as new mark. The correct method/ option is to file fresh application with the tag line/ Slogan.
b) To change the Mark (logo, word, spelling, design) - NOT allowed - Not permitted examples: Logo redesign; or To change Font / artistic representation; or to modify spelling of Word mark (e.g. "KRYSTAL" → "CRYSTAL") or to add extra word. Only typing mistake allowed like Letter duplication due to error or scanning mistake by the Registry (rare cases).
c) To change the Applicant name (BEFORE registration) - Clerical error in applicant name - ✅ ALLOWED - ✔ Examples: if miss "Private" or Limited; or Spelling mistake in company name or Minor typo error in Individual name.
d) Applicant name change due to assignment/transfer - NO, Rule 37 Example: From Proprietor to Company; or One company → another company or Partnership → LLP. Its not a clerical mistake, rather its change of ownership. The Correct option is to file Form TM-P for assignment.
e) Applicant legal name changed (due to ROC change, marriage, etc.) - Limited ✔ Allowed only when: Entity is SAME and the applicant has clear documentary proof (ROC name change certificate / affidavit).
f) Address / Email / Mobile correction - ALLOWED - Address typo; or PIN code error; or Email ID mistake.
4. How many Trademark Class(es)
All the Goods/services are divided into 45 classes.
5. Can we file one application in Multiple Classes
Yes, you can file one application in multi-class.
However, it is advisable that application should be filed individually/separately , because if the Registry raised an abjection is one class in that case, the application filed in other classes will not be processed till the removal of objection in that particular class.
6. Types of Objections raised by Registry
Generally, the Registry raised two types of objections only; either Absolute grounds under Section 9 or Relative grounds under Section 11
7. Non-response to Objection
Application will be treated as abandoned, if reply is not filed within the specified time period. For the delay of filing, we have covered the detailed filing procedure, how to condone the delay in the next series of FAQs.
8. How to file Reply to Examination Report
You can upload the Reply to Examination report in the Miscellaneous filing corner in Comprehensive e-filing service portal or you can email it to parm.tmr@nic.in, with the subject "Reply to Examination Report". Our detailed filing and how to draft the reply to examination, is covered in the next series of FAQs.
9. Trademark Registration Cost for per mark per class
₹4,500 for individuals/startups/SMEs; ₹9,000 for others (if filed online).
10. Trademark Renewal Cost for per mark per class
It's same for all the persons/category i.e, INR 10,000/- (INR 9,000/- if filed online)
11. Can I Add Colour Claims Later After Filing a Trademark Application?
No. You cannot add a color claim later once the application is filed. This is because adding a color claim is treated as a substantial amendment, which is not permitted under the Trade Marks Act, 1999.
When you file a trademark in black & white, it is presumed to cover all colors.
However, when you add a color claim, you are restricting the scope of the trademark to a specific color combination. This is considered a material change, which is prohibited under Section 22 of the Trade Marks Act, 1999 & Rule 37 of Trademark Rules, 2017.
12. What If You Still Want Protection for a Specific Color?
You must file a fresh trademark application with: The mark in the desired color combination and the color claim mentioned in the application (if needed).
13. When Should You Use a Color Claim?
Use a color claim only when:
a) The brand is heavily dependent on a specific color (e.g., Jio blue, Airtel red);
b) Distinctiveness arises because of color; or
c) You want to enforce a very strict visual identity. Otherwise, a black & white application is better because it gives broader protection (covers all colors).
14. Importance of "Date of First Use"
The "date of first use" is crucial for:
a) Priority Rights - Under Section 34 of the Act, the prior user has superior rights over even a registered proprietor. An earlier use date can defeat someone else's registration.
b) Opposition Proceedings - If your mark faces opposition, your ability to prove use prior to the opponent is a decisive factor.
c) Infringement / Passing Off - Courts accord strong protection to prior users. (Ref: S. Syed Mohideem v. P. Sulochana Bai, SC)
d) Avoidance of Misrepresentation - Making a false claim of use is a punishable act under the Act and may attract cancellation or adverse orders.
Therefore, it is advisable to use the brand the first, make the documents by using such brand name like Invoice, or Newspaper advertisement, or social media Blogs/page or domain name invoice etc., and then apply for registration. If you select "Proposed to be used", in that case it is difficult for the Applicant to prove that the it has invested significant amount in their business or in case of opposition, "Propose to use" reflects that the applicant is new in this business line, and if the mark is rejected for the registration of trade mark then it will not affect the business of the applicant because the Applicant did not start the business yet.
15. Meaning of "Date of First Use"
Under Indian Trademark Law, "use" refers to bona fide commercial use of the mark in the course of trade, and not mere adoption or internal use.(Ref: Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., SC). The Date of First Use means the earliest date on which the mark was actually used in the market, including:
a) Sales of goods under the mark;
b) Advertising/publicity creating association with the mark; or
c) Online/offline marketing material;
d) Packaging, labels, invoices, brochures, catalogs; or
e) Website and social media showcasing the product/service under the mark.
This date is required to be declared in the trademark application (Form TM-A) when the mark is already in use along with the User Affidavit.
16. What Qualifies as Evidence of Use
To legally substantiate the declared date, the applicant should have at least one contemporaneous document clearly bearing the trademark and the date. Examples: Sales invoices/bills or GST filings or Purchase orders or Advertisements in print or online or Digital marketing material or Packaging or labels with timestamp or Website screenshots (with archive data) or Social media posts or Agreements, distributor invoices, e-commerce listings. The evidence should be credible, dated, and connected to the brand.
17. Risks of Incorrect Declaration
Declaring an incorrect "date of use" (even by mistake) can have serious consequences:
a) Application May Be Refused - Registry may treat the claim as unsubstantiated and refuse registration.
b) Opponents Can Challenge - Any discrepancy during opposition strengthens the opponent's case.
c) Vulnerability to Rectification - Even a granted registration can be cancelled for false use claim under Section 57 & Section 125.
d) Legal Penalty - Providing false information intentionally may attract consequences under Section 115 (false representation) and lead to potential legal exposure.
Hence, accuracy and supporting evidence are critical.
18. Opinion & Recommendations on "Date of Use" or "Proposed to be used"
Based on legal requirements and jurisprudence:
(A) If Evidence Exists - If the client has at least one dated document demonstrating genuine commercial use, they may safely declare the corresponding "use since" date.
(B) If Evidence Does NOT Exist - If the client cannot produce any contemporaneous evidence for the claimed date: Recommended approach: File the application as "Proposed to be Used", OR Declare only the earliest date for which evidence is available. This mitigates risk of future objections, oppositions, and rectification.
(C) Avoid Back-Dating - It is legally inadvisable to claim an earlier date without documentation.
(D) Maintain a Use File - Applicants should maintain a dedicated file (digital or physical) of all documents proving use for future litigation or submissions.
19. Can we use the name of trademark after filing
Yes, the applicant can use the name of trade mark after filing. However, it is advisable to mention "TM" after the trade name.
20. What to do if online marketing apps ask for a registration certificate when we try to register our brand with them
Yes, once you have applied for trademark registration, you can share the status/master data of your trademark status. Additionally, online marketing apps also verify it by sending a link to the registered email ID mentioned in the trademark application.
21. Registration Timeline
6-12 months if no opposition -
Detailed Stage-Wise Process
a) Preliminary Stage - Trademark Search (Optional but Recommended) Conduct a public search on the IP India website; Identify identical/similar marks under relevant classes; and Helps avoid objections under Section 11 (similar marks).
Time required: Same day.
b) Filing Stage - Application Filing (Form TM-A) Application may be filed: Proposed to be Used, or Use Since (with date of first use). Applicant receives an Application No. instantly. Status becomes "Marked for Exam".
Time required: Immediate.
c) Examination Stage - Allotment to Examiner - Application is queued for substantive examination.
Time frame: Usually 2-4 months after filing (sometimes faster for new filings).
d) Examination Report Issued The Examiner checks for: Absolute grounds under Section 9 or Relative grounds under Section 11 or Formality compliance or Classification issues or Label/colour description issues. Report may state: Accepted or Accepted with Conditions or Objected (common) or Formal Defects.
e) Deadline to Reply to Examination - Reply must be filed within 1 month from receipt/availability online. Evidence of use can be attached if objected.
f) Show Cause Hearing Stage - Hearing Notice - If examiner is not satisfied with the reply, a hearing is scheduled: Physical or virtual hearing before a Senior Examiner.
g) Hearing Outcome - Accepted for Publication or Refused or Adjourned or Conditional Acceptance. Important: Most marks get accepted at this stage.
h) Publication (Opposition Stage) - Publication in Trade Marks Journal - Once accepted, the mark is published in the Trademark Journal. Status becomes: Accepted & Advertised or Advertised Before Acceptance.
i) Opposition Period - Any third party can file Opposition (Form TM-O) within: 4 months from publication date (3 months + 1 month extension); If no opposition → mark proceeds to registration.
j) If opposition filed, then: Opposition Proceedings Timeline - Notice of Opposition filed, then the Applicant files Counterstatement (within 2 months); then Opponent files Evidence in Support (2 months) then Applicant files Evidence in Support (2 months). Opponent rebuttal evidence (optional).
k) Then Final hearing by Registrar - The Registrar passes a decision - Time frame: 1-3 years (average).
l) Registration Stage - Registration Granted - If no opposition or opposition is decided in applicant's favour: Registration Certificate is issued under Section 23. Status will show as Registered. And its valid for 10 years from filing date.
m) Post-Registration - You may use the symbol ® after registration. Ensure the trademark is used genuinely to avoid removal under Section 47.
The author is in practice since 2015, mainly in the field of Insolvency and Bankruptcy Code, Intellectual Property Rights, Companies Act, FEMA, SEBI, FSSAI, Legal Metrology, Bureau of Indian Standard, and also appearance before NCLT, NCLAT and High Courts. I am also enrolled with ICSI as an Associate member of Company Secretary in 2015 and also cleared the Limited Insolvency Examination conducted by Insolvency and Bankruptcy Board of India
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