How to Obtain International Trademark in INDIA

Understanding Trademark Classes and Descriptions in India

The description of trademark brand goods and services is like drawing a fence around your intellectual property. Too narrow, and you might not have enough protection; too broad, and your application could face rejection or future challenges.

Let's assume you're selling specialty coffee - simply writing "coffee" might be too broad, while "single-origin medium-roast Arabica coffee beans from Ethiopia's Yirgacheffe region" might be too restrictive for your business needs.

International Trademark Filing Strategies

The Madrid Protocol system allows you to file international applications based on your home country application.

Start with a comprehensive Indian trademark application that covers your actual business needs in one or more countries. Once the basic trademark application is filed in India then international trademark application can be filed claiming the first basic trademark application filed in India.

Common Pitfalls to Avoid while Filing Basic Trademark Form in India

The most dangerous traps often come from descriptions that are:

• Too vague ("computer services" instead of "software as a service for project management")

• Too broad ("all goods in Class 25" instead of specific clothing items)

• Missing critical terms that define your market position

• Not accounting for future business expansion

Grounds for Refusal under Section 9

The Absolute Grounds of Refusal are mentioned under section 9. The trademark may lack distinctiveness and be descriptive.

The questioned trademark may be in conflict with public order or morality under the absolute grounds for refusal. Under Section 9(1)(a), the trademarks may devoid of distinctive character, example: generic terms or common trade descriptions and refusal of brand marks that don't distinguish goods/services.

Grounds for Refusal: Relative Grounds

The filed brand trademark conflicts with earlier trademark right registered in India. This includes similarity or identity with existing registered trademarks.

Even if similar pending trademark application is filed with India, it might be ground of refusal and especially if trademark user date is claimed. The examination considers visual, phonetic, and conceptual similarity. For instance, if "SPARKLY" is already registered for cleaning products, "SPARKL" for similar goods might face refusal.

Grounds for Refusal: Procedural Grounds

These include technical issues in the filed international trademark application in India such as improper specification of goods and services.

The procedural ground might also include incorrect classification of the said applicable good and services, or missing documentation. The Indian Trademark Registry is particularly strict about the clarity and precision of goods and services descriptions to create level playing field for the trademark in the Indian market.