INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
4.5 Use in Commerce Prior to Registration A trade mark can be registered on a “proposed to be used” basis. There is no requirement for the mark to have been used in India to make it eligible for registra - tion in India. If, however, use of the trade mark is not commenced for a period of five years, this can be a ground for removal of the trade mark from the Register of Trade Marks. 4.6 Consideration of Prior Rights in Registration A trade mark can be denied registration under Section 11 (1) of the Trade Marks Act 1999 if there is a likeli - hood of public confusion with an earlier trade mark, including the likelihood of association with the ear - lier trade mark, and if either of the following relative grounds (based on prior rights) applies: • the mark is identical to or comparable to an earlier trade mark in the same or a similar goods or ser - vices sector; or • the mark is similar to an earlier trade mark in the same or a similar goods or services sector. However, one way to overcome such objections on prior similar mark(s) in the Register of Trade Marks is by obtaining consent from the proprietor(s) of the cited mark(s). 4.7 Revocation, Change, Amendment or Correction of an Application A correction of any errors in the application or any amendment to the application is permitted by the Trade Marks Act 1999. However, no request for cor - rection/amendment shall be allowed which seeks sub - stantial alteration in the application for registration of a trade mark. 4.8 Dividing a Trade Mark Application The Trade Marks Act 1999 provides for the filing of a division application by the applicant. Following the division, each divided application is treated as a sepa - rate application, with the same filing date. A separate new serial number is allotted to each divided applica - tion and they are linked by cross-reference with the initial application.
for its restoration within one year from the expiration date. Circumstances and Processes for Renewal • Before expiry: The owner can apply for renewal anytime within six months before the expiration date by filing Form TM-R and paying the pre - scribed fee. • During grace period (six months after expiry): Renewal can still be filed within the six-month grace period after the expiry date by filing Form TM-R with an additional late renewal fee. • Restoration after grace period (within one year after expiry): If the trade mark has been removed from the Register due to non-renewal, the owner can file for restoration and renewal within one year from the expiration date by filing Form TM-R and paying both the renewal and restoration fees. 4.4 Application Requirements Any natural person, legal person or other organisation that claims to be the owner of a trade mark can apply for trade mark registration. The following information and documentation must be submitted in a trade mark registration application:
• the applicant’s name and address; • the state or country of incorporation; • a description of the trade mark; • a representation of the trade mark; • a list of the relevant goods or services; • a power of attorney;
• the date of first use – if use is claimed, an affidavit of use and documentary evidence must be filed electronically; • a statement of intention to use; • the official filing fee; • a priority claim and documents, where priority of an earlier application is claimed; and • if the applicant is not domiciled in this jurisdiction, a local service address. An agent filing to register a mark on behalf of the own - er requires a simple executed power of attorney. Multi- class trade mark applications are allowed in India.
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