Trademarks
Trademark work sits at the core of Wayver's practice. We advise Indian businesses, foreign brand owners and overseas counsel on protection in India, from clearance and filing through to examination, hearings, opposition and renewal.
Two routes into India
Almost every trademark matter that reaches us arrives by one of two paths. Either a brand needs protecting in India and nothing has been filed yet, or an international registration already designates India and the Registry has raised an objection to it.
The work differs, and so does the urgency. A filing can wait a week; a provisional refusal usually cannot.
Where to Start
Trademark Registration in India
Searches and clearance, filing strategy, examination responses, Registry hearings, opposition and portfolio management under the Trade Marks Act, 1999. For Indian businesses protecting a brand at home, and for foreign companies entering the market.
Madrid Protocol Provisional Refusals
Indian counsel for international registrations designating India that have met a provisional refusal. Time sensitive: the response period is short and runs from the date of the Registry's communication rather than the date you receive it.
The national route
A national application is filed directly with the Indian Trade Marks Registry. It is the ordinary route for Indian businesses, and often the better route for a foreign company whose interest is India specifically rather than a spread of countries.
Filing nationally gives the widest control over how the specification is drafted. Because the wording is prepared with Indian examination practice in mind from the outset, it tends to attract fewer objections of the kind that arise when a specification written for another registry is carried into India unchanged.
A foreign registration does not extend to India of its own force. That is not the same as having nothing: rights follow use, and Indian courts have recognised that the reputation of a well known mark can cross borders ahead of the trade itself. Filing here simply removes the argument.
The Madrid route
The Madrid Protocol allows the holder of a trademark to seek protection in multiple countries through a single international application administered by WIPO, designating each country of interest. India has participated since 2013, both as a country that can be designated and as an office of origin for Indian applicants expanding abroad.
Designating India does not shortcut Indian examination. The Registry examines the mark as it would any national application, and where it raises objections it issues a provisional refusal. That refusal has to be answered in India, within a short period, by an agent with an Indian address for service.
This is the point at which most international holders need local counsel, and it is a substantial part of what we do.
What the Work Involves
Clearance
Availability and knockout searches before anything is filed, so the decision to proceed is an informed one rather than a hopeful one.
Prosecution
Examination responses, provisional refusal replies, show cause hearings and the procedural steps that carry an application through to acceptance.
Contentious matters
Opposition, both bringing and defending, along with rectification and cancellation where a mark should not remain on the Register.
Portfolio
Renewals, assignments, licences and recordals, with deadlines docketed so they are met rather than discovered.
Acting for foreign counsel
Instructed by overseas attorneys and IP firms as their Indian agent, with fixed estimates and reporting written to pass straight to the client.
Enforcement
Advice on infringement and passing off, cease and desist correspondence, and coordination where action is needed across more than one jurisdiction.
Why Wayver
Trademarks are the core practice rather than a service line. Whichever route brought a mark to India, the work that follows is largely common to both, and it is handled by the same people.
- Both routes in one place. National filings and Madrid designations handled by the same firm, so the choice between them is advised on rather than assumed.
- Built for overseas counsel. Fixed estimates, English reporting and deadline tracking in the form foreign attorneys need.
- Japanese-language support. Enquiries from Japan are handled through our Japan Desk.
- Connected to the wider IP practice. Assignments, recordals and brand-use arrangements sit alongside the filing work rather than apart from it.
Disclaimer
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