Before filing an application, we review the proposed trademark and the manner in which it will be used. This includes assessing:

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• whether the mark is sufficiently distinctive;

• whether it is descriptive or generic in relation to the relevant goods or services;

• whether protection should be sought for a word mark, logo, tagline or a combination of these;

• the person or entity that should own the trademark;

• whether the application should be filed on a proposed-to-be-used basis or with a claim of prior use; and

• whether separate applications may be appropriate for different versions of the mark.

This preliminary assessment helps identify potential legal or commercial concerns before the business commits substantial resources to branding, packaging, product development or marketing.

A trademark search helps evaluate whether an identical or similar mark has already been applied for or registered in India.

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DB Legal conducts searches of the Indian Trade Marks Registry database for identical, similar and phonetically comparable marks in the relevant classes. We review the results in the context of the proposed goods or services and advise on the principal risks associated with adopting and registering the mark.

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Our search and clearance services may include:

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• searches for word marks, names and taglines;

• searches for logos and device marks;

• phonetic and similarity searches;

• review of existing applications and registrations;

• assessment of potentially conflicting marks;

• review of the status and coverage of relevant registrations; and

• recommendations on filing, modification or selection of an alternative mark.

A trademark search cannot guarantee registration or eliminate every possibility of a third-party claim. It nevertheless provides an informed basis for deciding whether to adopt, use and seek protection for a proposed brand.

Trademark protection is granted for specified goods and services falling within particular classes. Selecting the correct classes and preparing an appropriate description of goods or services are therefore important parts of the filing strategy.

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We assist clients with:

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• identifying the classes relevant to their present business;

• considering classes that may be relevant to planned business expansion;

• preparing an accurate specification of goods and services;

• avoiding specifications that are unnecessarily broad, vague or commercially irrelevant; and

• deciding whether to file single-class or multi-class applications.

The filing strategy is tailored to the client’s business model, brand-usage plans and commercial priorities.

Once the proposed trademark, applicant, classes and specification have been finalised, DB Legal assists with preparing and filing the trademark application before the Indian Trade Marks Registry. Our filing services include:

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• verifying the applicant’s particulars and ownership of the mark;

• preparing the description and representation of the trademark;

• preparing the specification of goods or services;

• advising on proposed use and prior-use claims;

• assisting with user affidavits and supporting documents, where prior use is claimed;

• advising on convention-priority claims, where applicable;

• preparing the required authorisation documents;

• filing the application and providing the filing acknowledgement; and

• monitoring the application after filing.

We also advise clients on filing related marks, including separate applications for a brand name, logo, tagline or material variations of a mark where commercially appropriate.

The Trade Marks Registry examines an application to determine whether it complies with applicable legal requirements and whether any grounds for refusal arise. Objections may relate to distinctiveness, descriptiveness, similarity with earlier marks or other statutory restrictions. If an examination report is issued, DB Legal can:

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• analyse the objections raised by the Registry;

• advise on the strength of the application and available responses;

• prepare and file a written response to the examination report;

• compile supporting legal submissions and evidence of use;

• advise on disclaimers, limitations or amendments, where appropriate; and

• represent or assist the applicant at a hearing before the Trade Marks Registry.

Our approach is to present a clear response based on the nature of the mark, the client’s business, its use of the mark and the applicable legal position.

If an application is accepted, it is published in the Trade Marks Journal, following which third parties have an opportunity to oppose the application within the prescribed period.
 

We monitor the progress of the application and advise clients if an opposition or other procedural issue arises. Where an application proceeds without opposition, or an opposition is resolved in the applicant’s favour, the mark may proceed to registration.

Following registration, we can assist with:

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• reviewing and maintaining registration records;

• trademark renewals;

• recording changes in the proprietor’s name or address;

• trademark assignments and ownership changes;

• licensing and permitted-use arrangements; and

• trademark-related due diligence in investments, acquisitions and corporate restructurings.

Foreign individuals and entities may apply for trademark registration in India. DB Legal assists international businesses seeking to protect their brands before entering or expanding in the Indian market. Our assistance includes:

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• conducting India-specific trademark searches;

• advising on Indian classification and filing requirements;

• coordinating trademark filings with the client’s international intellectual property strategy;

• considering convention-priority claims, where available;

• preparing and filing applications in India;

• responding to examination objections and Registry communications; and

• advising on trademark ownership, licensing and use by Indian subsidiaries, distributors, franchisees or joint-venture companies.

Our broader corporate and commercial practice also enables us to consider how trademark ownership interacts with India-entry structures, joint ventures, distribution arrangements, franchise agreements, technology licences and M&A transactions.