Requirements
TRADE MARKS - Traditional and Non-Traditional Marks
A. Name, address and nationality of the Applicant;
B. Representation of the trademark;
C. List of goods and services;
D. List of Classes;
E. Date of first use of the mark in India, if any (alternatively, the mark may be filed and registered on the basis of intent to use);
F. Translation, Transliteration and Language of any non-English/ non-Hindi characters or words in the mark;
G. Priority application number, country and date, if any;
H. Certified copy of priority documents (with English translation), (may be filed within 2 months of Indian filing at no extra costs).
I. Power of Attorney
COLLECTIVE TRADEMARK APPLICATION
A. Name, address and nationality of the Applicant;
B. Representation of the trademark;
C. List of goods and services;
D. List of Classes;
E. Date of first use of the mark in India, if any (alternatively, the mark may be filed and registered on the basis of intent to use);
F. Translation, Transliteration and Language of any non-English/ non-Hindi characters or words in the mark;
G. Priority application number, country and date, if any;
H. Certified copy of priority documents (with English translation), (may be filed within 2 months of Indian filing at no extra costs).
I. Power of Attorney;
J. A statement of case setting out the grounds on which the applicant relies in support of the application;
K. Regulations governing the use of the mark (with English Translation). The regulations must specify:
1. the name of the association of persons and their respective office addresses;
2. the object of the association;
3. the details of members;
4. the conditions for membership and relation of each member with the group;
5. the persons authorised to use the mark and the nature of control the applicant exercise over the use of the collective mark;
6. the conditions governing use of the collective mark, including sanctions;
7. the procedure for dealing with appeals against the use of the collective mark;
8. such other relevant particulars as may be called for by the Registrar.
TRADEMARK OPPOSITION
• List of corresponding trademark registrations/ pending applications in all countries (including word mark, figurative mark, device mark etc containing the mark in all countries and classes with registration/ application numbers);
• The date of adoption of the mark;
• The date of first use of the mark (anywhere in the world) and subsequent foreign use, publicity etc;
• List of countries where the mark has been used;
• Details of any pending/ registered Indian Trademark Application except those filed by us;
• Details of use of trademark in India, if any including date of first use;
• Details of Advertisement of trademark in India, if any;
• List of TV Channels/ Newspapers/ Magazines/ International Publications etc where the mark has been advertised anywhere in the world, if any;
• Details of any websites/ domain names similar to the mark owned by your Company;
• List of countries where the mark has been held to be well-known;
• Brief information on applicant company (like nature of business, year of formation, countries of operation, particular information about the trade mark which makes the mark well-known etc.);
• Other information regarding the trademark adoption, use, advertisement, protection etc.
DESIGN APPLICATION
A. Name, address and nationality of the Applicant;
B. Name of the article in respect of which the design is to be applied;
C. International Class as per Locarno Classification;
D. Statement of Novelty stating the features in which novelty is claimed;
E. Different views of the article (such as front, back, side, top, bottom, perspective etc.);
F. Priority application number, country and date, if any;
G. Power of Attorney (may be filed within 2 months at no extra costs);
H. Certified copy of priority documents, if any (with English translation), (may be filed within 3 months; no extra costs).
COPYRIGHT APPLICATION
A. Name, address and Nationality of the Applicant(s) and Author(s) (if the author is deceased, the date of his decease).
B. Title of the work.
C. Year and Country of First Publication.
D. Year and Country of Last Publication.
E. Year and List of all countries in which the work has been published subsequently.
F. Name, address and nationality of all the publishers.
G. Five copies of the work
H. Power of Attorney (may be filed later; no extra costs).
PCT NATIONAL PHASE APPLICATION
The PCT National Phase application has to enter Indian National Phase within 31 months of the date of earliest priority date.
Minimum Documents Required (required before 31 months)
» Name, address and Nationality of Applicants and inventors.
» PCT Application number.
» Priority application number, date of filing and country.
All this information is available in first page of WIPO International Publication. Hence, you may send a copy of the same or we may download a copy from WIPO's website.
» Original Patent specification, claims and drawings in English. (Preferably send by email)
» Amended claims, if any, filed under Art. 19 or 34 of PCT. (Preferably send by email)
Complete Filing Requirements (may be filed after 31 months)
⇒ A copy of
A. International Publication,
B. Form PCT/IB/304,
C. Proof of Right to file Patent (like Form-1 signed by inventors, Certified Copy of Assignment Deed or Employment contract),
D. International Search Report,
E. IPRP, and
F. International Preliminary Examination Report, if any.
⇒ Power of Attorney (may be filed later, no late fee)
⇒ Following information (as far as available) regarding the application filed in other countries, if any:
A. Name of the Country
B. Date of Application
C. Application No.
D. Status of the application
E. Date of publication
F. Date of grant
CONVENTION PATENT APPLICATION
The Indian application has to be filed within 12 months of first filing in convention country.
Minimum Documents Required (required before 12 months)
» Name, address and Nationality of Applicants and inventors.
» Priority application number, date of filing, country, title of invention and applicant in convention country.
» Patent specification, claims and drawings in English. (Preferably send by email).
Complete Filing Requirements(may be filed after 12 months)
» Certified copy of Priority documents (within 6 months).
» True Translated copy of complete specification filed in convention country, if original application was not in English (within 6 months).
» Proof of Right to file Patent (like Assignment Deed or Employment contract or Form-1 signed by inventors): within 6 months.
» Power of Attorney (may be filed later; no late fee).
» Following information (as far as available) regarding the application filed in other countries, if any (If filed later than application, late fee @ USD 70 per month applicable)
A. Name of the Country
B. Date of Application
C. Application No.
D. Status of the application
E. Date of publication
F. Date of grant
PATENTS - FOREIGN FILING LICENSE
» Title of the invention.
» Countries in which the proposed applications are to be filed (we usually mention all PCT member countries and all convention countries by default).
» Name, Address and nationality of the assignee, if any.
» Name, address and nationality of the Indian inventors (along with their Indian Addresses).
» Power of Attorney from the Indian inventors in original mentioning their Indian address (format is enclosed, simple signatures needed, legalization/ notarization not needed).
» Name, address and nationality of any non-Indian inventors.
» Complete specification (we may file as much information as is available, preferably if claims and drawings are available, the same should be filed to expedite the process).
TRADEMARK INFRINGEMENT/PASSING OFF SUIT
» Detailed company profile & history.
» Significance of the trademark.
» Product range/product profile/trade mark profile.
» Complete catalogue/brochures/price list.
» Year of adoption and user of the trade mark.
» Year wise sale and advertisement figures of the products under the trademark since the year of adoption of the trade mark.
» Copy of 2-3 bills and advertisements of every year wherein the trade mark is mentioned, since the year of the adoption of the trade mark.
» Copy of some client/ customer correspondence and details of clientele.
» Some information about your tie ups/ arrangements/ technology details.
» Countries of export/import and where your business activities exist.
» Infringer's details including List of persons, their proprietor/ partners/ owners/ or any other known information with:
› address
› product/ services details
› Business activities
› Estimated/ expected loss by them
› Area of Business
› Brochures/pamphlets/labels/photographs and other business info
› Any prior relationship with infringer
› Any prior proceedings between the parties including the forum, case number, status, next hearing date, copy of orders therein and pleadings thereof.