Overview
India has a long history of intellectual property protection – its Patents Act of 1970 and Patent Rules Act of 1972 are still binding, having been amended several times, most recently in 2005 and 2006. It is party to many major international treaties and organisations relating to IP, including the Paris Convention, the Agreement of Trade-Related Aspects of Intellectual Property Rights (TRIPS), the Madrid Protocol and the Patent Co-operation Treaty (PCT).
This means that international applications can be made, with respect to both trademarks and patents, to include Indian filings alongside those made in other countries that are signatories to either the Madrid Protocol or PCT.
Furthermore, India is one of a select group of 19 IP jurisdictions worldwide that have been appointed as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for the PCT.
Growth of India’s IP Landscape
Under the slogan ‘Creative India: Innovative India’, Prime Minister Narendra Modi has pledged to boost India’s standing in international intellectual property rights protection through the National Intellectual Property Policy (NIPP). This aims to overhaul and bolster the administration processes at the country’s Trade Mark and Patent Offices, and to increase the number of local applicants – currently, around three-quarters of applications for patents, for example, are made from international business.
Given the size of the market at hand, protracted time frame from file-to-grant in India is a process that can take up to 2 to 3 years for trademarks, and 5 to 6 years for patents – without accounting for the opposition or litigation procedures. This demonstrates that the holistic level of experience and quality service mirandah asia provide every step of the way counts for everything.
| Legal Basis | Patents Act 1970 effective 20 April 1972
Patents (Amendment) Act 1999 effective 1 January 1995 Patents (Amendment) Act 2002 effective 20 May 2003 Patents (Amendment) Act 2005 effective 1 January 2005 Patents Rules 1972 effective 20 April 1972 Patents (Amendment) Rules 2003 effective 20 May 2003 Patents (Amendment) Rules 2005 effective 1 January 2005 Patents (Amendment) Rules 2006 effective 5 May 2006 Patents (Amendment) Rules 2006 effective 16 July 2012 Patents (Amendment) Rules 2013 effective 23 April 2013 Patents (Amendment) Rules 2014 effective 28 February 2014 Patents (Amendment) Rules 2016 effective 16 May 2016 Patents (Amendment) Rules 2017 effective 1 December 2017 Patents (Amendment) Rules 2019 effective 17 September 2019 |
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| Major international treaties signed |
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| Costs of obtaining a patent | Please contact us at india@mirandah.com |
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| Average time to obtain a patent | 2 to 3 years from filing in India | ||||||||||||
| Official language for patent prosecution | English or Hindi | ||||||||||||
| Non-patentable subject matter |
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| Grace period for prior disclosure or sale | Public disclosure: First application not later than 12 months after the first disclosure
Public working (use): Prior working in India, 12 months before the priority date |
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| Major prosecution events |
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| Filing and prosecution procedures | Stage 1: Filing Stage 2: Publication & Pre-Grant Opposition (if any) Stage 3: Examination Stage 4: Grant Stage 5: Post-Grant Opposition (if any) Stage 6: Renewal/ Annuity |
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| Extension of office action deadlines | 3 months | ||||||||||||
| Necessary document for filing | A copy of PCT publication or Specification (in English or Hindi) Verified English translation of PCT publication / specification (if applicable) Power of Attorney (Form 26) Assignment/Inventor(s) Executed Form1 (may be submitted later) PCT IB304 or Certified copy of priority document (may be submitted later) Verified English translation of priority document (if applicable, may be submitted later) |
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| Pharmaceutical Data Exclusivity Laws | Not available | ||||||||||||
| Search and Examination | Indian patent office conducts Substantive Examination on its own | ||||||||||||
| Opposition term | Pre-Grant: After publication of the application and any time before the grant of patent Post-Grant: One year from the date of publication of grant |
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| Term of patent protection | 20 years | ||||||||||||
| Patent term extension | Not available | ||||||||||||
| Restoration of lapsed patent | Within 18 months from the date of lapse | ||||||||||||
| Parallel Imports | Available | ||||||||||||
| Other forms of patents (e.g. Petty/innovation patents) | Patents of Addition | ||||||||||||
| Useful links | www.mirandah.com www.ipindia.nic.in |
| Infringement offence | Available |
| Specialized courts for IP | Not available. However, Intellectual Property Appellate Board (IPAB) is available to hear appeal against decision made by the Intellectual Property Office. |
| Outline of the enforcement steps | Notice of Cease and Desist Infringement lawsuit |
| Relief against groundless threats | Available |
| Declaration of non-infringement | Available |
| Preliminary injunctions | Available |
| Time frame for various legal actions | Revocation – 1 to 2 years Infringement proceeding – 2 to 3 years |
| Alternative Dispute Resolution | Arbitration Conciliation |
| Availability of damages and other relief for infringement | Injunction Account of profits Seizure, forfeiture or destruction of goods found to be infringing without payment of compensation |
| Civil Remedies | As per above |
| Criminal Sanctions | Not available |
| Legal Basis | Trade Marks Act 1999
Trade Marks Rules 2017 |
| Major international treaties signed |
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| Cost of obtaining a straightforward registration | Please contact us at india@mirandah.com |
| Average time to obtain a trademark | 24 to 36 months |
| Official language of trademark prosecution | English or Hindi |
| Registrable marks | Any distinctive device, monograms, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof, sound marks when represented in conventional notation or described in words by being graphically represented. |
| Filing and prosecution procedures | Stage 1: Filing Stage 2: Examination Stage 3: Advertisement Stage 4: Opposition (if any) Stage 5: Registration Stage 6: Renewal |
| Number of classes | 45 (Nice Classification) |
| Multiple class filing | Available |
| Filing of series marks | Available |
| Necessary document for filing | Power of Attorney Priority document (where priority is claimed) |
| Common objections | Descriptiveness Non-distinctiveness Prior conflicting rights |
| Extension of office action deadlines | Available |
| Opposition term | 4 months |
| Term of trademark protection | 10 years (renewable) |
| Restoration of lapsed trademark | Within 6 to 12 months from the expiry of the last registration |
| Parallel Imports | Available |
| Minimum period of use to avoid non-use cancellation action | 5 years (continuous) |
| Useful links | Trademark Agents and Attorneys in India www.ipindia.nic.in |
| Infringement offence | Available |
| Specialized courts for IP | Not available. However, Intellectual Property Appellate Board (IPAB) is available to hear appeal against decision made by Intellectual Property Office. |
| Outline of Enforcement Steps | Civil Infringement pursuant to the Trade Marks Act, 1999 Passing-offQuasi-Criminal Falsifying and false application of a trademark(Counterfeiting) False application of trade description Sale, exposure and possession for sale of counterfeit goods or services False representation of a mark as a registered mark |
| Relief against groundless threats | Available (Summary Judgment) |
| Declaration of non-infringement | Not available |
| Preliminary injunctions | Available |
| Time frame for various legal actions | 12 to 36 months |
| Alternative Dispute Resolution | Arbitration Conciliation Mediation |
| Availability of damages and other relief for infringement | As per below |
| Civil remedies | Interlocutory / permanent injunction Damages or account of profits in lieu of damages Order for delivery-up of infringing labels and marks for destruction or erasure |
| Criminal Sanctions | For Falsifying/false application of trademark or trade description or for sale, etc. of counterfeit goods Minimum imprisonment for 6 months term, extendable up to 3 years with a minimum fine go RS. 50,000 (USA 1110) extendable up to Rs. 200,000 (USD 4450)False representation of a mark as a registered trademark Imprisonment up to 3 years or monetary fine or both |
| Others | Enhanced penalty on second or subsequent conviction which include imprisonment and fine |
India's IP landscape?
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