4 Tips For Australian Businesses Searching For Indian Trade Marks
Emily Young
India is the world’s fastest growing major economy, making it a great place to do business. As Australia’s fifth largest export partner and tenth largest trading partner, many Australian businesses are already trading with India. It is important that before you trade with India, you ensure you are not infringing on any Intellectual Property (IP) in India. This article sets out four tips for searching for Indian trade marks.
1. Know India’s Trade Mark System
Before searching for Indian trade marks, it can be useful to understand some of India’s basic trade mark rules and procedures.
For example, similar to Australia, India has a ‘first to use’ rule for trade mark rights, meaning that the first person who can show use of a trade mark will have more rights than a later trade mark application. Additionally, registered trade marks in India will have more rights than unregistered trade marks.
It is also important to note that trade mark registration in India can take several years, and the process of trade mark enforcement in India is much slower compared to Australia. However, the registration and filing costs are much lower in India than in Australia.
2. Search in Both of India’s Languages
English and Hindi are India’s official languages. You will need to consider both when searching for Indian trade marks. Any trade mark with a word element will need to be checked for availability in the relevant characters, translations and transliterations. Even if the words do not sound the same in both languages, it might be considered an infringement if the idea behind the trade mark is the same.
3. Use India’s Search Tool
In India, the Controller General of Patent Designs and Trademark is responsible for trade mark registrations. On their website, you can conduct a thorough trade mark clearance search. You can search by either:
| Search Function | Outcome |
| Wordmark | The ‘wordmark’ feature of the search tool is how you search for trade marks with a word element. It is filtered by three conditions: ‘start with’, ‘contains’ and ‘match with’. ‘Match with’ will display all the entries in the data base with the words you are searching. Once you have inputted your words, you will need to select the class of goods and services you are searching for. The list of 45 classes your trade mark will fit in can be found here. Once you have selected your class, you will be able to begin your search. |
| Vienna Code | India’s search tool has a Vienna Code search feature. India is party to the Vienna Code, which is an international classifications system for figurative elements of trade marks. This is a useful tool for non-word trade marks. For example, category 5 of the Vienna Code corresponds to trade marks with plants. More specifically, category 5.1 corresponds to trees and bushes, and category 5.1.4 corresponds to bushes or trees without leaves. When searching for visual trade marks, this is a useful way to conduct a trade mark search. A full list of Vienna Code search classification categories can be found here. |
| Phonetic | Similar to the wordmark search function, the phonetic search function allows you to search for words by classification. However, this function produces results for phonetically similar words. For example, if you search for ‘flower’ under class 1 (which includes flower preserves), results will include trade marks for ‘flora’, ‘fleur’, ‘fulora’ and more. This is a useful way of finding similar trade marks. |
4. Conduct an International Trade Mark Search
India is party to the Madrid System for the international registration of trade marks. The Madrid System is a way of filing one trade mark application for registration in up to all 124 participating countries. Because India is party to this system, the World Intellectual Property Organisation’s Global Brands Database is another useful search tool when conducting a trade mark search in India. Similar to India’s own trade mark search tool, the Global Brands Data Base allows you to search for identical or similar words based on the class of goods and services. You can also filter by source, image, type, trade mark status, country of origin and the year of the application.
Key Takeaways
Your intellectual property is an important business asset. If you plan on trading in India, it is essential that you:
- understand India’s trade mark rules;
- search in both Hindi and English; and
- know where to search.
If you need assistance with conducting a trade mark search in India or applying for an overseas trade mark, get in touch with our experienced trade mark lawyers on 1300 657 423 or by filling out the form on this page.
Frequently Asked Questions
If you plan on trading in India, protecting your trade mark in India is a great way to protect your brand and prevent other businesses from making, using or selling your product. Registering your trade mark also helps prevent you from infringing on someone else’s trade mark.
You can register your trade mark in India by either applying directly to the Controller General of Patent Designs and Trademark, or applying through the World Intellectual Property Organisation (WIPO) using the Madrid Protocol. The Madrid Protocol is an international treaty that lets you apply for several international trade marks in one application.
The cost of registering your trade mark in India will depend on which method you use to register your trade mark in India and the specifics of your application, such as how many classes of goods and services you are applying under. The cost of registration is much cheaper than in Australia. However, it is also a much longer process.