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Tag: Legal Compliance

  • Trademark Portfolio Management: Audit Against The Updated Nice Classification

    A trademark is more than just a logo or brand name; it represents a company’s reputation, customer trust, and long-term value. Effective trademark portfolio management helps businesses keep their trademarks organized, protected, and aligned with their growth.

    Using the latest Nice Classification system helps companies to make sure their trademarks cover the right goods and services. Regular reviews can identify gaps, strengthen protection, and support future expansion while reducing legal risks.

    TMWala helps businesses manage their trademark portfolios through classification reviews, regular trademark audits, timely renewals, and strategic guidance.

    Understanding The Updated Nice Classification

    The Nice Classification is a system that puts goods and services into 45 groups. These groups are called classes. Classes 1 to 34 are for goods. Classes 35 to 45 are, for services. When people want to trademark a name or logo, they must figure out which class or classes it belongs to. This is very important because trademark protection only works for the goods or services that are listed.

    The Nice Classification gets updated by WIPO as new things come out. This means it now includes technologies, digital services and ways to help the environment. These updates make it clearer and easier for businesses to describe what they do and what they sell.

    When the Nice Classification changes it does not automatically change what is already registered.Businesses should still look at what they have and think about if they need to make any changes. The Nice Classification is important for businesses to understand so they can make sure they are doing everything correctly.

    For more information visit: https://nclpub.wipo.int/enfr/pdf-download.pdf?lang=en&tab=class_headings&dateInForce=20260101

    Why Trademark Portfolio Management Matters

    Many organizations register trademarks once and rarely revisit them. However, trademarks should be regularly managed as valuable brand assets that evolve alongside the business.

    An effective trademark portfolio management strategy enables businesses to:

    • Maintain accurate trademark records.
    • Identify trademarks that require trademark renewal.
    • Review whether products and services remain correctly classified.
    • Support future brand expansion initiatives.
    • Strengthen legal protection against infringement.
    • Reduce unnecessary registration costs.
    • Align trademark registrations with changing business objectives.

    Without regular reviews, companies may discover that new business activities are not adequately protected or that valuable trademarks have become vulnerable due to administrative oversights.

    Conducting An Intellectual Property Audit

    A company needs to check its property regularly. This is called an intellectual property audit. It looks at things like trademarks, patents and copyrights. The audit also checks domain names and other related assets.

    For trademarks the audit checks if the current registrations are still good for the company’s needs.

    To start a trademark audit, we need to make a list of all the registered trademarks. This list includes things, like registration numbers,date of filing, appropriate office of registry, and their renewal ate. The audit checks who own the trademarks and what goods or services they cover.

    The next step is comparing each registration with the latest Nice Classification. Businesses should evaluate whether existing descriptions remain accurate and whether newer classifications better reflect their commercial activities.

    The audit should also identify:

    • Trademarks that are no longer used in commerce.
    • Recently launched products or services lacking trademark protection.
    • Markets targeted for international registration.
    • Potential gaps requiring filings in additional classes.
    • Pending applications that may require updated specifications.

    This review allows organizations to prioritize filings and maintain an efficient trademark portfolio.

    Reviewing Trademark Classes

    To select an appropriate trademark class is one of the most critical decisions during the registration of trademark. Filing in the wrong class may delay registration or leave important goods and services without adequate protection.

    Businesses should regularly compare and check their commercial activities with the descriptions provided in the current Nice Classification.

    Conducting a careful trademark class search before filing new applications helps determine which classes best correspond to the intended goods or services. Many trademark offices also provide online classification tools, and a trademark class finder can assist applicants in identifying suitable categories based on product descriptions.

    Identifying Additional Classes For Business Growth

    As organizations diversify, existing trademark registrations may no longer provide sufficient coverage. Launching complementary or additional products, often requires registration in new class.

    Adding correct classes before major business expansion initiatives helps prevent competitors from registering similar marks for related products or services. It also strengthens the company’s position when entering licensing agreements, attracting investors, or expanding into foreign markets. A well-planned filing strategy for trademark ensures that the protection grows alongside the business.

    Using Trademark Class Search Tools Effectively

    Conducting a comprehensive trademark search is an important primary step before filing any new application. Beyond identifying the correct class, businesses should also search existing trademark databases to evaluate potential conflicts with earlier registrations.

    Most national and regional trademark offices provide searchable databases, allowing applicants to review existing registrations, compare specifications, and assess whether similar marks already exist within relevant classes. So using a reliable trademark class finder improves filing accuracy, and supports better long-term brand portfolio management.

    Trademark Monitoring: Protecting Your Brand Proactively

    Trademark registration is just the start of brand protection. To detect all possible conflicting trademark applications and improper use of similar marks, businesses should adopt an effective trademark monitoring strategy. Monitoring allows businesses to see if someone is using a trademark that is too similar to their own.

    Trademark monitoring generally consists of checking or looking at new trademark applications and online platforms where counterfeit or infringing products may appear. Many companies subscribe to professional watch services that provide information and alerts when similar trademarks are applied.

    Trademark Renewal: Keeping Registrations Active

    The timely renewal of trademarks is critical to maintaining registrations and protecting valuable brand assets. Because renewal requirements differ from one jurisdiction to another, businesses should monitor renewal deadlines and provide evidence of ongoing use when required. Renewal also presents a chance to review the portfolio and ensure new filings are in line with the most current Nice Classification. Regular portfolio reviews help ensure trademark protection is consistent in all markets.

    Supporting Brand Expansion With The Right Trademark Strategy

    Businesses expanding into new products, services, or international markets should review their trademark protection regularly. Since trademark rights are territorial, registration in one country does not protect a brand in others. Aligning trademark filings with business growth helps protect brand value and supports confident market expansion.

    The Role Of Brand Portfolio Management

    Effective brand portfolio management involvesmaintaining a proper list of trademarks. It requires strategic planning to ensure that every trademark contributes to the organization’s business objectives.

    A well-managed portfolio typically includes:

    • Core brand names.
    • Product trademarks.
    • Service marks.
    • Logos and design marks.
    • Slogans.
    • Defensive registrations.
    • International trademark registrations.

    Businesses should regularly evaluate whether older registrations remain commercially valuable and whether newly developed brands require protection. Removing unnecessary registrations while investing in strategically important trademarks can make portfolio management more efficient and cost-effective.

    Strengthening Legal Protection Through Regular Audits

    One of the greatest advantages of doing periodic audits is improved legal protection. Regular trademark audits help businesses strengthen their legal protections by identifying gaps in coverage and lowering risks of infringement. They also make transactions like mergers, licensing, and investments easier to conduct by showing proper management of trademark rights. Accurate records help protect and enforce valuable brand assets.

    Protecting Intellectual Property Rights

    Intellectual property rights play an important role in competitive advantage. Trademarks differentiate companies from one another and assist in identifying the origin of the goods and services provided by the company.

    Trademark protection needs to be developed along with the development of a business. Periodic reviews of the trademark portfolio guarantee that the trademark is consistent with the ongoing business and there are no problems with trademark protection in the future.

    Best Practices For Auditing Your Trademark Portfolio

    Businesses can strengthen their trademark portfolio management strategy by following these best practices:

    • Conduct an intellectual property audit at regular intervals.
    • Review all registered trademarks against the latest Nice Classification before filing new applications.
    • Perform a comprehensive trademark class search for every new product or service.
    • Use an official trademark class finder to identify appropriate classifications.
    • Consider filings in additional classes when launching new products or services.
    • Maintain a centralized calendar for trademark renewal deadlines.
    • Implement continuous trademark monitoring to detect conflicting applications.
    • Keep ownership, licensing, and assignment records up to date.
    • Align trademark strategy with longterm business expansion and brand expansion goals.
    • Seek professional trademark advice for complex domestic or international filing strategies.

    Conclusion

    The updated Nice Classification gives organizations a chance to evaluate and enhance their trademark portfolios. Audits, correct classification, timely renewals, and surveillance will allow companies to make sure that their trademarks remain protected in line with the company’s requirements.

    TMWala helps organizations manage their trademark portfolios through providing trademark class reviews, portfolio audits. Organizations can mitigate risks, grow their business, and preserve the value of their brands through adopting a proactive approach.

    FAQs

    1. What is trademark portfolio management?
      It is the process of managing, protecting, and maintaining a company’s trademark assets.
    2. Why is trademark portfolio management important?
      It helps businesses keep trademarks protected and aligned with their growth.
    3. What is the Nice Classification?
      It is a system used to classify goods and services for trademark registration.
    4. How many classes are in the Nice Classification?
      There are 45 classes covering goods and services.
    5. Why should businesses audit their trademark portfolio?
      Audits help identify gaps and strengthen trademark protection.
    6. Do Nice Classification updates change existing trademarks?
      No, updates do not automatically change existing registrations.
    7. Why is trademark monitoring needed?
      It helps detect similar marks and possible infringement risks.
    8. When should trademarks be renewed?
      Trademarks should be renewed before their expiry deadlines.
    9. Can one trademark registration protect all products?
      No, protection depends on the registered goods and services classes.
    10. How can TMWala help with trademark management?
      TMWala assists with audits, classification reviews, renewals, and strategic trademark support.

  • InACan: The Indian Startup Mixing Innovation, IP, and Convenience in a Can

    What if you could open your fridge and pull out a perfectly crafted cocktail? No fuss of a bartender, muddler, measuring, or mess? That’s exactly the experience InACan set out to create.

    The story begins with Sameer Mirajkar and Viraj Rajendra Sawant, two friends who wanted to break down the barrier between everyday life and premium cocktails. For them, it wasn’t just about alcohol; it was about giving people a slice of the “bar experience” wherever they were, be it at home, on a road trip, or at a house party.

    But vision alone wasn’t enough. To bring it to life, they needed a master of the craft. Enter Varun Sudhakar, a veteran of the craft whose hands had shaped countless cocktails behind some of the country’s busiest counters. Together, the trio didn’t just build a product; they built a journey. Nine months, 15,000 kilometres of road travel, and endless hours of experimentation later, they had their answer: InACan.

    Intellectual Property (IP) Portfolio

    The brand launched with five variations of cocktails, packaged in sleek cans that felt just as premium as the drinks inside. From Mojitos to Cosmopolitans, each sip promised the same balance and consistency that you’d expect from a high-end bar. And perhaps that’s why InACan instantly stood out as a carefully engineered experience.

    And when you’re building a brand in such a competitive space, IP protection isn’t a luxury, but it’s survival. InACan understood this from the beginning and moved quickly to secure its most valuable asset: its name.

    Here’s what their trademark portfolio looks like:

    Word MarkApplication No.ClassDate of ApplicationProprietorStatusValid UptoDescription
    INACAN48526213206/02/2021Sameer MirajkarRegistered06/02/2031Ready-to-drink non-alcoholic beverages
    INACAN48526223306/02/2021Sameer MirajkarRegistered06/02/2031Ready-to-drink alcoholic beverages

    This dual-class filing is strategic genius. Mocktails (Class 32) and alcoholic cocktails (Class 33) are both protected by it. Therefore, InACan’s brand identity is protected regardless of whether they are selling to partygoers or teetotallers.

    Beyond trademarks, the packaging design, those instantly recognisable cans are another soft IP that adds to their brand value. While not formally registered as a design yet, it’s an area ripe for protection in the future. And let’s not forget their semi-automatic can seamer machine. If unique enough, this innovation could even be eligible for a design registration or utility patent.

    Why does this matter? Because in beverages, customers buy the brand as much as they buy the liquid inside. If someone else launches “Ina-Can” tomorrow with confusingly similar packaging, the damage would be irreparable without strong IP protection.

    Business Contracts: They Probably Employ

    Behind each can of Mojito or Cosmopolitan, there is an entire universe of contracts keeping the business in place. For InACan, these probably consist of:

    1. Supplier Contracts – For spirits, mixers, fruit extracts, and packaging. One poor batch of ingredients can ruin brand trust, so these must have rigorous quality clauses.
    2. Manufacturing Agreements – In the event that production is outsourced, the agreements must ensure consistency, hygiene, and adherence to excise norms.
    3. Distribution Contracts – Alcohol distribution in India is controlled by the State Governments. Thus, InACan must have watertight contracts with wholesalers and modern retail chains.
    4. Employment Contracts – For all, from marketing teams to R&D personnel. Due to the premium positioning, employee confidentiality and non-compete clauses become imperative.
    5. Marketing & Influencer Agreements – As the business is lifestyle-driven, influencer collaborations are strong but also legally hazardous if expectations are not documented.
    6. Consultancy Agreements– For FSSAI consultants, excise law consultants, and compliance consultants.
    7. Future Licensing/Franchising Agreements – If they scale up to physical cocktail lounges or kiosks, contracts will determine revenue-sharing, branding rights, and such.

    In essence, every contract serves as a safety net, averting conflicts before they arise. They also guarantee seamless operations in a legally delicate sector.

    Due Diligence

    Now, picture it as a Shark or any investor evaluating InACan. What would they look for before writing a cheque? Due diligence is necessary in this situation.

    • Corporate Structure: InACan operates under RM Beverages Private Limited (CIN: U15540PN2022PTC214999), registered in Pune in 2022. With an authorised capital of ₹60 lakh and a paid-up capital of about ₹27 lakh, the company is still in its early but promising growth stage. Its FY 2023 revenue was around $202K or ₹1.6 crores, a healthy start for such a niche product.
    • Governance & Directors: The founders, Sameer Mirajkar and Viraj Sawant, are listed as directors and occupy executive roles. Through the most recent AGM in December 2023, MCA compliance and timely AGM filings were maintained. This is one of the ways the company shows its compliance standards.
    • IP Audit: It is crucial to confirm that the Class 32 and Class 33 marks are also being actively used in addition to being registered. Because they might be open to imitation if they don’t comply or submit an IP filing.
    • Regulatory Compliance: Alcohol is an Indian legal minefield. So, InACan must hold:
      • FSSAI licences for food safety.
      • Excise approvals for alcohol manufacture and sale.
      • GST registrations.
      • Labelling compliance, like alcohol content, batch numbers, health warnings, and such.
    • Contracts Check: Reviewing distributor and supplier agreements to ensure no clauses could cripple future expansion, like exclusivity traps.
    • For investors, this process isn’t red tape; it’s insurance. A lapse in excise compliance could mean a state-wide ban on sales. A weak supplier contract could cause stock-outs. Due diligence, then, guarantees that investors are placing their money on a company that is both innovative and compliant with the law.

    Key Legal & Business Lessons

    InACan’s journey offers a playbook for other startups:

    • Think Ahead with IP – Filing in both alcoholic and non-alcoholic classes shows foresight. Too many startups wait until they’re bigger to think about trademarks, and by then, it’s often too late.
    • Contracts Are Quiet Heroes – Consumers never see them, but contracts decide whether your supply chain runs smoothly or collapses overnight.
    • Regulation Isn’t Optional – In food and beverage, compliance is survival. Skipping licences or excise filings is like playing Jenga with your business.
    • Due Diligence Builds Investor Trust – No Shark (or VC) will invest unless the legal house is in order. Strong contracts, IP filings, and spotless MCA records all engender trust.
    • Convenience Is King – At its core, InACan proves that consumers crave products that combine quality with accessibility. That’s a lesson that cuts across industries.

    Conclusion

    InACan isn’t just selling cocktails, it’s selling moments. A Cosmopolitan on a Friday night without a trip to the bar. A Mojito at a house party without worrying about mint leaves. Convenience wrapped in consistency, delivered in a can.

    A well-constructed legal and business foundation, however, is just as significant as the flavour and fizz. Innovation plus protection is what makes a startup, as InACan exemplifies by securing dual trademarks, negotiating strong contracts, and guaranteeing adherence to India’s intricate alcohol regulations.

    As India’s drinking culture evolves, and as consumers demand premium experiences in simpler formats, InACan is perfectly placed to lead. For entrepreneurs, the lesson is clear: protect your brand, lock down your contracts, stay compliant, and let your product shine.

    Because in the end, the real recipe for success is equal parts creativity and compliance.

    Author Details- Apoorva Lamba (3rd Year Student, Madhav Mahavidyalya, Jiwaji University, Gwalior)

  • Introduction to Commercial Contracts in India

    Think about the business world today. You most likely envision handshake agreements, business transactions, and the realization of ambitious plans. But let’s be honest: In today’s complex world, a handshake or a person’s word may be important, but it’s often insufficient. Modern commerce is driven by the powerful commercial contract, which is less showy but far more effective.

    Here in India, where business happens everywhere from your friendly neighborhood kirana shop to sprawling multinational tech campuses, contracts are the invisible framework that holds everything together. It doesn’t matter if it’s a young startup hiring its first developer, a farmer agreeing to supply vegetables to a supermarket, or a major international joint venture; a well-written contract is the bedrock of trust and legal security. In this article, we will give you a deep knowledge of commercial contracts in India.

    So, What Actually Is a Commercial Contract?

    At its heart, a commercial contract is a formalized promise between two or more parties, a promise that the law will recognize and, if necessary, step in to enforce.

    Let’s make it real with an example. Imagine a textile manufacturer in Surat agrees to supply 1,000 sarees to a retailer in Delhi for ₹5 lakh. The manufacturer’s job is to deliver quality sarees on the agreed date. The retailer’s job is to make the payment. By putting such promises in writing, they become more than just a passing understanding. Something that, if one party fails to uphold their end, can be upheld in a court of law.
    Without that piece of paper, both sides are relying purely on memory and goodwill. And as many of us know from experience, that can work wonderfully until it suddenly doesn’t.

    The Rulebook: The Indian Contract Act, 1872

    Pretty much every contract in India can trace its roots back to a law from the 19th century, i.e., the Indian Contract Act of 1872. It’s an old law, but it’s stood the test of time because it’s surprisingly adaptable. A contract must fulfill a few fundamental requirements to be deemed as legally sound:

    • Offer and Acceptance: One party must make a specific offer, and the other must accept it without any ambiguous terms.
    • Consideration: It is a key condition. Something of value, such as cash, products, or services, must be traded. Usually, a one-sided contract is deemed insufficient.
    • Free Consent: All parties must voluntarily agree without being coerced, deceived, or misinformed.
    • Capacity to Contract: The people signing need to be legally able to do so. This means they can’t be minors, be of unsound mind, or be otherwise disqualified by law.
    • A Legal Purpose: The goal of the contract has to be lawful. You can’t have a valid contract for something illegal.

    These aren’t just dry legal terms; they’re the difference between a binding agreement and a mere intention.

    Why Bother? The Real-World Importance of Contracts in India

    The business environment in India is distinct. Particularly in local trade, a significant portion of our economy still relies on verbal agreements and unwritten understandings. On a small scale, this is effective, but as companies expand, these unofficial agreements may give rise to significant conflicts. A strong contract becomes non-negotiable at that point. Here’s why they are so vital:

    • Clarity is King: A good contract leaves no room for “I thought you meant…”. Everyone knows exactly what they are supposed to do and what they can expect in return.
    • Your Best Evidence: If a disagreement escalates into a courtroom or an arbitration, the contract is your single most important piece of evidence.
    • Managing Risk: Contracts decide in advance who bears the brunt if things go sideways, like a delay in delivery, a sudden price hike, or damage to goods.
    • Building Trust with Investors: Banks and investors will always look for properly drafted contracts before they put their money into a business.
    • Staying on the Right Side of the Law: In many sectors, like employment, real estate, or foreign trade, having a written contract isn’t just a good idea; it’s a legal requirement as well.

    It’s Not Just One Law: The Wider Legal Web

    While the Contract Act of 1872 is the foundation, several other laws come into play depending on the nature of your deal:

    So, when you sign a commercial contract, you’re often engaging with a whole ecosystem of laws.

    What’s Inside? Common Clauses in a Business Contract

    While the details change, most commercial contracts you’ll come across in India share a common structure with clauses like:

    • Payment Terms: The when, how, and how much of money changing hands.
    • Performance Schedule: Clearly defining the dates for delivering products or finishing projects is a modern necessity.
    • Confidentiality: It is a vital component of safeguarding your company’s secrets, processes, and inner workings.
    • Termination Clause: Specifying how either party may end the agreement, both amicably or not so amicably, is crucial.
    • Dispute resolution: determines whether a dispute will be resolved in court or through a quicker alternative, such as mediation or arbitration. Ignoring such details is like leaving your front door open; you’re inviting trouble.

    The Reality Check: Challenges in the Indian Context

    Despite having explicit laws in theory, there are obstacles to their practical implementation in India. This is due to a few factors:

    • The Culture of Informality: Many small businesses are reluctant to “get legal” with paperwork, which can later work against them.
    • The Elephant in the Room: Judicial Delays: Let’s face it, court cases can drag on for years. This is precisely why arbitration clauses have become exceedingly popular.
    • Power Imbalances: Larger companies often have the upper hand in negotiations. And they impose one-sided terms on smaller suppliers or partners.
    • A Maze of Regulations: Businesses and their legal counsel may become confused when several laws overlap.

    A Glimpse at What the Courts Think

    The importance of upholding contracts has always been stressed by Indian courts. In the famous case of M/S Alopi Parshad & Sons Ltd. v. Union of India (1960), the Supreme Court made it clear that a court cannot alter the terms of a legally binding contract just because one party’s circumstances change. Once you sign, you are expected to follow through on your commitments.

    However, the story is not as simple as it first appears. In LIC of India v. Consumer Education & Research Center (1995), the court has emphasized that contracts must be equitable, especially when one party holds a disproportionate amount of power. This delicate balancing act between preserving the right to contract and ensuring a principle of fairness shapes Indian contract law.

    Some Practical Advice for Your Business

    • Just Write It Down: Make it a habit to legally document your important deals. Don’t just rely on verbal agreements.
    • Keep it Simple: Use clear, plain language. If you can’t understand a clause, it probably needs to be rewritten.
    • Avoid a One-Size-Fits-All Strategy: While online templates can serve as a starting point, you should always modify them to fit your unique circumstances.
    • Get a Second Opinion: You can avoid a lot of headaches and expenses later on by having a lawyer take a quick look.

    Add a provision for Mediation or Arbitration to “plan for the worst, hope for the best.” Almost always, it’s less expensive and quicker than going directly to court.

    Wrapping Up

    Commercial contracts in India ultimately involve more than simply fulfilling legal requirements. They are instruments for establishing consistent, reliable, and equitable business partnerships. Contracts serve as silent guardians, ensuring that business in all its forms can thrive in a nation with a commercial landscape as diverse as ours, ranging from street vendors to billion-dollar startups.

    Next time, we’ll dive deeper into a specific type of contract, starting with Sale of Goods agreements, to see how you can use them smartly and steer clear of common pitfalls.

    AuthorDetails-Apoorva Lamba (3rd Year Student, Madhav Mahavidyalya, Jiwaji University, Gwalior)

  • Trademark renewal

    Introduction

    A trademark is a distinct sign, symbol, word, logo, or combination thereof that identifies and distinguishes the goods or services of one enterprise from those of others. In India, trademarks’ legal protection and regulation are governed by the Trademarks Act of 1999 and the Trademarks Rules of 2017.

    According to Section 25(1) of the Trade Marks Act, once a trademark is registered, it remains valid for a period of ten years starting from the date it was registered. This can be extended after the expiration of the initial 10 years.

    This article covers the complete process and legal significance of trademark renewal in India under the Trademarks Act, 1999, and the Trademarks Rules, 2017. It explains what trademark renewal entails, its procedure, the documents required, applicable forms and fees, and the legal and commercial benefits of timely renewal. It also highlights the consequences of non-renewal, and the procedure for restoration of a removed trademark, and concludes with the importance of timely compliance to ensure uninterrupted protection of brand rights and reputation.

    What is trademark renewal?

    Trademark renewal is a process by which the protection of a registered trademark is extended beyond its initial term of registration. In India, once a trademark is registered, it is legally protected for a duration of ten years from the date of registration. After this period ends, the trademark must be renewed. Renewal plays a crucial role in protecting the owner’s exclusive rights over the mark and ensuring that the brand remains protected from infringement.

    The procedure for trademark renewal is outlined under the Trade Marks Act, 1999, and the Trade Marks Rules, 2017. To renew a trademark, the owner must submit a renewal application using Form TM-R to the Indian Trademark Registry, along with the prescribed renewal fee.

    In case of failure to renew the trademark within the prescribed time limit, it may be removed from the Trademark Register, and the exclusive rights may lapse. Renewal ensures that the trademark owner enjoys legal protection.

    Procedure for Renewal

    Filing the Renewal Application

    The renewal of a trademark officially begins with the submission of Form TM-R, as prescribed under Rule 57 of the Trade Marks Rules, 2017. Filing can be done through the official IP India portal.

    The applicant must provide certain essential details like the registration number of the trademark and its current legal status. If the renewal is being carried out through a trademark agent or legal representative, a valid Power of Attorney must also accompany the application.

    A trademark renewal application can be filed within one year before the date on which the trademark is set to expire. In case this window is missed, renewal may still be sought within six months, but only by paying an additional late fee. However, if the deadline is missed entirely, the mark becomes vulnerable to removal from the register. If the renewal isn’t filed on time, the applicant must submit a restoration request under Rule 60, which not only increases the expenses but also makes the process more complicated.

    Scrutiny and Examination by the Registry

    After submission, the application is examined by the Trademark Registry to ensure that all legal requirements are satisfied. The Registrar checks whether the application was filed within the permitted time and whether all relevant documents and prescribed fees are in order.

    If the Registry detects any discrepancy, such as an incomplete form, unpaid fees, or classification issues, it may issue a formal objection. The applicant is generally given 30 days to respond. If the response is not submitted on time or the discrepancies are not addressed properly, the application may be rejected or delayed.

    Publication in the Trade Marks Journal

    After the application passes the examination stage, the renewal information is officially published in the Trade Marks Journal. Any third party may file an opposition in 4 months under Section 21 of the Trade Marks Act, 1999. If an objection is filed, the trademark owner will be given a chance to respond. If the matter remains unresolved, the Registrar may call for a hearing and make a decision.

    If no opposition is raised or if any objections are successfully resolved, the trademark renewal proceeds without further hurdles.

    Issuance of the Trademark Renewal Certificate

    After the opposition period and resolution of any related disputes, the Trademark Registry formally issues a Trademark Renewal Certificate. This certifies that the trademark has been renewed for a further 10-year period from the date of the previous expiration.

    Trademark Restoration Following Expiry

    If the renewal deadline and the six-month grace period have both passed without action, the trademark is officially removed from the register. However, the law allows the owner to apply for restoration within one year from the date of expiry. This request must be accompanied along with the prescribed fees, can be done through ipindia.gov.in.

    Once the application is received, the Registrar examines the application. If no discrepancy is found or if the Registrar is satisfied, the request for restoration is accepted, and the trademark is published in the Trademark Journal.

    If no opposition is filed or if the applicant overcomes any objections, a Restoration Certificate is issued.

    Legal Consequences of Non-renewal

    If a trademark is not renewed on time, it can be removed from the register, leading to the loss of exclusive rights to use the mark. Without renewal, the owner cannot enforce trademark rights or prevent others from using a similar mark. The trademark becomes vulnerable to being registered by others, weakening the original owner’s position. While restoration is possible within one year of removal, it’s not automatic and requires valid reasons. Overall, non-renewal risks losing legal protection.

    Documents required

    1. Form TM-Ris is the prescribed form for renewal of a trademark under the Trade Marks Rules, 2017. It must be filed six months before the expiry of the current registration or within a grace period of six months after the expiry (with applicable fees).
    2. Power of Attorney is required only when the renewal is filed by a trademark attorney or an authorized agent; a power of attorney is submitted to establish their authority to act on behalf of the owner.
    3. Proof of identity and address: Though not always mandatorily providing documents is recommended.
    4. Copy of the Trademark Registration Certificate.
    5. Affidavit of Use: The Registrar may request an affidavit to ensure genuine intent or prior use of the trademark.

    Forms and fees

    Form NamePurposePhysical feeOnline feeIndividuals/ start-ups (online only)
    TM-RRenewal of trademark registration (with/without modification or advertisement before renewal)₹10,000₹9,000₹4500 per class
    TM-R With surchargeRestoration of a removed trademark within 6 months after expiry (includes renewal)₹10,000+ renewal fee₹9000+ renewal fee₹9000 per class
    TM -18Affidavit of use (if required by Registrar)–––
    TM-U  Change in name/address/agent details during renewal₹1,000₹900₹450
    TM-MMiscellaneous requests (likean extension of time or correction of a clerical error)₹1,000      ₹900₹450

    Benefits of renewal

    Legal protection- Renewal ensures that the trademark remains legally protected under the Trademarks Act, 1999. If the trademark isn’t renewed, the legal protection it offers lapses, leaving it vulnerable to misuse or infringement by others.

    Preservation of Exclusive Rights – A trademark owner has certain exclusive rights, which are rights, though can be preserved by renewing the trademark.

    Strengthening of Legal Position –The trademark owner has the right to initiate legal action in case of infringement. Renewal of a trademark also provides this right, which strengthens the owner’s position in defending their mark and seeking remedies for any unauthorized use.

    Maintaining Brand Identity- Every business has a distinct brand value in the marketplace. Without renewal, the mark may lose its distinctiveness, potentially eroding the brand’s reputation and value in the market.

    Business and Commercial Benefits A renewed trademark enables the trademark owner to leverage their intellectual property for business opportunities such as licensing, franchising, and brand expansion. A valid trademark is an asset that increases business credibility and value.

    Conclusion

    Trademark renewal is a crucial step in preserving a brand’s legal identity and commercial strength. Under the Trade Marks Act, 1999, and the Trade Marks Rules, 2017, renewal ensures that a registered trademark continues to enjoy statutory protection, allowing the proprietor to maintain exclusive rights and prevent misuse by others.

    Missing the renewal timelines can lead to the cancellation of a trademark, weakening the brand’s legal standing and market position. Though restoration is allowed within a limited period, it involves additional costs and formalities.

    Timely renewal is a simple yet vital legal action that protects years of brand building, reputation, and investment. For any business or individual relying on their trademark, proactive compliance with the renewal process is not just good practice but is essential for long-term brand security.

    References

    1. The Trade Marks Act, 1999– https://www.ipo.gov.in/tmrAct_1999.pdf
    2. The Trade Marks Rules, 2017– https://www.ipo.gov.in/TMRules_2017.pdf
    3. IP India – Trade Marks Section– https://ipindia.gov.in/trade-marks.htm
    4. Trademark Renewal in India, iPleaders– https://blog.ipleaders.in/trademark-renewal-india/
    5. Trademark Renewal Procedure, LawBhoomi-https://lawbhoomi.com/trademark-renewal-procedure-in-india/
    6. Trademark Forms and Fees, IP India – https://ipindia.gov.in/form-and-fees-tm.htm
    7. Trademark JournalSearch, IP-India https://search.ipindia.gov.in/tmrpublicsearch/jsp/journal/journal_search.jsp

  • TRADEMARK SEARCH REPORT

    INTRODUCTION

    Trademark search report is the first step taken by an individual, company or any other person when they need to know whether a specific mark exists, or they want a mark to get registered. Conducting a Trademark Search helps in ensuring that the logo, slogan or mark is unique and distinctive in nature. Trademark search reports becomeuseful in identifying the marks that can arise conflict or infringe the right of the owner of the mark. Trademark search is a very simple and easy process to do, anyone can do it.

    The result of Trademark search is based on the product description, which class it belongs too, which word or mark is being used. It not only shows the existing marks but also their present status like whether the mark is registered, opposed, abandoned etc.., In this article we are going to discuss what is Trademark, the importance of Trademark Search, types of Trademark Search, the process of Trademark Search, how it can be used as evidence and common mistakes during Trademark Search.

    WHAT IS TRADEMARK?

    A Trademark is a form of intellectual right property that distinguishes one brand’s goods and services with other brands goods and services. A trademark consists of a word, phrase, insignia, symbol or combination of all in one. The Trademark identifies that a particular goods or service belongs to whom, if anyone else tries to have the same mark for their goods or service the owner has the right to claim opposition as he has exclusive right on that Trademark.

    THE IMPORTANCE OF TRADEMARK SEARCH REPORT

    Trademark Search is an excellent example of ‘Precaution Is Better Than Cure’, as it can help in identifying the mark which can cause conflict in future. Conducting a Trademark Search is important as it can minimize the risk of investing in a mark that is already being used by some other party. It helps you to avoid any kind of legal dispute which can occur by using such mark and it also helps in saving your money from those legal processes which you may face using that disputed mark.

    TYPES OF TRADEMARK SEARCH

    In India various type of Trademark search can be done based who that trademark is going to be used by the Applicant, few of them are: –

    Phonetic search:

    It is done to find out that if there is any mark which soundsto the mark you are applying for, the words can be different but do those two marks sound similar? For example, Organic and Organik or Frooti and Fruiti

    Exact match:

    It is the most basic trademark search as it used to find the identical word to that of the proposed mark.

    For example: AYN and AYN

    Class wise search:

    There is a total of 45 classes of trademark, class 1 to 34 is for goods and 35-45 is for services. The class wise search ensures that no identical mark as of proposed mark exists in same class.

    For example: class 9 electronics, marks Sony and Soni

    Comprehensive search:

    Comprehensive search is in depth search of a mark, it includes all the above-mentioned searches and search of the status the similar mark whether it is opposed, abandoned or pending.

    THE PROCESS OF TRADEMARK SEARCH

    The Trademark Search is done by using the Trademark Registry online data, the search can be done by anyone by the following process:

    Visit the Trademark Registry’s official website Official website of Intellectual Property India

    Go to related links, there you find public search

    Click on public search, then it will ask permission to proceed to external site, click on yes

    You will reach the public search page, which looks like this:

    • Then fill in the required information on this page, for example
      • Search type: – type of search you are conducting (e.g. wordmark)
      • Wordmark: – type the wordmark you are searching for (e.g. AYN)
      • Class: – type the class in which you are searching for (e.g. 45)
      • Enter the code shown above: – carefully enter the captcha (e.g. 12345)

    • Search: – Last step is to click the search button, you will get all the similar existing trademark registered in Trademark Registry, like

    HOW IT CAN BE USED AS EVIDENCE

    Trademark Search Report can work evidence in Trademark infringement case where you must prove that you have taken the mark in good faith and in a bona fide intention.

    The Trademark search report includes details of every mark whether they were opposed, pending or abandoned, and if you have taken a mark which was abandoned by its prior user then your intention of applying that mark is in good faith, and this can benefit you in a Trademark infringement case.

    COMMON MISTAKES DURING TRADEMARK SEARCH

    While conducting a trademark search people usually make these mistakes: –

    • Not doing phonetic search: people usually do word mark search if it’s clear they think that there will be no conflict in registering this mark, but the phonetically similar sound can be a challenge later.
    • Not considering unregistered mark: this sounds confusing, how can an unregistered mark be a problem, but it can. If someone in the local area has been using a similar mark for a very long period, then they claim that they are the prior user of the mark which will eventually create a big problem for the present Applicant.
    • Filling the mark without an attorney:Trademark attorney or professionals make sure to check and clear every aspect related to your Trademark Registration. So contact TMWALA if you need any guidance regarding your Trademark Search or Trademark Registration.

    CONCLUSION

    Conducting a Trademark Search is the very first and most crucial process in Online Trademark Registration process. It ensures that your proposed Trademark does not infringe someone else’s Trademark rights. It also provides clarity about whether you should move forward with the present mark or not. A through Trademark Search by yourself or with the help of a profession can help you save a lot of your time, money, energy and help you avoid future conflicts, legal troubles and unnecessary hassle in the long run. 

  • SECTION 21 OF THE TRADE MARKS ACT, 1999

    A trademark is a unique symbol, logo, word, design or combination of these which is capable of being distinguished from the goods and services of one person or entity from that of another person or entity. By virtue of registration of a trade mark the owner of the trade mark enjoys exclusive right to use the same. The Trade Marks Act, 1999, which grants the registered trademarks legal protection and the owner exclusive rights, also regulated process of trade marks registration in India. Section 21 of the Act provides provisions related to opposition proceedings, allowing any person to challenge the registration of a trademark before it is officially granted.

    In addition, the Trade Marks Act, 1999 also provides process for opposition to a trade mark, where any individual or entity can challenge a trademark application if they feel, it violates their rights or creates confusion in order to preserve a fair and competitive market. This process of opposing a trade mark is outline under section 21 of the Trade Marks Act.

    Here is an article that discusses the provisions of section 21 of the Trade Marks Act in brief.

    Explanation of the terms used in the article:

    1. Oppose/Opposition: to contest or to challenge a trade mark.

    2. Opponent: The person who has filed opposition or the person who is opposing the Trade Mark applied for the registration.

    3. Applicant for Registration: The person who has filed application for the registration of the Trade Mark.  4. Opportunity to be heard: Giving the parties involved in the case equal and fair chance to present their arguments before deciding the case.

    Section 21(1) of the Trade Marks Act:

    According to Section 21(1) of the Trade Marks Act, any aggrieved person can oppose a trademark. It is not necessary for a person opposing a mark to be prior applicant or registered owner of trademark. However, it is a necessary requirement that the opposition must be in writing, in a prescribed manner and be filed within 4 months from the date of advertisement or re-advertisement of an application for registration in the Trade Marks Journal. 

    Section 21(2) of the Trade Marks Act:

    Section 21(2) of the Trade Marks Act imposes a duty on the Registrar of Trade Marks to serve a copy of the notice of opposition to the Applicant for Registration (person who filed application for registration of the trade mark). Further, section 21(2) of the Act imposes duty on the Applicant for Registration to reply to the notice of opposition by sending the counterstatement to the Registrar within two months from the date on which the Applicant for registration received the copy of the Notice of opposition.

    The Applicant for Registration, in the counterstatement, must state the grounds on which he relies for his trade mark application. Failure in doing say might result in the Application being abandoned and the same will not proceeded for registration. 

    Section 21(3) of the Trade Marks Act: 

    According to section 21(3) of the Trade Marks Act, if the Applicant for Registration sends the counterstatement within the prescribed period i.e. two months from the date of receipt of notice of opposition by the Applicant for Registration, the Registrar of Trade Marks is bound to serve a copy of the same to the opponent. 

    Section 21(4) of the Trade Marks Act: 

    After the Applicant gives the counterstatement in reply to the notice of opposition, the opposition process moves on to the evidence stage. According to section 21(4) of the Trade Marks Act, both the parties to the case i.e. the opponent and the applicant for registration are required to serve evidence in support of their claims. The opponent is required to file evidence in support of notice of opposition within two months from the date he receives the copy of the counterstatement.

    And the Applicant for Registration is required to file evidence in support of trade mark Application and counterstatement within two months from the date he receives the evidence filed by the opponent. Further, this sub-section provides that if the Registrar of the Trade Marks thinks fit, it must also provide both the parties the opportunity to be heard. 

    Section 21(5) of the Trade Marks Act: 

    Section 21(5) of the Trade Marks Act provides provision related to the decision by the Registrar of the Trade Marks. Accordingly, it provides that after considering the arguments of both the parties, evidence submitted and objections raised by the opponent in the notice of opposition, the Registrar of Trade Marks must decide whether to grant the registration to the trade mark applied for registration unconditionally, impose any conditions/ limitations on the same or refuse the registration. 

    Section 21(6) of the Trade Marks Act:

    According to section 21(6) of the Trade Marks Act, if the opponent or the applicant does neither resides nor conduct its business in India after receiving of the notice of opposition or the counterstatement, the Registrar can demand security for costs of proceedings before him. In case of failure to give the security for cost of proceedings, the notice of opposition or the application, as the case may be, will be treated as abandoned.

    Section 21(7) of the Trade Marks Act: 

    According to section 21(7) of the Trade Marks Act, if any party i.e. the opponent or the applicant for registration, desires to make any correction of any error or any amendment in the notice of opposition or a counter-statement, he can request to the Registrar of Trade Marks for the same. And, if the Registrar thinks fit, he may allow such correction or amendment. 

    CONCLUSION

    In conclusion, section 21 of the Trade Marks Act provides the provisions related to the process of opposing a trade mark in India. Accordingly, the opposition can be filed by any person within four months from the date of advertisement or re-advertisement. A copy of the said notice needs to be served by the Registrar of Trade Marks to the Applicant and the Applicant is bound to file counterstatement within two months from the date of the receipt of the copy of the notice, else the trade mark Application may be deemed to be abandoned.

    After the counterstatement is given, both the parties are required to be provide evidences to support their claims. After considering such evidences, giving opportunity to be heard and objections raised by the opponent in the notice of opposition, the Registrar may either grant registration to the trade mark or refuse the same.

    For a detailed legal perspective on trademark opposition, you can visit this resource to explore case studies and official guidelines.