Why is a trade mark search conducted before an application is filed?

A search identifies identical and similar marks already registered or applied for in the relevant classes, and assesses the likelihood of objection by the Registry or opposition by third parties. It also identifies conflicts with unregistered marks in use. Searching before adoption allows the mark to be changed at a stage when rebranding costs little, rather than after commercial launch.

What is the difference between trade mark infringement and passing off?

Infringement is a statutory remedy available to the proprietor of a registered trade mark under the Trade Marks Act, 1999. Passing off is a common law action protecting the goodwill associated with a mark irrespective of registration, and requires the claimant to establish goodwill, misrepresentation and damage. Both may be pleaded together where a registered mark is involved.

How does trade mark opposition work in India?

Once an application is accepted and advertised in the Trade Marks Journal, any person may oppose it by filing a notice of opposition within the period prescribed. The applicant files a counter-statement, following which both sides file evidence by way of affidavit. The Registrar hears the matter and decides whether the mark proceeds to registration.

Is software patentable in India?

The Patents Act, 1970 excludes certain subject matter from patentability, including computer programmes as such. Whether a particular invention involving software falls within that exclusion depends on how the invention is claimed and on whether a technical effect or contribution beyond the programme itself is established. Software is separately protected as a literary work under copyright law.

What is pre-grant opposition?

The Patents Act, 1970 permits any person to make a representation opposing the grant of a patent after publication of the application and before grant, on the grounds specified in the Act. This is distinct from post-grant opposition, which may be filed by an interested person within the period prescribed after grant, and from revocation proceedings.

Who owns copyright in work created by an employee?

The Copyright Act, 1957 provides that, in the absence of an agreement to the contrary, the employer is the first owner of copyright in a work made by an employee in the course of employment under a contract of service, subject to the exceptions in that section. The position differs for work commissioned from an independent contractor, where ownership generally requires express assignment.

Are trade secrets protected by statute in India?

India does not have a dedicated trade secrets statute. Confidential information is protected through contract, including non-disclosure and confidentiality provisions, and through the equitable action for breach of confidence. Effective protection therefore depends substantially on how information is identified, restricted and documented within the organisation.

Where are IP disputes heard following the abolition of the IPAB?

Following the reorganisation of tribunal jurisdiction, matters previously before the Intellectual Property Appellate Board are dealt with by the High Courts. Several High Courts have constituted dedicated intellectual property divisions with their own procedural rules. Infringement suits continue to be filed before Commercial Courts or the Commercial Divisions of the High Courts according to jurisdiction and value.

Can Indian counsel support a foreign firm's portfolio work?

Indian counsel are frequently engaged by foreign firms and corporations for filing, prosecution and support work in India, and for search, docketing and portfolio administration delivered on a managed basis. Engagement terms, scope and confidentiality arrangements are agreed at the outset. Further detail appears on the firm's International Services — LPO page.

Intellectual Property

Intellectual property practice concerns the creation, registration, licensing and enforcement of rights in trade marks, copyright, patents, designs and confidential information. Sagar & Sagar Law Offices advises on clearance and registration, conducts prosecution and opposition proceedings before the Registries, drafts assignment and licensing documentation, and appears in infringement and passing off proceedings before the Commercial Courts and the High Courts. The practice also provides structured IP support services, including searches, portfolio management and prosecution support, delivered through the firm's legal process outsourcing capability.

Intellectual property in India is governed by separate statutes for each category of right, each with its own registry, procedure and enforcement route. A single commercial product may involve a registered trade mark, copyright in its packaging and software, a registered design in its shape, and confidential information in its process — with different terms of protection, different registration requirements and different remedies attaching to each. Since the reorganisation of tribunal jurisdiction, appellate and rectification work in intellectual property has largely moved to the High Courts, several of which now operate dedicated intellectual property divisions.

The practice at Sagar & Sagar Law Offices covers the lifecycle of these rights. Work includes availability searches and clearance before adoption, filing and prosecution through the relevant registry, opposition and rectification proceedings, transactional work on assignment and licensing, and contentious enforcement including interim injunctions. The practice also delivers volume support work — searches, docketing, portfolio administration and prosecution support — for firms and businesses managing IP portfolios, which is described further on the firm's International Services — LPO page.

Scope of work

Trade marks — clearance, prosecution and registry proceedings

Securing and maintaining registered trade mark rights.

Availability searches and clearance opinions before adoption of a mark
Advice on distinctiveness, descriptiveness and registrability
Preparation and filing of trade mark applications, including in multiple classes
Advice on classification and specification of goods and services
Responses to examination reports and objections raised by the Registry
Appearance in show cause hearings before the Registrar
Opposition proceedings, including notices of opposition, counter-statements and evidence
Rectification and cancellation proceedings
Renewal, assignment recordal and change of proprietorship applications
Advice on well-known mark status and applications relating to it
Advice on international filing strategy, including applications under the international registration system

Trade marks — enforcement

Contentious proceedings to protect registered and unregistered marks.

Cease and desist notices and pre-litigation correspondence
Infringement suits before the Commercial Courts and High Courts
Passing off actions in respect of unregistered marks and trade dress
Applications for interim and ex parte injunctions
Applications for appointment of local commissioners for search and seizure
Advice on and applications for damages, accounts of profits and delivery up
Defence of infringement and passing off proceedings
Advice on parallel imports, grey market goods and exhaustion of rights
Customs recordal and border enforcement measures
Criminal complaints in respect of falsification and counterfeiting

Copyright

Rights in literary, dramatic, musical and artistic works, films, sound recordings and software.

Advice on subsistence, ownership and term of copyright
Advice on first ownership, including in works created under employment or on commission
Copyright registration applications and related proceedings
Drafting of assignment and licensing agreements
Advice on moral rights and their exercise
Advice on fair dealing and permitted acts
Advice on software licensing and open source compliance
Infringement proceedings, including applications for injunctive relief
Advice on and proceedings concerning online infringement, including blocking and takedown
Advice on intermediary obligations in relation to infringing content
Criminal proceedings in respect of copyright infringement

Patents

Rights in inventions, from filing through opposition and enforcement.

Advice on patentability and on subject matter excluded from patentability
Prior art searches and patentability assessment
Coordination of drafting and filing of provisional and complete specifications
National phase entry of international applications
Advice on requirements applicable to filing abroad
Responses to examination reports and first examination reports
Appearance in hearings before the Controller
Pre-grant and post-grant opposition proceedings
Revocation proceedings and defence against revocation
Advice on working statements and other post-grant compliance
Advice on compulsory licensing provisions
Patent infringement proceedings and defence, including invalidity defences
Freedom to operate assessments

Designs, geographical indications and related rights

Other registered rights under specialised statutes.

Design registration applications under the Designs Act, 2000
Advice on novelty, prior publication and functionality objections
Cancellation proceedings in respect of registered designs
Design infringement proceedings and defence
Advice on the overlap between design protection and copyright in artistic works
Applications and advice in respect of geographical indications
Advice on protection of semiconductor layout designs and plant varieties

Trade secrets and confidential information

Protection of information not capable of registration.

Advice on identification and classification of confidential information
Drafting of non-disclosure and confidentiality agreements
Drafting of confidentiality and invention assignment provisions in employment contracts
Advice on restrictive covenants and their enforceability
Proceedings for breach of confidence and misuse of confidential information
Applications for injunctive relief to restrain disclosure or use
Advice on protection of information in outsourcing and vendor arrangements
Investigation and response where confidential information is suspected to have been taken

Domain names and online enforcement

Rights and remedies in the digital environment.

Domain name disputes under the applicable dispute resolution policy for country code domains
Domain name disputes under the uniform dispute resolution policy for generic domains
Advice on cybersquatting and typosquatting
Takedown notices to platforms, marketplaces and hosting providers
Applications for blocking orders in respect of infringing websites
Advice on enforcement against unidentified defendants
Brand monitoring and enforcement across online marketplaces and social platforms

IP transactions and commercialisation

Transactional work in respect of intellectual property assets.

Drafting and negotiation of assignment deeds
Drafting and negotiation of licensing agreements, including exclusive and non-exclusive licences
Advice on royalty structures and payment terms
Technology transfer and know-how agreements
Franchising and brand licensing documentation
Merchandising and character licensing agreements
Research, development and collaboration agreements, including ownership of resulting IP
IP due diligence in mergers, acquisitions and investment transactions
Advice on IP holding structures and intra-group licensing
Advice on security interests over intellectual property

IP support and managed services

Structured, volume-based support work, delivered through the firm's LPO capability.

Trade mark availability and screening searches across classes and jurisdictions
Watch services and monitoring of published applications
Prosecution support, including preparation of routine filings and responses
Docketing and management of prosecution and renewal deadlines
Portfolio administration and record maintenance
Prior art and patent landscape searches
Contract review for IP clauses across contract sets
Preparation of status reports and portfolio summaries for in-house teams
Support to foreign firms and corporations managing Indian portfolios

Further detail on delivery models and engagement terms for this work appears on the International Services — LPO page.

Forums and authorities

Trade Marks Registry
Patent Office and the Controller of Patents, Designs and Trade Marks
Copyright Office
Geographical Indications Registry
Intellectual property divisions of the High Courts, where constituted
Commercial Courts and Commercial Divisions
High Courts, in appellate, rectification and writ jurisdiction
Supreme Court of India
Courts of Magistrates, in criminal proceedings relating to infringement and counterfeiting
Customs authorities, in border enforcement
Domain name dispute resolution providers under the applicable policy

Who we act for

Companies building and maintaining brand portfolios
Manufacturers and consumer goods businesses
Technology and software companies
Pharmaceutical and life sciences companies
Media, entertainment and publishing businesses
Startups and founders establishing IP ownership
Foreign proprietors seeking protection and enforcement in India
Foreign law firms requiring Indian filing, prosecution and support work
Licensees, distributors and franchisees
Defendants in infringement and passing off proceedings

How we approach this work

Clearance treated as the cheapest stage.

Searching and assessing a mark or an invention before adoption costs materially less than rectifying a conflict after launch, and clearance work is treated as substantive rather than administrative.

Registration strategy aligned to commercial use.

Classes, specifications and filing jurisdictions are selected by reference to how the right will actually be used and enforced, rather than by default coverage.

Enforcement assessed before it is commenced.

The strength of the right, the evidence of use, the conduct of the proprietor and the likely defences are assessed before proceedings are initiated, since each affects the availability of interim relief.

Support work managed on defined process.

Volume search, docketing and prosecution support work is conducted on documented process with defined quality control, so that portfolio deadlines and records remain reliable at scale.

Frequently asked questions

Why is a trade mark search conducted before an application is filed?: A search identifies identical and similar marks already registered or applied for in the relevant classes, and assesses the likelihood of objection by the Registry or opposition by third parties. It also identifies conflicts with unregistered marks in use. Searching before adoption allows the mark to be changed at a stage when rebranding costs little, rather than after commercial launch.
What is the difference between trade mark infringement and passing off?: Infringement is a statutory remedy available to the proprietor of a registered trade mark under the Trade Marks Act, 1999. Passing off is a common law action protecting the goodwill associated with a mark irrespective of registration, and requires the claimant to establish goodwill, misrepresentation and damage. Both may be pleaded together where a registered mark is involved.
How does trade mark opposition work in India?: Once an application is accepted and advertised in the Trade Marks Journal, any person may oppose it by filing a notice of opposition within the period prescribed. The applicant files a counter-statement, following which both sides file evidence by way of affidavit. The Registrar hears the matter and decides whether the mark proceeds to registration.
Is software patentable in India?: The Patents Act, 1970 excludes certain subject matter from patentability, including computer programmes as such. Whether a particular invention involving software falls within that exclusion depends on how the invention is claimed and on whether a technical effect or contribution beyond the programme itself is established. Software is separately protected as a literary work under copyright law.
What is pre-grant opposition?: The Patents Act, 1970 permits any person to make a representation opposing the grant of a patent after publication of the application and before grant, on the grounds specified in the Act. This is distinct from post-grant opposition, which may be filed by an interested person within the period prescribed after grant, and from revocation proceedings.
Who owns copyright in work created by an employee?: The Copyright Act, 1957 provides that, in the absence of an agreement to the contrary, the employer is the first owner of copyright in a work made by an employee in the course of employment under a contract of service, subject to the exceptions in that section. The position differs for work commissioned from an independent contractor, where ownership generally requires express assignment.
Are trade secrets protected by statute in India?: India does not have a dedicated trade secrets statute. Confidential information is protected through contract, including non-disclosure and confidentiality provisions, and through the equitable action for breach of confidence. Effective protection therefore depends substantially on how information is identified, restricted and documented within the organisation.
Where are IP disputes heard following the abolition of the IPAB?: Following the reorganisation of tribunal jurisdiction, matters previously before the Intellectual Property Appellate Board are dealt with by the High Courts. Several High Courts have constituted dedicated intellectual property divisions with their own procedural rules. Infringement suits continue to be filed before Commercial Courts or the Commercial Divisions of the High Courts according to jurisdiction and value.
Can Indian counsel support a foreign firm's portfolio work?: Indian counsel are frequently engaged by foreign firms and corporations for filing, prosecution and support work in India, and for search, docketing and portfolio administration delivered on a managed basis. Engagement terms, scope and confidentiality arrangements are agreed at the outset. Further detail appears on the firm's International Services — LPO page.

The Quiet Reordering of Legal Capacity: Why Global Legal Teams Are Looking to India

For enquiries relating to this practice area, please use the details on the Contact page.

Overview