IP is a valuable asset that can support you when doing business overseas. An Australian patent, trade mark, design or plant breeder’s right does not secure your rights outside of Australia. You should consider IP protection in the countries that you are planning on doing business, including manufacturing, or selling products online.
Please note, IP registration and protection can be a complex process, especially in an international context. It is recommended that you seek advice from an IP professional.
India has a population of approximately 1.3 billion. India is the world’s fastest-growing major economy, and is Australia’s tenth largest trading partner and our fifth largest export market. In 2018-19, two-way trade was valued at A$30.3 billion. The official languages of India are Hindi and English.
IP protection in India
The Office of the Controller General of Patents, Designs and Trade Marks (the Office) is the government body responsible for the administration of patents, trade marks and designs in India. The Office is also responsible for the registration of geographical indications (GIs). While copyright arises automatically at the time of creation of an eligible work, copyright can be voluntarily registered via the Copyright Office.
Court procedures in India can be comparatively slow and the process of enforcement can be protracted and lengthy. However, the costs of filing, registration and litigation are relatively low in India compared to Australia.
An address for service in India and a local agent or attorney is generally required when seeking IP registration.
India is a member of international agreements for the protection of IP rights as administered through the World Intellectual Property Organization. See below for further details.
- Trade mark applications can be filed directly through the Office, or through the Madrid System for the international registration of trade marks.
- When deciding on whether or not to enter India with your trade mark (and ideally before you apply for a trade mark in Australia), you should consider two things when applying for an international application through the Madrid System.
- Firstly, you may wish to search the Global Brands Database to make sure your chosen trade mark is available to be registered.
- Secondly, acceptable claims for goods and services vary across the world. Consider consulting the Madrid Goods and Services Manager database, which outlines what claims are acceptable in various jurisdictions globally.
- The official languages of India are Hindi and English; however, a number of other languages are also used. Applicants using word elements in their trade marks may need to consider protecting translations and transliterations.
- Like Australia, India has a “first to use” rule for obtaining trade mark rights. This means that the first person who can prove significant use of a trade mark in India will generally have superior rights to a person who files a trade mark application later.
- Unregistered trade marks may, in some cases, be protected in India. However, a registered trade mark provides statutory protection which offers significant advantages in trade mark disputes.
- The registration process can take several years.
- A trade mark registration is valid for 10 years and may be renewed indefinitely for successive 10 year periods upon payment of fees.
- A trade mark may be cancelled if it is not used within five years and three months from registration and a third party brings an action for removal of the mark.
- There are other circumstances under which a trade mark may be challenged, cancelled or removed. Please check the relevant requirements prior to application.
- Applications may be made directly to the Office or can enter through national phase entry via the Patent Cooperation Treaty (PCT).
- Applications can be made for an independent patent or patent of addition to some prior patents or applications.
- In limited circumstances, a grace period of twelve months may be granted.
- After three years, if the patent is not used or a license is not granted for a reasonable price, a compulsory license may be granted in certain circumstances.
- Patent protection is for up to 20 years from the date of filing.
- Applications may be made directly to the Office.
- Applications must pass a substantive examination and the process usually takes six to nine months.
- Protection is available for up to a 10-year period, with renewal possible for a further five years.
- Like Australia, copyright arises automatically at the time of creation of an eligible work.
- However, the Copyright Office operates a voluntary registration system under which copyright owners may record their copyright and receive a certificate of registration for a fee. The certificate assists third parties seeking permission to use the work and may be used as evidence of ownership.
- The term of protection varies depending on the type of work. In general, most published works are protected for the life of the author plus 60 years.
- Applications can be made directly to Registrar of the Plant Varieties Registry.
- Protection is granted for up to 15 or 18 years depending on the type of plant.
- Applications may be made directly to the Office by any association of persons or producers or any organization or authority representing the interest of the producers of the goods concerned.
- The term of protection is 10 years, with 10-year renewal options available.
Enforcing your IP rights in India
It is your responsibility to protect your IP. You should actively monitor the marketplace for any unauthorised use of your IP.
Customs regulations may provide cross-border measures to protect IP rights.
IP law is complex. If legal action is necessary, then you should consult a legal professional who specialises in IP law.
Doing business in India
Before entering the business market in India, there are a number of factors to take into account including culture, politics and business etiquette.
You can start by taking a look at the extensive information about doing business in India on the Austrade website.
- The Office of the Controller General of Patents, Designs and Trade Marks
- Copyright Office
- Plant Varieties Registry
- Madrid System
- Patent Cooperation Treaty
- Export Council of Australia
- Professional advice - If you are considering exporting to India, it is recommended that you contact an IP professional experienced in Indian IP law and trade to advise on local IP, customs and other laws regulating imports and trade in India. Australian IP professionals can facilitate this contact.