Indian IP Associate for Foreign Law Firms
Trade Marks Registry · Patent Office · Copyright Office · Designs, IP India
GB Legal Associates acts as Indian associate for overseas IP firms: we file and prosecute trademarks, patents, designs and copyright with IP India, attend hearings, handle oppositions and renewals, and report every official action with the deadline, our recommendation and the official fee. Instructions and reporting are in English, from our office in Vashi, Navi Mumbai.
- Reviewed by
- Advocate, intellectual property
- Last updated
- One reporting standard. Every official action reported with the deadline, a recommendation and the official fee.
- Your client stays your client. We report to you and do not contact your client unless you ask us to.
- Deadlines confirmed in writing. Every Indian deadline is entered in our docket and confirmed back to you on receipt.
- Offices we file with
- Trade Marks Registry, Patent Office, Copyright Office
- Instructions
- By email, in English
- Reporting
- Every official action, with deadline
- Authorisation
- Form TM-48 / Form 26
- Office
- Vashi, Navi Mumbai
What can an overseas firm instruct us to handle in India?
Everything from a single filing to a full portfolio, before every IP India office.
Trademarks
Searches, Form TM-A filings, Madrid designations of India, examination replies, show-cause hearings, oppositions and counter-statements, renewals and recordals.
Patents
Paris Convention filings, PCT national phase entry within 31 months, Form 3 and Form 18 compliance, FER replies, hearings, pre- and post-grant oppositions, renewals and Form 27.
Designs
Design applications with priority within six months, objections, registration and the five-year extension.
Copyright
Registration of literary, artistic, software and musical works with the Copyright Office, including section 45 search certificates for logos.
Searches and watching
Trademark clearance and availability searches, patent prior-art and status searches, and Trade Marks Journal watching.
Portfolio maintenance
Renewal reminders, change of name and address, assignments and licences recorded with the Registry and the Patent Office.
How do instructions work with GB Legal Associates?
On instruction
Send the instruction by email
Mark or specification, classes or claims, applicant details and any priority. We confirm receipt in writing and confirm the deadline we have docketed.
Before filing
Conflict and document check
We check conflicts and send any authorisation forms ready for signature: Form TM-48 for trademarks, Form 26 for patents and designs.
Filing
File and report
We file on IP India’s e-filing systems and send the official filing receipt and application number.
Each official action
Report with a recommendation
Examination reports, hearing notices, oppositions and publications are reported with the response deadline, our recommendation and the official fee.
Ongoing
Maintain
Renewals, working statements and recordals are docketed and reminded in good time.
What should a foreign firm know about Indian practice?
A few points of Indian practice explain most of the questions we receive from foreign colleagues.
- Five Registry offices. Trademark files are handled by Mumbai, Delhi, Kolkata, Chennai or Ahmedabad. For a foreign applicant with no place of business in India, the office follows the Indian address for service. Ours places files with Mumbai.
- Relative grounds are examined. The Registry objects under section 11 to similar earlier marks, so examination reports are common even for strong marks. Replies are due within one month.
- Show-cause hearings. If the written reply is not accepted, the Registry lists a hearing, usually by video. We attend and report the outcome.
- Opposition window. After advertisement in the Trade Marks Journal, oppositions may be filed within three months, extendable by one month.
- Patent compliance forms. Form 3 (corresponding foreign applications), Form 18 (request for examination within 31 months of priority for applications filed from 15 March 2024) and Form 27 (working statement, once every three financial years) are where foreign applicants most often need reminders.
- Section 39. Indian-resident inventors need the six-week wait or a foreign filing licence before any application is filed outside India. It matters for multinational teams with inventors in India.
What should a new instruction include?
With these details we can file on the same day the instruction arrives, and send forms for signature afterwards.
- Applicant. Full legal name, legal form, country of incorporation and address, exactly as they should appear on the Indian register.
- Mark or invention. A clear image of the mark, or the specification, claims and drawings in English.
- Scope. Classes and specification, or the claims to be pursued in India.
- Priority. Country, number and date of the priority application, and the deadline you have docketed.
- Reporting preferences. Who receives reports, the reference to quote, and any client billing instructions.
Questions from foreign IP firms
Do you accept instructions for Madrid designations of India?
Yes. When the Registry issues a provisional refusal or the designation is opposed, we file the reply or counter-statement and attend any hearing. We can be appointed at that stage.
How do you report official fees?
Every report states the official fee for the next step, taken from the Trade Marks Rules or Patents Rules in force. Professional fees are agreed with you separately, in writing.
Do powers of attorney need notarisation or legalisation?
For Indian trademark and patent filings, a power of attorney signed by an authorised signatory is generally sufficient. We send forms prepared for signature.
Can you file urgently to meet a priority deadline?
Yes. Indian filings are electronic. Send the instruction with the papers you have; we confirm the deadline in writing and tell you what can follow after filing.
Can you take over files from another Indian agent?
Yes. A change of agent is recorded by filing a fresh authorisation, Form TM-48 for trademarks or Form 26 for patents. We review the file history on transfer and confirm every pending deadline to you in writing.
Do you handle litigation or enforcement?
We handle opposition and rectification proceedings before the Registry and patent oppositions before the Controller. For court proceedings we work with litigation counsel and report to you throughout.
Will you contact our client directly?
No. Unless you ask us to, all correspondence goes to the instructing firm. Your client relationship stays with you.