Trademark Registration in India for US Companies

Trademark Registration for US Companies in India

The United States remains India's largest trade partner, with bilateral trade exceeding $190 billion annually and American FDI into India surpassing $60 billion since 2000. For US companies expanding into India — whether through a subsidiary, branch office, or distribution partnership — registering your trademark in India is not merely advisable, it is essential. A US trademark registration with the USPTO does not provide any protection in India; Indian trademark law is territorial, and only a registration with the Indian Trade Marks Registry grants enforceable rights.

India's trademark registration framework operates under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. The system follows the Nice Classification (45 classes), and foreign applicants — including US corporations, LLCs, and partnerships — can file directly with the Indian Registry or designate India through the Madrid Protocol. Both the US and India are members of the Madrid Protocol, giving American companies a streamlined route to Indian trademark protection through WIPO.

Beyond brand protection, trademark registration in India is critical for US companies that license their brand to Indian subsidiaries or franchisees. Royalty payments from an Indian licensee to the US trademark owner are subject to withholding tax, and the India-US DTAA directly impacts the net royalty income received by the US parent. Without a registered trademark in India, enforcing licensing agreements and defending against infringers becomes significantly harder.

BeaconFiling provides end-to-end trademark registration services for US companies entering India, handling everything from trademark search and Nice Classification strategy to filing, examination response, and post-registration maintenance.

How the India-US DTAA Affects Trademark Registration

The India-US Double Taxation Avoidance Agreement, in force since 1989 and amended through a 2000 protocol, has significant implications for how trademark royalties are taxed when flowing between India and the United States.

Royalty Withholding on Trademark Licensing

Under Article 12 of the India-US DTAA, royalties paid by an Indian entity to a US trademark owner are subject to a maximum withholding tax of 15% on the gross amount. This is lower than India's domestic withholding rate of 20% (plus surcharge and cess) under Section 115A of the Income Tax Act. The 15% treaty rate applies to payments for the use of, or the right to use, trademarks, trade names, service marks, and associated brand assets.

Fees for Included Services (FIS) — The Make Available Clause

The India-US DTAA contains a unique "make available" clause under Article 12. If the US parent provides trademark-related consulting services (such as brand strategy, trademark portfolio management, or IP advisory) to the Indian subsidiary, these payments are classified as fees for included services (FIS) at 15% only if the service "makes available" technical knowledge that the Indian entity can independently apply. Routine trademark administration services typically do not meet this threshold.

Permanent Establishment Risk

US companies licensing trademarks to Indian entities should be aware of permanent establishment (PE) risk. If the US trademark owner exercises significant control over how the Indian entity uses the brand — approving marketing materials, controlling product quality, or dictating pricing — Indian tax authorities may argue that the US company has a PE in India, subjecting its profits to Indian corporate tax. Proper structuring of the trademark license agreement is essential to mitigate PE risk.

Claiming Treaty Benefits

To claim the reduced 15% withholding rate under the DTAA instead of the domestic 20% rate, the US entity must obtain a Tax Residency Certificate (TRC) from the IRS and file Form 10F with Indian tax authorities. The Indian entity deducting TDS must apply the treaty rate and retain TRC documentation for audit purposes.

Document Requirements from the USA

The USA is a member of the Hague Apostille Convention, which simplifies document authentication for Indian filings. All documents from the US require apostille certification (not embassy attestation) for acceptance by Indian authorities.

Documents for Trademark Filing

• Power of Attorney (Form TM-48): Authorizing an Indian trademark agent to file and prosecute the application on behalf of the US applicant — must be signed by an authorized officer and apostilled
• Certificate of Incorporation / Registration: Proving the legal existence of the US entity (corporation, LLC, or partnership) — apostilled copy
• Trademark representation: Clear image of the mark in JPEG format (minimum 8 cm x 8 cm) for device or logo marks; word marks can be filed in standard characters
• List of goods/services: Specification of goods and services classified under the Nice Classification system — must match the scope of protection sought
• Priority document (if applicable): If claiming priority from a prior USPTO filing under the Paris Convention, a certified copy of the US application must be submitted within three months of the Indian filing date
• User affidavit: If the mark is already in use in India (e.g., through exports or e-commerce), an affidavit of first use with supporting invoices, packaging, and advertising materials

Additional Documents for Madrid Protocol Route

• International application form filed through the USPTO (Office of Origin)
• Designation of India as a contracting party in the WIPO international registration
• Declaration of intent to use the mark in India (required by the Indian Registry for Madrid designations)

Step-by-Step Trademark Registration Process

Here is the structured process BeaconFiling follows for US companies registering trademarks in India:

Step 1: Trademark Search and Clearance

Before filing, conduct a comprehensive search of the Indian Trade Marks Registry database (IP India) and common law sources to identify conflicting marks. The search covers identical and phonetically similar marks across relevant Nice Classification classes. This step prevents costly opposition proceedings and refusals. BeaconFiling provides a detailed search report with risk assessment within 2-3 business days.

Step 2: Nice Classification Strategy

India follows the Nice Classification system with 45 classes (Classes 1-34 for goods, 35-45 for services). US companies often need multi-class protection — for example, a technology company may need Class 9 (software), Class 35 (business services), Class 38 (telecommunications), and Class 42 (technology services). Each class requires a separate government fee of INR 9,000 (~$108) for companies filing online.

Step 3: Application Filing

File the trademark application with the Indian Trade Marks Registry using Form TM-A (for direct filing) or through the Madrid Protocol via WIPO. The application must include the trademark representation, applicant details, goods/services specification, and the government fee. BeaconFiling files electronically through the IP India portal for faster processing.

Step 4: Examination

The Indian Trade Marks Registry examines the application for registrability under Sections 9 and 11 of the Trade Marks Act, 1999. The examiner checks for absolute grounds of refusal (descriptiveness, deceptiveness, genericness) and relative grounds (conflict with prior marks). If objections are raised, the applicant must respond within 30 days. BeaconFiling prepares detailed examination responses citing Indian and international case law.

Step 5: Publication and Opposition

Once the examiner clears the application, it is published in the Trade Marks Journal for a four-month opposition period. Any third party can file a notice of opposition during this window. If no opposition is filed, the mark proceeds to registration. If opposition is filed, a formal hearing process follows, which can take 12-18 months to resolve.

Step 6: Registration Certificate

Upon successful completion of the opposition period (or resolution of opposition), the Trade Marks Registry issues the registration certificate. The registration is valid for 10 years from the filing date and is renewable indefinitely in 10-year increments by filing Form TM-R and paying the renewal fee.

Timeline and Costs

Registration Timeline

Cost Breakdown

For a multi-class filing strategy tailored to your brand, read our blog on trademark registration in India for foreign brands.

Common Challenges for US Companies

Prior Conflicting Marks in India

India has a large trademark register with over 8 million applications filed to date. US companies frequently discover that their brand name — or a confusingly similar variation — has already been registered or applied for in India by a local entity. In some cases, this is legitimate independent adoption; in others, it is trademark squatting. BeaconFiling conducts comprehensive pre-filing searches and advises on opposition, cancellation, or co-existence strategies. Read our guide on IP protection in India for foreign companies.

Descriptiveness Objections

The Indian Trade Marks Registry frequently raises objections under Section 9(1)(b) for marks that are descriptive of the goods or services. US companies accustomed to the USPTO's approach may find India's descriptiveness threshold different — marks that are registered in the US are sometimes refused in India. Evidence of acquired distinctiveness (Section 9(1) proviso) through prior use and advertising in India can overcome this objection.

Madrid Protocol Delays and Provisional Refusals

While the Madrid Protocol provides a convenient single-filing route, Indian examination of Madrid designations can be slower than direct national filings. India has 18 months to issue a provisional refusal, and response windows for provisional refusals are tight. US companies using the Madrid route should engage Indian trademark counsel proactively. Read our comparison of trademarks, patents, and copyrights in India for a broader IP strategy.

Royalty Structuring and Transfer Pricing

When a US parent licenses its trademark to an Indian subsidiary, the royalty rate must comply with India's transfer pricing regulations. The arm's length royalty rate is typically benchmarked against comparable uncontrolled transactions (CUP method) or profit-based methods. Overstated royalties can be disallowed by the Indian Transfer Pricing Officer, resulting in additional tax liability and penalties. Our blog covers US-India IP transfer royalty tax traps in detail.

FEMA Compliance for Royalty Remittances

Royalty payments from an Indian entity to a US trademark owner require compliance with FEMA regulations. The Reserve Bank of India has liberalized royalty remittances under the automatic route (no prior RBI approval needed), but the Indian entity must ensure proper TDS deduction, Form 15CA/15CB certification by a Chartered Accountant, and documentation of the trademark license agreement. See our IP licensing to Indian subsidiaries — tax and FEMA guide.

Why Choose BeaconFiling

BeaconFiling specializes in trademark registration for US companies entering India. Our team combines IP expertise with deep knowledge of India-US DTAA structures, FEMA compliance, and transfer pricing — ensuring your trademark is not only registered but also commercially optimized for cross-border brand licensing. We have filed trademarks for American companies across sectors — from SaaS and fintech to consumer brands and manufacturing — and handle the full lifecycle from search to renewal.

Schedule a free consultation to discuss your Indian trademark strategy, or explore our trademark registration service for a complete overview. Already have a US trademark? Read our blog on getting an Indian trademark from an existing US or EU mark.

Frequently Asked Questions