Trademarks

The Trademarks Act, 1999 is the governing law of Trademarks which came into effect from September 15, 2003. This new Trademark Act has in effect repealed the old Act, Trade and Merchandise Marks Act, 1958 and Rules there under.

The new Act is broadly based on the requirements of TRIPS (Trade Related Aspects of Intellectual Property Rights) as well as the effects of the various judgments pronounced by the courts of India from 1958 till date. This Act, in all respect, is in conformance with international standards. There are far reaching changes in the trademark related issues in India offering some of the best and broad protection in the world.

The Trademarks Act, 1999 has an inclusive definition. Accordingly, a trademark must be a mark, which includes a device, brand, heading, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colours or any combination thereof which is capable of being represented graphically or in writing; and capable of distinguishing the goods/services of one from that of another.

The new definition of Trademark has enlarged the scope of registration and protection of a mark and broadly covers following:

• Trade Marks;
• Service Marks;
• Shape of Goods;
• Packaging;
• combination of colours;

AND

capable of being represented graphically

AND

capable of distinguishing the goods/service of one from that of another.

Collective Mark:

A Collective Mark is a mark owned and used by any Association or Federation. Now it is also possible to file application for a Collective Mark in the name of any Associations or Federations. Their authorized members will be allowed to use the marks of their Association or Federation.

Certification Trade Mark: A Certification Mark denotes that the

A Certification Mark denotes that the mark is certified by the proprietor of the mark with respect to its origin, material, mode of manufacture of goods or performance of services, quality, accuracy etc. The person who shall be proposed to be registered as the proprietor thereof shall make an application for the registration of a mark as a certification trade mark.

Although not compulsory, it is highly advisable to conduct a prior search to find out any identical or resembling trademarks so as to avoid any disputes at a later stage.

IT IS ALWAYS ADVISABLE TO CONDUCT A SEARCH BEFORE ADOPTING A TRADEMARK

Yes. Schedule IV of the new Trade Marks Act, 1999 has adopted the International Classification of Goods (Currently X Edition of NICE Agreement is in use) divided into 1 to 42 Classes.

Yes. Since India is a member of Paris Convention and WTO, it is possible to claim priority on the basis of first application filed in any of the member country within a period of six months.

Yes, India has acceded to the Madrid Protocol. The provisions relating to the international registration of trademarks under the Madrid Protocol have come into force in India from 8th July 2013. Accordingly, any natural person or legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of India has got a registration of a trademark or an application pending for the registration of a trademark in India may make an online application for the international registration of the trademark under Madrid Protocol.

• The Trademark.
• Full name and Address of the applicant.
• Description of Goods/services.
• If colour is to be claimed, prints should be in exact colour with colour descriptions.
• Usage of the mark in India, if any. If so, date of commencement of commercial use. If there is no use, we can file the application on the basis of “Intent – To – Use”.
• A simply signed Power of Attorney
• VII. If priority is to be claimed, date of filing, country of filing and application number. A Certified copy of the Application filed in any Convention Country is to be filed in India within six months from the date of first application.

None of the document is required to be notarized or legalized.

Yes. It is possible to file multi class application for registration of a Trademark. However, the fees have to be paid on the basis of the number of Classes included in an application.

It is also pertinent to note that, if the mark in one class is opposed, the applications in other classes will be kept in abeyance till the opposition is decided unless the application is divided by payment of additional fees.

EXAMINATION:

After an application is filed, it is examined by the Examiner of Trademarks. The Examination Report (Office Action Report) is sent usually within 30 days of filing stating the grounds of refusal to register a Trademark, if any.

The new Trademark Act, 1999 does not define the marks which are registrable but defines which marks are not registrable under the two headings - Absolute grounds or on Relative grounds.

The Absolute grounds of refusal are:

• Not distinctive or not capable of distinguishing the goods;
• Descriptive in nature of the goods or services;
• Generic names or marks common to the trade, chemical names and international non-proprietary names;
• A mark, nature of which will deceive public or cause confusion;
• A mark which is likely to hurt religious susceptibility;
• A mark which contains scandalous or obscene matters;
• A name prohibited under the Emblems and Names (prevention of Improper Use) Act, 1950;
• The Shape of Goods which
  • is purely Functional
  • is necessary to obtain technical result
  • gives substantial value to the goods

The Relative grounds of refusal are:

• A mark which is identical or similar to an earlier registered trademark in respect of the identical or similar goods/services.
• A mark which is identical or similar to an earlier registered trademark in respect of different goods/services. However, this matter can be considered in Opposition proceedings only.

To overcome these objections, a written submission is to be made within a period of 30 days with suitable evidence, preferably, in the form of an Affidavit.

If the Examiner is satisfied with the reply, he may accept the application or call for a personal hearing before the Asst. Registrar of Trademarks before whom the matter is required to be argued. If the Asst. Registrar is satisfied with the arguments and the evidences submitted in support thereof, he will accept or reject the same as the case may be.

However, if no Reply is received by the Examiner or no request is made for hearing within the stipulated time-frame then the said application of the mark shall be treated as abandoned for lack of prosecution under Section 132 of the Trade Marks Act, 1999. In such a case, the Applicant does not have a right of Appeal. However, the Applicant can file a Writ Petition.

ADVERTISEMENT:

Once the application is accepted, it will be advertised in Trademarks Journal in due course of time.

OPPOSITION:

Once the application is advertised, any aggrieved person, may, within a period of three months from the date of publication of the Journal or availability of the Trade Mark Journal, which ever is later give Notice of Opposition in writing stating the grounds of opposition to the registration of advertised mark. This period of three months may be extended for a period of one month.

The Applicant will then be required to file its Counter Statement within a period of two months from the date of receipt of Notice of Opposition.

Thereafter, both the parties are required to file evidences in support of opposition in a form of Affidavit and after giving an opportunity of being heard, the matter is decided by the Registrar.

REGISTRATION:

If there is no opposition or if any opposition is decided in favour of the Applicant, the mark is entered in the Register and a Certificate of Registration is issued accordingly.

Registration of a Trademark is valid for a period of 10 Years from the date of application. The registration may be renewed at interval of every 10 years. Registration is perpetual provided periodical renewals are made. No evidence of use is required at the time of renewal.

Yes. Non payment of renewal fees will result in lapse of registration. However, the lapsed registration may be revived and restored within a period of 1 (one) year from the due date of renewal upon payment of additional fees.

Yes. Any registered Trademark can be cancelled or expunged at the instance of any aggrieved person on the grounds of no bona fide continuous use of a Trademark in respect of goods / services it is registered for a period of 5 years and 1 month.

It is not possible to exactly specify the time period within which the entire registration process would be competed. However, generally, it takes about 12 to 18 months within which the entire process of registration could be completed provided no major dispute arises.

It is not mandatory to put or apply any symbol or legend near the mark but Use of Symbols / Legends is highly advisable (e.g. use of letters ® and TM in case of registered and unregistered marks respectively.)

It is a criminal offence to indicate an unregistered Trademark as registered Trademark and attracts penal provisions of the Act.

Infringement:

A registered trademark is infringed, if a person unauthorizedly uses the identical or confusingly similar Trademark in relation to the goods/services for which it is registered.

• Infringement action is possible only for the Registered trademark and in such cases plaintiff has to show the identical or deceptively similar trademark is being used without any authority by the defendant in relation to the goods covered under his registration. No need to show the proof of actual harm or loss to his business is necessary.

TEST OF INFRINGEMENT CAN BE LIKELIHOOD OF CONFUSION, MISTAKE, DECEPTION OR DELIBERATE COPYING.

Passing off:

• Passing off is a form of Tort based on Common Law.
• It is an actionable wrong to pass off one’s goods or business as and for the goods or business of others by whatever means.
• The essential characteristics which must be present in order to create a valid cause of action for passing off has been described by Lord Diplock in Erven Warnink Vs Townend (1980) RPC 31 at 93 (HL) which are as follows:
  • Misrepresentation
  • made by a person in the course of trade,
  • to prospective customers of his or ultimate customers of goods or services supplied by him,
  • which is calculated to injure the business or goodwill of another trader,
  • which causes actual damage to a business or goodwill of the trader by whom the action is brought or will probably do so.

Civil remedies:

• Temporary and permanent injunction to restrain other from the using the mark in whatever way.
• To claim damages OR an account for profit
• Seizure of the infringing goods/labels/advt. materials for destruction.

Criminal action:

• by conducting raids
• to seize the infringing goods/ labels/ advertising and printing materials etc.
• Penalty for these offences are imprisonment for a term which may extend to 3 years or fine or both. However, if the offence relates to the Food or Drugs, the punishment of imprisonment may extend to three years.
Penalty amount may increase upto INR 200,000.00