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Friday, May 25, 2007

TRADEMARKS LAW IN INDIA

Indian Trademark Law has been codified in conformity with the International Trademark Law and is about to undergo an amendment to be at par International Trademark Law.


Recently India has signed Madrid Protocol that will allow Foreign Applicants to file an International Application designating India like many countries around the globe e.g China. Though unlike China and many other countries Multi class filing is allowed in India.

Statue:

The various statues dealing with Intellectual property laws in India are as follows:

1. Trademarks Act, 1999

2. Copyright Act, 1957

3. Patents Act, 1970 as amended by Patents (Amendments) Act, 2005

4. Designs Act, 2000

5. Code of Civil Procedures, 1908

6. Indian Penal Code, 1860

7. Geographical Indication of Goods (Registration & Protection) Act, 1999

8. Semiconductor, Integrated Circuit Layout Design Act, 2000

9. Plants Varieties Protection and Farmers’ Rights Act, 2001

10. Information Technology Act, 2000

Requirement:

A ‘Trademark’ means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others.

A ‘Mark’ includes a device, brand, heading, label, ticket, name (including abbreviations), signature, word, letter, numerals, shape of goods, packaging or combination of colors and any combination thereof.

The two main requirements of a trademark are that it must be distinctive (adapted to distinguish the goods/services of the applicant from that of others) and not deceptive. Therefore while selecting a trademark, words that are directly descriptive of the goods, common surnames or geographical names should be avoided as these confer weaker protection to the proprietor even if registered.

Now the concept of “well known mark” has been introduced after the last amendment and Section 2 (zg) defines a well known mark as:

“Well-known trademark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such

services that the use of such mark in relation to other goods or services would likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.”

While determining whether the mark is well-known mark, the registrar will take in to consideration the followings:

(a) the knowledge or recognition of the alleged well known mark in the relevant section of the public including knowledge obtained as a result of promotion of the trademark.

(b) the duration, extent and geographical area of any use for that trademark.

(c) The duration, extent and geographical area for any promotion of the trademark including advertising or publicity and presentation at fairs or exhibition of the goods or services

in which the trademark appears.

(d) The duration and geographical area of any registration of any publication for registration of that trademark under this Act to the extent that they reflect the use or recognition of that

trademark.

(e) The record of successful enforcements of the rights in that trademark, in particular the extent to which the trademark has been recognized as a well known trademark by any Court or Registrar under that record.

Whereas a trademark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark

as a well known trademark for registration under this Act.

“Relevant section of Public” may be actual or potential consumers of, persons involved in channels of distribution of or business circles dealing with the type of goods or services to

which the mark is applied.

The Registrar is not required to consider the following facts while determining a well known trademark.

a) The Trademark has been used in India

b) The Trademark has been registered

c) The application for registration of the Trademark has been filed in India.

d) The trademark is well known in or has been registered in, or in respect of which an application for registration has been filed in any jurisdiction other than India or

e) The trademark is well known to the public at large in India.

Priority:

For claiming a priority from an application filed in conventional country a corresponding application should be filed in India within 6 months of date of filing of original application.

Various Grounds for refusal:

Absolute grounds:

Section 9 of the Trademarks Act, 1999 sets out the absolute grounds for refusal of trademarks, which can be grouped under following heads:

a) Trademark is devoid of distinctive character;

b) Trademarks that are descriptive;

c) Trademarks likely to deceive of cause confusion;

d) Trademarks or signs that are customary in current language and in the bonafide and established and customary practice of the trade;

e) Trademarks comprising scandalous or obscene matter or likely to hurt religious susceptibilities in India;

f) Trademarks consisting of shape which are purely functional or are necessary to obtain a technical result or give substantial value to the goods; or

g) Trademarks whose use is prohibited under Emblems and Names (Prevention of Improper Use) Act, 1950.

Prohibition:

Section 13 of the Trademarks Act, 1999 prohibits registration of any word as trademark which is:

a) Commonly used and accepted name of any chemical element or any chemical compound (as distinguished from mixtures) in respect of a chemical substance or preparation; or

b) Declared by the World Health Organization and notified as such by the Registrar, as an International non-proprietary names.

Relative grounds of refusal:

Section 11 of the Trademarks Act, 1999 sets out the relative grounds for refusal of trademarks, which can be grouped under following heads:

a) identical or similar to a previous mark with and/or without similar or identical goods;

b) Prohibition of use of the trademark under passing off or law of copyright;

Statutory defense available under the Act:

For registration:

a) Honest concurrent use;

b) Acquiescence; or

c) Prior user

Against Injunction suit or criminal matters

a) Use in accordance with honest practices in Industrial or commercial matters;

b) Parallel Imports;

c) Fair use in description of the goods or services; or

d) Generic ness.

Special Considerations in case of well known mark:

As per Section 11 of the Trademarks Act, while considering an application for registration of a trademark and opposition filed in respect thereof the Registrar shall

a) protect a well known trademark against the identical or similar trademark.

b) take into consideration the bad faith involved either of the applicant or the opponent affecting the rights relating to the trade mark.

However this provision shall not effect the trademark if it trademark has been registered in good faith disclosing the material information to the Registrar or where right to a

trademark has been acquired through use in good faith before the commencement of this Act.

Enforcement of Trademarks Rights:



Opposition (before the Registrar) and Cancellation (before the Registrar as well as Appellate Board)

Opposition can only be done after publication of the trademark and within 3 months of date of availability of Journal. One month extension is available if sought before the expiry of 3

months time.

Cancellation on the ground of non-use for a period of 5 years and 3 months and proof of intention on part of the registered proprietor not to use the trademark at the filing date and nonuse till the cancellation petition.

Before the Courts: Ex-parte Injunction, Permanent Injunction, Anton Pillar Order, and /or Arrest and Seizure of goods (irrespective of registration).



Assignment/ license:

Trademarks are now recognized as a “movable property” under the Indian law and can be therefore assigned/ licensed. A trademark can be assigned with or without the goodwill

attached to it.

Renewal:

The trademarks can be renewed perpetually, are renewable for a period of 10 years on payment of prescribed fees.

Express processing:

Under Indian trademark law now it is possible to expedite the various proceeding e.g. search, examination etc. by filing a request with prescribed fees. Indian Trademarks law are at par with the International laws and has stringent procedures for safeguarding and protecting interest of the proprietor of mark.


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