RECENT AMENDMENTS IN TRADE MARK RULES INDIA

In a further step to achieve complete transparency in the Trade Marks Registry, Office of the Controller General of Patents, Design and Trade Marks, India has made available to the public complete details of pending Trade Mark Applications, Registered Trade Marks including the Prosecution History, Examination Report, Copy of the Application, e-Register of Trade Marks, Copy of the Trade Mark Certificate, Opposition details etc. The details can be seen by logging on https://www.ipindiaonline.gov.in/eregister/eregister.aspx

Further, the Trade Mark Rules, 2002 have been amended and Trade Mark (Amended) Rules, 2010 have come into force with effect from May 20, 2010. The major change is amendment in Fourth Schedule of the Trade Mark Rules i.e. adoption of all 45 international classes. Earlier international classes 43, 44 and 45 were merged in class 42 in India, but from May 20, 2010 separate application has to be filed for services covered under International class 43, 44, 45. Another change in insertion of proviso to Rule 62(3), that provides for issuance of copy/ duplicate registration certificate without any additional cost, if the Registrar is satisfied on a claim of Registered Proprietor supported by evidence that registration certificate has not been received by him. But further proviso specifies that no such copy/ duplicate registration certificate shall be issued where such request is received after expiry of time limit for renewal or registration or restoration of the registered trade mark.

Delhi trade mark registry has also geared up for expediting the examination process and total time frame for registration and has directed for supplying user affidavit in support of user along with filing for fresh applications and also for pending applications that are yet to be examined.

YAHOO!’S YODEL FIRST SOUND MARK GRANTED IN INDIA

Yahoo!’s yodel became the first sound mark to be granted by Indian Trade Marks Registry. As per the definition of mark under the Indian Trademark Act, 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. As per the provision of the Indian Trade marks Act 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. It also denotes the origin of goods and carries goodwill of the business in respect of which it is used.Further, the Indian Act requires that trademark must be distinctive (adapted to distinguish the goods/services of the applicant from that of others) and must not deceptive.The Trademarks Registry granted registration to Yahoo!’ yodel on August 18, 2008. The sound mark can be registered in India as they are capable of being represented graphically i.e. in the form of musical notes thus satisfying the requirement of the Indian Trade Marks Act. As per the Indian Trade Marks Act one of the essential and inherent requirement of a trade mark is that it should be capable of being represented graphically and must be able to distinguish the good or services in respect of which it is employed from that of others.Smell marks are still not registered in India as it cannot be represented graphically like musical notes although they satisfy other requirements of the Indian Trade Marks Act.