ASWAL ASSOCIATES- Intellectual Property Law firm India

India became a member of the Madrid Protocol on July 8, 2013. At the time, the advantages of filing through the Madrid System were substantial when compared to filing a Convention or ordinary application directly in India. Initial Advantages of the Madrid Route Under the Madrid System, there was no limitation on the number of goods or services that could be listed in the specification. By contrast, applicants filing directly in India were required to pay additional fees for every character beyond 500 (excluding spaces) in the description of goods or services. Furthermore, Madrid applicants were not required to pay an association fee, whereas direct applicants with prior pending or registered applications for the same mark were liable to pay an association fee for each such prior application. Additional benefits of the Madrid route included savings on attorney fees and the convenience of centralized management of a trademark portfolio across multiple jurisdictions. Narrowing of the ...

The Trademark Amendment Rules, 2017 came into force on March 6, 2017, marking one of the most significant overhauls of India's trademark procedural framework in recent years. As a practitioner who has worked with the earlier framework for years, I have set out below a detailed analysis of the key changes, their practical implications, and what applicants, brand owners, and startups should watch for going forward. 1. Consolidation of Forms: A Welcome Simplification One of the most immediately visible — and genuinely positive — changes brought about by the 2017 Rules is the drastic reduction in the number of forms prescribed for trademark proceedings. Under the earlier regime, practitioners had to navigate a bewildering array of forms, each tied to a narrow, specific type of application or proceeding. This fragmented structure often led to confusion, procedural delays, and inadvertent errors arising from the use of an incorrect form. The amended Rules have consolidated this mul...

The Question Before the Court In Indian Performing Rights Society Ltd. v. Sanjay Dalia , the Supreme Court was called upon to settle a recurring and commercially significant question: where a plaintiff's principal place of business is at a location where the cause of action has also arisen, can the plaintiff nonetheless choose to sue at a different place — typically the location of a branch office — merely because it also carries on business there? The Court answered this decisively in the negative, holding that Section 62 of the Copyright Act, 1957 and Section 134 of the Trade Marks Act, 1999 must be construed purposively, and that a plaintiff residing or carrying on business at a place where the cause of action has also wholly or partly arisen must institute the suit at that place. The Statutory Scheme Section 20 of the Code of Civil Procedure ordinarily determines where a suit may be filed: under clauses (a) and (b), at a place where the defendant resides or carries on busin...

Overview The Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 empower Indian customs authorities to suspend the clearance of infringing goods, provided the rights holder has registered a notice to that effect. In practice, however, this mechanism remains significantly underused by registered proprietors and owners of intellectual property rights. Registering such a notice gives the IP owner a valuable layer of border protection against the import of infringing goods, particularly in relation to copyrights, trademarks, and designs. Patents are also covered under the Rules, but patent-related border enforcement is comparatively rare in practice, given the greater technical complexity and specialized expertise required to assess infringement at the border. Filing the Notice A notice of registration must be filed together with: a certified copy of the relevant IP right; an annexure setting out details of the right holder's rights and the grounds on which re...

Summary A five-judge bench of the Delhi High Court delivered a landmark judgment overruling the earlier three-judge bench decision in Mohan Lal v. Sona Paint & Hardwares, holding that plaintiffs can maintain composite suits combining design infringement and passing off claims against the same defendant. The Court clarified that when both causes of action arise from the same transaction and involve common questions of fact and law, they can be joined under Order II Rule 3 of the CPC to avoid multiplicity of proceedings and promote judicial efficiency. Introduction On December 14, 2018, a  five-judge bench of the Delhi High Court  delivered a significant judgment in  Carlsberg Breweries v. Som Distilleries and Breweries Ltd. , addressing the critical question of whether design infringement and passing off claims can be combined in a single composite suit. This ruling  effectively overruled  the earlier three-judge full bench decision in  Mohan Lal v...

The Trademark (Amendment) Rules, 2014 have been notified, revising the official government fees payable for trademark filings in India. With effect from August 1, 2014, the government fee for filing a trademark application has been increased from INR 3,500 to INR 4,000 per class—an increase of approximately 15%. A Pattern of Periodic Fee Revisions This is not the first such revision in recent years. The government fee had previously been increased in December 2010, when it rose from INR 2,500 to INR 3,500 per class. The latest amendment, therefore, marks the second increase within a four-year period, reflecting the Trademark Registry's ongoing efforts to align its fee structure with rising administrative and operational costs. Increase in Fee for Expedited Examination Alongside the increase in the standard filing fee, the government fee for expedited (express) examination of trademark applications has also been revised upward, from INR 17,500 to INR 20,000 per class. Expedited ...

  A Critical Analysis of Whirlpool of India Ltd. v. Videocon Industries Ltd. ( S. J. Kathawalla, J., Bombay High Court, Notice of Motion No. 2269 of 2012 in Suit No. 2012 of 2012, decided May 27, 2014) Core question: Can an infringement suit under Section 22 lie against a person who is himself a registered proprietor of a design? And, on the facts, was there infringement and passing off? Core statutory provisions: Sections 2(c), 6, 11, 19 and 22, Designs Act, 2000 I. Introduction The Designs Act, 2000 grants a registered proprietor a time-bound monopoly over the visual features of an article, but it does not say, in so many words, whether that monopoly can be enforced against another person who has himself managed to register a similar or identical design. Whirlpool of India Ltd. v. Videocon Industries Ltd. is the leading Bombay High Court authority answering this question, and it did so by adopting — and thereby entrenching — the position first taken by the Delhi High ...