ASWAL ASSOCIATES- Intellectual Property Law firm India

On January 30, 2019, the Parliament of Myanmar passed the country's first modern Trademark Law, marking a significant step toward aligning Myanmar's intellectual property regime with international standards. This legislation will replace the existing practice—under which trademark rights are secured merely by registering a Declaration of Ownership with the Office of the Registration of Deeds—with a formal, examination-based trademark registration system. To administer this new regime, Myanmar will establish an Intellectual Property Office ("IPO") under the Ministry of Commerce. Transition for Existing Registrations Recognizing that numerous trademarks are already on record under the old declaration-based system, the IPO will introduce a "soft-opening" period, commencing in January 2020, during which owners of existing registrations may re-file their marks with the IPO. This re-filing window will remain open for six (6) months, and re-filed marks will be a...

The Patent (Amendment) Rules, 2019 came into effect on September 17, 2019, introducing significant changes to the framework governing expedited examination of patent applications in India. Rule 24(C) has been amended to expand the categories of applicants eligible for expedited examination. Previously limited to a narrow set of circumstances, the Rule now recognizes ten distinct categories under which an applicant may request expedited examination: Where India has been indicated as the International Searching Authority (ISA) or elected as the International Preliminary Examining Authority (IPEA) in the corresponding PCT application; Where the applicant qualifies as a start-up; Where the applicant qualifies as a small entity; Where the applicant(s) is/are natural person(s), and at least one such applicant is a female; Where the applicant is a Government Department; Where the applicant is an institution established by a Central, Provincial, or State Act, and is owned or controlled...

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...