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.
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.
Beside goods India now allows registration in respect of service marks, shape of goods, packaging or combination of colors.
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.
In India definition of mark includes shape of goods and therefore now the three dimensional or 3-Dimensional or 3D Marks could be registered under the provisions of Indian Trademark Act, 1999. The manner in which same has to be provided while filing the trademark application is provided under sub-rule 3 of rule 29 of the Trademark Rules, which states as under:
Rule 29: Additional Representation:
(3) Where the application contains a statement to the effect that the trade mark is a three dimensional mark, the reproduction of the mark shall consist of a two dimensional graphic or photographic reproduction as follows, namely:-
(i) The reproduction furnished shall consist of three different view of the trade mark;
(ii) Where, however, the Registrar considers that the reproduction of the mark furnished by the applicants does not sufficiently show the particulars of the three dimensional mark, he may call upon the applicant to furnish within two months up to five further different view of the mark and a description by words of the mark;
iii) Where the Registrar considers the different view and/or description of the mark referred to in clause (ii) still do not sufficiently show the particulars of the three dimensional mark, he may call upon the applicant to furnish a specimen of the trade mark.
Further three dimensional marks have also been defined under the revised draft manual dated January 23, 2009.
4.2.6 Three dimensional mark- Rule 29(3).
In the case of three dimensional mark, the reproduction of the mark shall consist of a two dimensional or photographic reproduction as required in Rule 29(3).
Where appropriate, the applicant must state in the application form that the application is for a shape trade mark. Where the trade mark application contains a statement to the effect that it is a three dimensional mark, the requirement of Rule 29(3) will have to be complied with
Further a single multiclass application can be filed in India in respect of all the international classes.
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 while determining that the mark is a well known mark.
(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
(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.
For claiming a priority from an application filed in United States a corresponding application should be filed in India within 6 months of date of filing of original application.
Trademark Applications in India can be classified under following categories depending upon their priority claim.
1. Ordinary trade mark application without any priority
2. Conventional trade mark application- has to be filed within 6 months from date of filing of conventional application
In case of conventional trademark application, certified copy of the priority document has to be filed within 2 months from the date of filing of application in India.
Besides above trademark applications, there are also certification trademarks and collective trademarks that are registrable in India.
Certification Trade Marks Registration India:
It is mandatory to supply the Regulations governing use of mark, including provisions as to the cases in which the Applicant is to certify goods or services and to authorise the use of the certification trade mark, along with Application in triplicate on Form TM-49. The regulations governing the certification mark shall specify:
1. Description of the Applicant;
2. Nature of Applicant business;
3. The particulars of infrastructure like R&D, technical manpower support;
4. The applicants competence to administer the certification scheme;
5. The applicants financial agreement;
6. An undertaking from the application that there will be no discrimination of any party if they meet the requirements set down in the regulations;
7. The characteristics the mark will indicate in the certified goods on in relation to the rendering of certified services;
8. The manner of monitoring the use of the mark in India;
The Applicant must not be carrying the business in respect of which the certification mark is sought to be registered.
Various Grounds for refusal:
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.
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:
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).
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.
The trademarks can be renewed perpetually, are renewable for a period of 10 years on payment of prescribed fees.
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.
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. the time frame for accepting an application shall be brought to 18 months in months of come.