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.
What is a Mark
A ‘Mark’ includes a device, brand, heading, label, ticket, name (including abbreviations), signature, word, letter, numerals, shape of goods, packaging or combination of colours and any combination thereof. India allows registration in respect of goods as well as service marks, shape of goods, packaging or combination of colours. Further a single multiclass application can be filed in India in respect of all the international classes.
Trademark 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. India has also signed Madrid Protocol that will allow Foreign Applicants to file an International Application designating India (once notification is issued in this regard).
Main requirements of a Trade Mark
The two main requirements of a trade mark are:
It must be distinctive (adapted to distinguish the goods/services of the applicant from that of others) and
It must not be 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. Prima facie, a word having a direct reference to the character or quality of goods is not registrable. However it is registrable, if it has acquired distinctiveness through long and continuous use. Under Indian Trademarks law more significance has been given to “use” of the mark than “filing of application towards registration”.
What is a Well Known Mark
The concept of “well known mark” has been introduced in India and amended 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.” It is possible to get declaration as to well known mark in India by filing request with the Indian TM Registry along with prescribed fee and supporting documents.
Consideration for determining a “well known mark”
While determining whether the mark is well-known mark, the registrar will take in to consideration the following:
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.
The duration, extent and geographical area of any use for that trademark.
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.
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.
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.
Where 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.
The Trademark has been used in India
The Trademark has been registered
The application for registration of the Trademark has been filed in India
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
The trademark is well known to the public at large in India.
Trade Dress And Its Interpretation By Courts In India:
Trade dress refers to characteristics of the visual or sensual appearance of a product that may also include its packaging which may be registered and protected from being used by competitors in relation to their business and services. The characteristic includes their shape (3 dimensional), packaging, colour, graphic design or even the smell of the product. The concept of trade dress was first brought in under the Trademarks Act, 1999 under the definition of ‘Mark’ which replaced the previous Trade and Merchandise Marks Act, 1958.
Trade Mark Search
To avoid objections and/or oppositions, it is desirable to conduct a Trade Mark search to ascertain existence of any prior registrations of identical or similar marks. The register of Trademarks is available online now and it is possible to make word, phonetic as well as device search. The only drawback is that new applications are updated after only 30-60 days and their details are not reflected in search.
Defences against previous Registration
The following defences are available against any previous registration of any identical or similar trademark already existing in Register of Trademarks a) Honest concurrent use; b) Acquiescence; or c) Prior user.
Trademark Applications in India
Trademark Applications in India can be classified under two categories depending upon their priority claim:
Ordinary trade mark application without any priority
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
Trademark offices in India
There are five trademark registries in India located at New Delhi, Ahmedabad, Mumbai, Chennai and Kolkata and depending upon territorial jurisdiction where the Applicant is located, the application has to be filed. For foreign applicant the application has to be filed before trademark registry within whose territorial jurisdiction the agent/ attorney for applicant is located.
Trademark filing requirements in India
Specimen of the trademark for Agent: • 7 copies if in black and white, if provided in print form or single copy if provided soft copy vide email • 7 copies if in colour, if provided in print form or single copy if provided soft copy vide email • For shape of goods 3-5 different views ( top, bottom, left side, right side and front view) Following are the basic requirements for filing of a trademark application in India:
Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
International Class
Description of goods or services
User date in India or proposed to be used, where mark is already used in India, a duly notarised affidavit in support of use is to be filed along with the Application.
Details of priority, if any, including application number, date of filing and country of filing
Translation and transliteration in English, if mark is not in Indian language
Power of authority has to be stamped as per Indian Stamps Act and preferably should be filed within one month from date of filing. Notarisation or legalisation is not mandatory.
Description of goods or services
Under Indian trademarks law, now there is no limit on the specification of goods or services. However the description must be as per the NICE classification. At times the harmonised classification is also acceptable to most of the Examiners.
Trademark Registration in India
Following stages are ordinarily encountered while registering a trademark in India:
Filing of trademark application in India and issuance of fee receipt with application number
Issuance of Official letter with objections, if any within 1-2 months from filing
Replying to objections within 1 month
Hearing, if required
Provisional acceptance of trademark application subject to advertisement in Journal for inviting oppositions
Advertisement in the Indian trademark Journal
Opposition, if any, within 4 months from date of publication of the application
Registration of Trademark, if no opposition if filed or is set aside
Issuance of Registration Certificate.
Express Examination of Application
Indian Trademarks law allows express examination of the trademark application on filing of additional official fee along with a declaration stating the reason for such request.
Advertisement of Trademark Application
After the trademark application has been provisionally accepted by the Registrar of the Trademarks, the application shall be advertised in the Indian Trademarks Journal inviting opposition from public to the trademark.
Trademark Opposition
After publication of the trademark in the Indian Trademarks Journal, the trade mark remains open to opposition by public for a period of 4 months. No further extension is available.
Registration of Trademark
If there is no opposition against the registration of the trademark application or the opposition proceedings have been decided in favour of the Applicant, the Trade Marks Registry shall accept the trademark and issue a registration certificate to that effect. Nowadays the Registration certificate are issued online.
Duration of Registration and Renewal of Trademark
The duration of registration of a trademark is 10 years from the date of filing of application in India and is further renewable for every 10 years thereafter.
Licensing and Assignment
Trademark can be licensed as well as assigned like moveable property for a consideration. Trademarks carry goodwill and can be assigned with or without goodwill.
Enforcement of Trademark Rights
Under Indian Laws statutory protections is available to both registered marks as well as unregistered marks. In respect of trademarks Indian law provides both civil as well as criminal remedies for taking action against any infringement of a trademark
Appropriate forum:
A suit for infringement of trademark has to be filed in a District court or High court (depending upon pecuniary jurisdiction) within whose territorial jurisdiction the cause of action has arisen.
Before Trademark Registry- Administrative Remedy
Opposition (before the Registrar)- Opposition can only be done after publication of the trademark and within 4 months of date of availability of Journal. No further extension is available.
Cancellation (before the Registrar as well as Appellate Board)- 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 non-use till the cancellation petition
Before Courts- Civil Remedy
Under common laws, the proprietor of a trade mark, whether registered or unregistered, may sue for passing off in respect of any trade mark used by defendant that is identical with or deceptively similar to his trade mark. The registered proprietor also has the remedy to take infringement action
Injunction- Ex parte/ permanent
Damages
Anton Pillar Order
Seizure of goods
Rendition of accounts
Before Courts- Criminal Remedy
Besides Civil remedies, the proprietor of the trademark as well as licensed users also have the option to initiate criminal prosecution against the infringers etc. Following acts have been recognised as offences, against which a criminal complaint can be registered
Falsifying a Trade Mark
Falsely applying a Trade Mark
Making or possessing instruments for falsifying a Trade Mark
Applying false trade description
Applying false indication of country of origin
Tampering with an indication of origin already applied to goods
Selling goods or possessing or exposing for sale of goods falsely marked
Falsely representing a trade mark as registered
Improperly describing a place of business as connected with the Trade Marks Office
Falsification of entries in the Register
Procedure and punishment
The complaint for any of the above offences can be made/filed before the Magistrate within whose territorial jurisdiction the offence is committed. Besides confiscation of goods and machinery, the Code of Criminal Procedure, 1973 also provides for imprisonment starting from 6 months to 3 years for the offences or fine or both
Confiscation of imported goods bearing counterfeit marks
Indian Customs Act, 1962 provides for confiscation of imported goods bearing counterfeit marks if upon a representation made to Chief Customs Officer, he has reasons to believe that the alleged goods bear a false/ counterfeit Trade Mark. The Chief Customs Officer may require the importer of the goods or his agent to produce any documents in their possession relating to said goods along with information as to the name and address of Consignor as well as importer of said goods and may initiate proper action for non compliance or offence.
Trans-border Reputation
Trans-border reputation of trademarks is well recognised and accepted in India even if said mark is not registered in India
