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Blog posts : "trademark laws"

Intellectual Property laws in India

May 7, 2017

In India, Trademark law dates back to 1940 when The Trade and Merchandise Marks Act (TM, Act 1940) was enacted. Soon after its launch, it was replaced by TM Act, 1958, further by TM Act of 1999 which came effective on September 15, 2003 fulfilling all the obligations under TRIPS (Trade Related Intellectual Property Rights.

The TM Act of India allows registration of service marks and three dimensional marks which follows NICE classification of goods and services, incorporated in the schedule to the rules under TM Act.

As desired, Trade Mark registry is consistently maintained under TM act till date that comes under the Registrar of Trademarks. Trade Marks Registry of India has head office in Mumbai and branches at Kolkata, Ahmedabad, Chennai and New Delhi with each office allocated its territorial jurisdiction.

Under TM Act, certification marks and Collective marks can be registered. Certification mark can be like ISO 9000 and Collective marks of the associations like Doctors, Engineers and lawyers.

1 Unconventional Marks- Any mark with ability to be represented graphically and indicative of trade usage or proprietorship is entitled to get register under the TM act as trademark. The list is not exhaustive and has huge scope for device, brand, heading, label, ticket, shape, numeral, color, goods or combination of any of these. Even sound marks are registered under TM Act.

2. Scope of ‘Graphical Representation’- Trademarks of Goods and services can be represented in paper form, including sound marks. Sound marks can be represented either in descriptive form or as traditional musical notations, but one has to be very careful in registering these trademarks.

3. Syncing the Indian Law to Tide over the hurdles of Registration- To avoid confusion a sample of melody can be submitted.

4. Who can Apply?- Any person claiming proprietorship under Individual, Company, Joint partnership, trust, association, department or a firm can apply. Both domestic and international applicants are treated equally under the TM act. A company can file for trademark even before incorporation under Companies Act, 1956.

5. Is Prior use Required? Not mandatory but for descriptive marks, prior use of the mark with proof is recommended along with the distinctiveness.

6.Is a Prior Search Necessary?- Not mandatory but in case of controversy prior search is given advantage. In case of registration of drugs, this practice is most prevalent.

7.What is the Process of Registration? Form must contain clear reproduction of sign, duly submitted in appropriate territorial office. It should indicate class of goods, or services it would apply. TM act lays down grounds for absolute and relative grounds of refusal of trademarks.  Grounds are similar to UK Trademark Act of 1994.

i.Selection of the Mark-Search before the Application- filing of application- numbering of application- meet the official objections- advertising of the application- acceptance of the application- opposition proceedings- issue of certificate of registration

8.Can the Registration Process be expedited? Option is there stating reasons with five times enhanced fee. If the registrar is convinced, examination report is issued in three months of request else the excess fee gets refunded.

9.What is the term of Registration?  Registration is valid for 10 years and renewable for next 10 years. Non renewal leads to lapse of registration.

10.How can Registration of a Trademark can be cancelled? Application can only be filed by the aggrieved person to Appellate board or Registrar of Trademarks.

11. Grounds for Cancellation/Revocation- Absence of bona fide intention to use the trademark even after three months of the approval of application or after five years or longer remained on the Register without sufficient use.

12.Assignment of Trademarks- Can be done with or without the goodwill of business but only according to the procedures laid by the Registrar concerned. The transmission must be recorded with the registrar.

13.License of Trademarks- TM act provides procedure for licensing trademarks for the registered trademarks and for unregistered with the written consent of proprietor under an agreement.

14.Rights Conferred by Registration- Exclusive rights to use trademarks on relation to goods and services for which it is granted and quick remedy in case of infringement. It stops others for using the same trademarks even if it is pending for registration.

15.Paris Convention- Reciprocity allowed for Applications from the Paris convention countries given priority if filed within 6 months from the date of priority.

16.Infringement of Trademark- must be identical, covered under same goods and services, infringement in the same course of trade, use in the same manner as to use a trademark, likely to cause confusion to the public, if it harms the character of the brand already registered.

17.Who can sue for the Infringement- Registered proprietor, his heirs, and registered users can sue, an assignee can also,

18.Passing Off- The purpose of this tort is to protect the commercial goodwill that business has generated and his reputation is not exploited.

19.Recognition of Foreign well-known marks and trans-border reputation-  International trademarks having no actual presence in India could also be enforced if shown there exists a tans-border reputation. Famous case of R. Dongre and Others vs. Whirlpool Corporation and Another

20.Orders in Infringement and Passing off suits- Court may order injunction in registered or unregistered trademarks or even in passing off. Also damages are awarded and strict criminal provisions relating to offenses and penalties. 

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