| TradeMarks | |
» | What marks can be registered in India | |
» | Main requirements of Trademarks | |
» | Trademark law in India | |
» | Well Known Mark | |
» | Consideration for determining a "well known mark" | |
» | Trade Mark Search | |
» | Defences against previous Registration | |
» | Trademark Applications in India | |
» | Trademark offices in India | |
» | Trademark filing requirements in India | |
» | Description of goods or services | |
» | Trademark Registration in India | |
» | Express Examination of Application | |
» | Publication of Trademark Application | |
» | Opposition | |
» | Registration of Trademark | |
» | Term of Registration & Renewal | |
» | Licensing and Assignment | |
| | | |
| | Aswal Associates- Attorneys at Law & Intellectual Property firm of IP/ Trademark Lawyer/ lawyers/ Attorney/ Advocate/ Advocates/ agent/ agents
| |
| | | |
| | | |
| | | |
| | | |
| | | |
| | | |
| Trade Marks | |
| | 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 marks can be registered in India
| |
| | 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:
(1).......
(2)........
(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. |
| Main requirements of Trade marks | |
| | 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.
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 "registration". |
| 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. Recently India has signed Madrid Protocol that will allow Foreign Applicants to file an International Application designating India (once notification is issued in this regard). |
| 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." |
| Consideration for determining a "well known mark" | |
| | 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 trademark.
(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.
|
» | 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. An ordinary trade marks search result can be obtained within 2 weeks of request in case of word mark and within 30 days in case of device/logo mark. An expeditious search report can be obtained within 7 days from the date of request on filing extra official fee. Under Indian Trademarks Law, it is also possible to obtain a preliminary advice from the Registrar of trademarks a preliminary advice as to distinctiveness of a trademark sought to be registered. |
| 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 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.
|
| 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: - 6 copies if in black and white, if provided in print form or single copy if provided soft copy vide email
- 12 copies if in color, 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
- 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 can be filed later (before or along responding to official letter). Notarisation is not mandatory.
|
| Description of goods or services | |
| | Under Indian trademarks law, the specification of goods or services must be within 500 characters. In event the description exceeds 500 words prescribed fee must be paid for each additional character along with an application to that effect. |
| Trademark Registration in India | |
| | Following stages are ordinarily encountered while registering a trademark in India:
1. Filing of trademark application in India and issuance of fee receipt with application number
2. Issuance of official acknowledgement ordinarily within 30 days
3. Issuance of Official letter with objections, if any
4. Replying to official letter within 1 month
5. Hearing, if required
6. Provisional acceptance of trademark application
7. Publication in the Indian trademark Journal
8. Opposition, if any, within 3+1 months from date of publication of the application
9. Registration of Trademark, if no opposition if filed or is set aside
10. 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. Within 3 months from the date of request the Registrar shall issue an Examination report. |
| Publication of Trademark Application | |
| | After the trademark application has been provisionally accepted by the Registrar of the Trademarks, the application shall be published in the Indian Trademarks Journal inviting opposition from public to the 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 3 months, further extendable for a period of 1 month upon prior request.
On filing of notice of opposition the application shall not proceed towards registration until the opposition is set aside. |
| 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. |
| Term of Registration & Renewal | |
| | 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 | |
| | Patent are like moveable property and the patentee has the right to use, sale, transfer, license, mortgage and pledge the patent. However the agreement must be in writing, properly stamped and by all the owners of the patents and should be registered within six months of execution of agreement by filing an application for registration of agreement with the Controller of Patents. The terms of the agreement must be clear and explicit. |
| | |
|
| | |
| | |
|
| | |
| | |
|
| | |
| | |
|
| | |
| | |
|
| | |
| | |
|
| | |
| | |
|
| | |
| | | |
