TRADEMARK LAW IN INDIA

THE IMPORTANCE OF A TRADEMARK

A trademark is a token of identification adopted and used by a company in order to bring to the mind of the consumer (whether by description or symbolization) the products/services offered by the said company. A Trademark is important because in the mind of the consumer it speaks to the origin and quality of the product/ service offered by the company. It’s aim, therefore, is to avoid any consumer missconception in this regard by using its token to differentiate its products/services from that offered by other companies.

A BRIEF INTRODUCTION TO THE INDIAN LAW IN TERMS OF TRADEMARKS

All member nations of the World Trade Organization (WTO) are signatories to a legal agreement on the Trade Related Aspects of Intellectual Property Rights. ( Note: India signed this agreement in 1994.) which came into effect on the 1st January 1995. In respect of trademarks the agreement cnsiders that globalization of trade means that counterfeit goods and piracy are rife and easily obtainable thereby posing a threat to and in turn increasing the value and need for brand/trade names.

TRIPS outlines 1) the minimum standards of protection member nations such as India must adhere yo in order to adequately safeguard distinguishing marks, service marks and the recognition thereof, and 2) `structured procedures for enforcement such as indefinite periodical renewal of registration, abolition of compulsory licening of Trademarks etc. Accordingly India changed it’s Indian Trade and Merchandise Marks Act 1958 ( national law) to The Trade Marks Act 1999 so that it is in line with the Outcomes of TRIPS agreement and therefore in accordance with international standards.

Some of the features of this new and revised act are:

  • Registration of service marks
  • Filing of multiclass applications
  • Ammending the term of registration to 10 years.
  • Recognition of well known marks

In addition the Indian jJudiciary has gone as far as to award prtotectin to Domain Names. (see: Tata Sons Ltd. v. Manu Kosuri&Ors, [90 (2001) DLT 659] and Yahoo Inc. v. AkashArora [1999 PTC 201])

As a Common Law Country s135 Trade Marks Act allows for common principles such as infringement and/or passing of actions to be filed as against trademarks.

SOME IMPORTANT DEFINITIONS

>TRADE MARK: Any word, logo,symbol,shape,smell,or combination of colours is a trade mark. It tells yous it’s beginnings that is where the goods/services orignated. A trade mark is divided into two categories: 1) a >Word mark, or 2) a >Device mark. A word mark are words or letters arranged with no specific style. ( i.e.: it is a text only mark) whereas a >Device mark is a mark that gas artistic features or a unique colour combination.

SERVICE MARK: A trademark for Services.

TRADE MARK CLASSIFICATION: There are 45 classes listed in the Trade Mark registry. Classes 1 to 34 pertains to GOODS and classes 35 to 45 pertain to SERVICES.

TRADE MARK SEARCH: One is encouraged to carry out a “pre-registration” search in order to establish whether or not there is an existing deceptively similar and confusing marks. As a result the applicant will be knowledgeable as to the likelihood of any oppositions.

TRADE MARK FILLING: An application must be filed in adherence to the Trademarks Act and the Trademarks Rules. The following documents must be presented:

  • Full description of the Applicants
  • Month and Date of FIRST or INTENDED FIRST use in India. (USER DETAIL)
  • A foreign application may be filed as a priority claim as long as it is filed no later than 6 months after first filing of an application in the parent (foreign) country.
  • Any document containing additional application information (ADDITIONAL REPRESENTATIONS)
  • The applicant must give written authority to the trademark attorney to proceed with the application (POWER OF ATTORNEY)

TRADE MARK PROSECUTION

EXAMINATION REPORT AND REPLY TO EXAMINATION REPORT; The registrar shallexamine the application and issue an Examination Report stipulating any objections from the date of issue. In turn, the applicant must reply no later than 1 month after the Examination Report is issued.

Once, all the objections are renounced and a hearing is held the application will be published advertisement in the Trademarks Journal.

OPPOSITION

A Notice of opposition must be filed within 4 months of publication/ re-publication of advertisement.

The applicant fills a COUNTER STATEMENT MUST no later than 2 months of the NOTICE OF OPPOSITON being served.

Upon receipt of a Counter Statement the opponent ought to provide evidence supporting his claim In Terms Of Rule 45 Trade Mark rules 2017, no later than 2 MONTHS from the date of receipt.

The Applicant must file same supporting his/herapplication In Terms of RULE 46 opposing the abovementioned evidence.

RULE 47 provides the opponent with a chance to reply no later than 2 months of the application being served.

The case is then heard and a decision to register is either granted/denied. Registration of a Trade Mark (if permitted) will last 10 years and the applicant will be granted a certificate ensuring it. The Trade Mark can be renewed via application by 6 months before the expiration of the 10 years (renewed date).

LEGAL REMEDIES AGAINST INFRINGEMENT AND/OR PASSING OFF

In accordance with Trade Marks Act any party can simultaneously seek both civil and criminal remedies in respect of an infringement or a passing off action.

INFRINGEMENT: The registered owner of a Trademark has exclusive rights. An infringement of a trademark takes place when one uses an identical/similar or deceptively similar mark without due

permission. NOTE HOWEVER, Indian Law uses common law principles to protect the vested rights of a prior user against a registered proprietor.

PASSING OFF: is a tortious common law used to impose unregistered trademark laws. Passing off is when a person/entity misrepresents that entity as being the owner or having an affiliation or nexus to that trademark thereby damaging the goodwill of the proprietor of the trademark. Registration of a trademark in this regard is of no consequence.

IN INDIA a combined action for both of the above actions can be initiated and trademark registration is not essential. More importantly, an infringement is a knowable offence and as such is a criminal offence. These mechanisms are in place to accelerate the protection of marks in India and reduce such contraventions or violations of trademarks.