| 1. General Information on Trademarks in India
The New TradeMarks Act, 1999 has taken effect from 15 September 2003.
- One Power of Authority is sufficient for all applications.
- Multiple class applications can be filed under the New Act but there is no discount in official fees.
- The language is English, hence no translation is involved.
- It is possible to conduct a TradeMark Search in India in respect of registered and accepted Trademark.
- It will be possible for us to give you search results in relation to all accepted and registered TradeMarks within 48 hours of receiving the request for search. Search among pending Trade Mark Applications would take another ten days.
- It is also possible to do Company Name searches in India. There is an official register and this register is searchable. The register covers all Company names and the result is limited to identical citations. A search can be executed without giving details, other than the name and city of the company alongwith the date of formation or application to form and takes 4 days.
- India has acceded to the Paris Convention and has become a signatory to the Patents Cooperation Treaty (PCT) on 07 December, 1998. Priority may now be claimed within six months from the date of filing of the base application filed in anyone of the Member countries on or after 07 December, 1998. India is currently following the 7th Edition of the Nice Classification of Goods & Services (1-42).
- Two or more persons (or companies) can register a Trademark as joint proprietors.
- It is possible to register a mark in India on the basis of proposed use as well as prior use if the mark otherwise is registrable. The requirements for filing are the same.
- A Trade Mark Application is now being examined within 12 months of its filing. It now takes about 24 months after the First Official Action is issued for the mark to be registered. A mark once registered is valid for 10 years from the date of application, and may be subsequently renewed by tenure of 10 years.
Salient features of the Trademarks Act, 1999, include:
- Definition of trademark enlarged to include services, shape of goods, their packaging and combination of colours and may also include sound and smell, subject to certain conditions. Sound and smell marks have not been explicitly excluded from registration.
- Service marks, 3 Dimensional marks and collective marks can now be registered.
- Registration of trademarks which are imitations of well-known marks not to be permitted.
- Grounds of refusal enlarged.
- Term of registration and renewal is now 10 years.
- Single application for registration in more than one class (multi-class application) can be filed.
- There is no discount in Official Fees for multiclass applications. Official fees have gone up 5 to 50 times. New applications, renewals, extensions, oppositions etc. have all become expensive.
- Additional fee is payable for each character in excess of 500 characters in the specification of goods/services, at the rate of 25 US cents per extra character.
- Registration of defensive marks - no longer permitted.
- Definition of well-known mark clarified.
- The requirement of disclaimers has been abolished.
- Trademark offences to be cognizable offences. Penalties and fines for counterfeiting and other offences related to trademarks enhanced.
- Courts’ powers to grant ex parte injunctions in certain cases amplified.
- Use of another’s trademark as part of corporate name prohibited.
- Appeals against the Registrar’s orders and cancellation applications to be referred to the Appellate Board. This has taken away the jurisdiction of the High Courts in trademark appeal matters.
- No Court or authority shall have or be entitled to exercise any jurisdiction, power or authority in relation to matters of appeals or orders of the Appellate Board.
- Suit for infringement and passing off can be filed in the Court within local limits of whose jurisdiction the Plaintiff resides or carries on business or works for gain.
Cancellation due to Non-Use
- Acting on an application filed by an interested/aggrieved party for cancellation or revocation of a Registered Trademark on grounds of non-use in India, the Registrar may cancel the registered trademark if there has been no continuous use of the mark within a period of 5 years and one month from the date the mark was registered.
- For the first time, under the new Trademarks Act 1999, a “well-known” trademark (which is equivalent to a famous/notorious mark) has been defined as a mark which has become so well-known to a substantial segment of the public which uses goods /services associated with such a mark, that use of the mark in relation with other goods/services would create a likelihood of association and therefore, a likelihood of confusion among the relevant public.
- A trademark will be registrable as a well-known mark under the proposed Trademarks Act, 1999, if the trademark has been determined by any court or the Registrar of Trademarks, to be well-known in at least one relevant section of the public in India.
- Under the new Act, the Registrar shall take into consideration any fact which he considers relevant for determining a trademark as a well-known mark, including:
- the knowledge or recognition of that trademark in the relevant section of the public including knowledge in India obtained as a result of promotion of the mark;
- the duration, extent and geographical area of any use including promotion, advertising, publicity or presentation at fairs and exhibitions of that trademark in association with goods/services;
- the record of successful enforcement of the rights in that trademark, in particular, the extent to which the trademark has been recognised as a well-known trade mark by any court or Registrar;
- the number of actual or potential consumers of the goods or services;
- the number of persons involved in the channels of distribution of the goods or services; and
- the business circles dealing with the goods or services to which the trademark applies.
- The Registrar shall not require as a condition, for determining whether a trademark is a well-known trademark, any of the following :
- that the trademark has been used in India;
- that the trademark has been registered in India or in any other jurisdiction;
- that an application for registration of the trademark has been filed in India or in any other jurisdiction; or
- that the trademark is well-known to the public at large in India.
- While considering an application for registration of a trademark and opposition filed in respect thereof, the Registrar shall -
- protect a well-known trademark against identical or similar trademarks; and
- take into consideration the bad faith involved either of the applicant or of the opponent affecting the right relating to the trademark.
- Invoices, catalogs, proof of promotion and/or use in India may be called for by the Registrar for determination of the well-known status of the trademark when considering the application and/or in opposition proceedings.
The following are now mandatory requirements:
- At the time of filing a new trademark application:
- Power of Authority simply signed by the Applicant or authorised rrepresentative
- Information on use of the mark in India, i.e. Date or year of first use in India if use has commenced OR that use is proposed
- At the time of filing an application for recordal of an assignment for a registered trademark:
- An Affidavit by the Assignor that there are no legal proceedings pending against the assigned mark in any Court or Tribunal in India
- Power of Authority simply signed by the Assignor and Assignee
- Current renewal status of the registered mark, if any.
- Chain of transfer of ownership of the registered mark, if any.
- A Deed of Assignment must be dated and mention a specific monetary consideration amount.
2. Marks generally not registrable as Trademarks in India:
- which are descriptive or laudatory of the goods concerned;
- the use of which are likely to deceive or cause confusion;
- involving the use of geographical names (of industrial importance). Some common geographical names may be registered on acquiring distinctiveness by use;
- comprising or containing scandalous or obscene matter;
- comprising or containing any matter likely to hurt the religious susceptibilities of any class or section of citizens of India;
- involving the use of personal names that have not been made distinct by prior use;
- which is identical with or deceptively similar to a trade mark already registered in respect of the same goods or goods of the same description except under under certain circumstances;
- which is the accepted name of any single chemical or chemical compound in respect of chemical substances; and
- involving the use of abbreviated names of various bodies of United Nations and Bureau of Indian Standards, certain notified names.
Certain words and letters and their colourable imitations, official seals, emblems and devices are not registrable as per directions of the Government of India.
- Words UNITED NATIONS, Letters UNO, Official seal and Emblem of UNO.
- The device of an arrow, as it is the property of the Government of India.
- Letters N.C.L, I.S.I., I.C.S., N.P.L., I.S.O., I.R., STC.
- Words ASOKA CHAKRA or DHARMA CHAKRA, the device or colourable imitation thereof.
- The British Royal Arms, the British Crown or the Union Jack or any clourable imitaion thereof.
- Words NATIONAL and PANCHSHEEL.
- Representation of the Election Symbol of any political party in India.
The following names for pesticides are non registrable:
||2, 4, D
|2, 4, 5-T
3. Service Marks in India
- India has recently enacted a new Trademarks Act, 1999. Implementation of the provisions of the new Act will take place only after the Trademark Rules have been framed.
- Service Mark applications may be filed only after the Rules are framed.
- Presently Service Marks are normally filed in class 16 in respect of printed matter including brochures, pamphlets, manuals, operating instructions, stationery, catalogues, newsletters, user guides, instructional and teaching materials.
4. Trade Mark Licensing
Recordal of trade mark licenses are not required under the Trade Marks law, unless the marks are registered in which case a Registered User Agreement can be recorded with the Registrar of Trade Marks.
It is advisable to record the Registered User Agreement, otherwise in contested proceedings the situation can become complicated as the User may not have a right to initiate independently any legal proceedings.
There are no standard forms available as these are required to be drawn up specifically.
In case of marks pending registration or registered marks where the license has not been recorded, the packaging or products must indicate the fact as to who owns the brand and who is using the license.
5. Trade Mark Litigation
A registered trade mark is infringed if a person uses, without authority, the same or deceptively similar mark in the course of trade, in relation to the same goods for which the mark is registered. The use must be as a trade mark and it is sufficient if the essential feature of a registered mark is taken. What is an essential feature depends entirely on the evidence adduced and the judgement of the Court. Here the plaintiff has to show that his trade mark is registered and that the defendant is using a trade mark identical with or deceptively similar to it in relation to goods which are covered by his registration. No proof of passing off is necessary to retain an infringement action.
6. Remedies/Reliefs in Infringement Proceedings
The reliefs in a suit for infringement include-
- injunction, restraining present and future use of the mark,
- damages or an account of profits,
Reliefs in a criminal action may include -
- Seizure and confiscation of the infringing goods by the police.
- Arrest of the infringers.
7. Passing off Action
Passing off is essentially a Tortious action adopted in practice in India with roots in the Anglo-Saxon Jurisprudence. U nder the Common Law of Passing off, the proprietor of an unregistered trade mark can proceed against unauthorised use of his trade mark for passing off. It is usual for a plaintiff in an action for infringement to combine a claim for relief against passing off also. The cause of action in favour of the plaintiff will arise if the defendant in the course of trade misrepresents to prospective or ultimate customers of goods and services that the defendants' goods or business is connected to the goods or business of the plaintiff and is calculated to injure the business or goodwill of the plaintiff AND which ACTUALLY causes damages to the plaintiff's business or goodwill.
Success in a passing off action depends upon the ability of the plaintiff to establish that the mark of which he claims ownership does in fact distinguish his goods from the goods of other traders and that the defendant's mark is such as to be calculated to lead to the goods of the defendant being passed off as his own. What is essential to be shown is that there is a reasonable probability of his being injured by the defendant's false representation and need to protect the goodwill of the business of the plaintiff. In some of the recent cases, it was held that the owner of a trade mark which is not having any registration in India but is having immense transborder reputation and goodwill throughout the world or in many countries can take action for passing off even when there is no sale in India.
8. Goods or Business different
The courts have intervened ordinarily to restrain passing-off where the plaintiff and defendant have been engaged in similar/common field of activity. However it is difficult to establish passing-off where the goods or businesses are entirely different. In rare cases, however, courts have protected misuse of a globally known mark in respect of an entirely different product under the principle of dilution.
9. Passing Off of Internationally Well Known Trademarks
Courts in India are continuously recognising rights of proprietor of unregistered and non-used famous foreign trade marks. Cross border reputation has been recognised and has been applied in several litigations. In fact, owners of famous unregistered foreign Trademark have been able to obtain injunctions against registered proprietors of the marks in India, as well. Courts have even condoned delays of 10 years in filing infringement action against fraudulent infringers and wrongful users who may even be registered proprietors of the infringed marks. Wrongful third party registration of a famous mark is not a defence in an action for passing off. TIGER BALM, WHIRLPOOL, CALVIN KLEIN, REVLON, are some famous foreign marks that have succeeded in passing off actions in India.
10. Defences in Infringement Proceedings:
A defendant in infringement proceedings may plead one or more of the following defences as may be applicable to the case -
- The plaintiff has no title to sue, i.e plaintiff has no right over the trade mark.
- Registration of plaintiff's mark is not valid and is liable to be expunged.
- The use of the mark complained of is not an infringement of the registered trade mark.
- The defendant has a statutory right to use the mark by virtue of concurrent registration.
- The defendant's use is prior to the use and registration of the plaintiff's mark.
- The defendant's use of the words is bonafide description of his goods or he is using his own name or the name of his place of business or that of his predecessor(s) in business and not as a trade mark.
- The defendant has a right to use by virtue of honest concurrent use.
- The plaintiff's mark has become descriptive of the goods and is common to the trade.
- The plaintiff is barred from suing - ie where his trade is fraudulent, or his trade mark is deceptive, or he is guilty of estoppel or acquiescence to the use of the defendant's mark or of abandonment of the plaintiff's mark. Honesty of adoption of the mark complained is not a defence. Innocent infringement is also not a defence against injunction, but it is a good defence against grant of damages or account of profits.
11. Defences in Passing Off Actions
In an action for passing off the defendant may take the undermentioned defences :
- The name, mark or other symbol, the use of which is sought to be restrained, is not distinctive of the plaintiffs goods or business and has not acquired reputation.
- The defendants' use of the name, mark or other symbol is not such as to be likely to pass off his goods or business as those of the plaintiff.
- The defendant has a right of his own to use the name, mark or other symbol complained of by virtue of honest concurrent use or otherwise.
- The instances of passing-off which have occurred are isolated due to bona-fide mistake and are not likely to be repeated.
- The plaintiff is not entitled to relief on account of delay, estoppel, acquiescence, deceptive use of the mark or symbol, misrepresentation of facts or fraudulent trade.
- The words used by the defendant are bonafide description of his goods.
The goods or business of the plaintiff and of the defendant are totally different.
12. Reliefs available in Passing-off Actions
The reliefs that are available in an action for passing off are -
i) an injunction subject to terms;
ii) either damages or an account of profits at the option of the plaintiff; and
iii) an order for delivery-up of the offending labels and marks for destruction or erasure.
14. New Trademarks Act, 1999
Amendments directed to TRIPs compliance Service Mark applications and other amendments may be implemented only after the Trademark Rules are formulated
- It has been publicly advertised by the Government of India that the Trademark Bill, 1999, which amends the Trade & Merchandise Marks Act, 1958, has been notified as enacted.
- The Trademark Rules, however, have not been formulated, yet. Thus, Forms, Fees and other operative mechanisms of the Act including those for filing of service marks, have not been put in place, yet.
- Amendments are extensive enough to cause the replacement of the Trade & Merchandise Marks Act, 1958, with the Trademarks Act, 1999.
The salient changes in the New Act:
- Definition of Trademark enlarged to include services, shape of goods, their packaging and combination of colours.
- Service marks and collective marks can be registered.
- Registration of Trademark which are imitations of well-known marks not to be permitted. Grounds of refusal enlarged.
- Registration of defensive marks - no longer permitted.
- Definition of well-known mark amplified.
- Part A and Part B unified into a single Register with simplified procedure of registration and with equal rights.
- Single application for registration in more than one class permitted.
- Procedure for registration of registered user simplified and scope of permitted use enlarged to include "licensed user". Power of sanctioning of "registered user" vested with the Registrar and not the Central Government.
- Final authority relating to registration of certification marks transferred to the Registrar from the Central Government.
- Trademark offences to be cognizable offences. Penalties and fines for counterfeiting and other offences related to Trademark enhanced.
- Courts' powers to grant ex parte injunctions in certain cases amplified.
- Use of another's Trademark as part of corporate name prohibited.
- Term of registration and renewal increased to 10 years.
- Convention country to include members of a group or union of countries and Inter-Governmental organisations, as declared by Government notification.
- Appeals against the Registrar's orders and cancellation applications, which presently lie before the High Court, to be referred to an Appellate Board, which is to be constituted.
Creation of the Appellate Court takes away the jurisdiction of the High Courts in Trademark appellate matters.
No Court or authority shall have or be entitled to exercise any jurisdiction, power or authority in relation to matters of appeals or orders of the Appellate Board.
As there is no provision for appeals to the High Court from wrong and perverse decisions which may emanate from the Appellate Board, a person aggrieved by such a decision will have to file a Constitutional Writ Petition before the Supreme Court of India. The harrassment and costs to the litigant will be considerable. The Act does not mention where the Appellate Board will be located.
The abolition of requirement of disclaimers in Trademark applications.
It is necessary that disclaimers must be given for words or devices which are common to trade or open to the trade for use.It has been held by the Supreme Court of India that -
"The real purpose of requiring a disclaimer is to define the rights of the proprietor under the registration so as to minimise, even if it cannot wholly eliminate the possibility of extravagant and unauthorised claims being made on the score of registration of the Trademark."
Only a Deputy Superintendent of Police or a superior officer can suo motu search premises and seize without a warrant, goods and devices involving a Trademark offence, but only after obtaining and abiding by the opinion of the Registrar in respect of the facts in the offence.
Suit for infringement and passing off can be filed in the Court within local limits of whose jurisdiction the Plaintiff resides or carries on business or works for gain.
This is a complete departure from the provisions of the Civil Procedure Code. Nowhere in the world, such a provision exists. The physical and financial burden on the defendant will be tremendous and unfair. Such a provision is not in the interest of the public or of trade in India.