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- Is the country a member of the Madrid Protocol?
Yes. The Madrid Protocol has been implemented in India on and from 8th July, 2013. International Trademarks granted before this date cannot be extended to India.
- Are Services protectable in India?
Yes, in classes 35 to 45 under the 11th Edition of the International (Nice) Classification.
- Can a partial or a multiple Paris Convention priority be claimed?
Priority can only be claimed for the same Trademark in respect of the same goods/services, as filed on the same date, in the Convention Country.
- May some or all of the supporting documents (excluding Convention priority documents) be filed after the filing date?
The simply signed Power Form and use information is required for filing the application. If pre-filing date of first use in India is claimed, then Evidence of Use in the form of an Affidavit with a document supporting the date of use is required to be filed with the Application. If there is no pre-filing use of the mark in India, then the basis will be “proposed to be used”. It is not mandatory to use the trademark post filing of the application, to obtain registration.
- May a Trademark be modified in order to facilitate its registration, for instance, by adding a logo or in case the mark in use has changed?
Under the law, a Trademark may be modified provided such modification is not a substantial one and permissible under the Act. However, in practice the Trademark Office rarely acts on requests for modification of the trademark.
- Is a consent obtained from the owner of a prior mark always accepted by the Office?
A Consent Letter is generally accepted if the consent does not pertain to the same/similar mark for same/similar goods /services. Accepting a Consent Letter would depend upon the nature, class and market use of the mark. The main concern of the Office is the public interest.
- Is use required to file a trademark application? Can use statement be amended after filing of the trademark application?
Use of the trademark is not required to file a trademark application or to obtain registration. “Proposed to be used” basis is accepted. However, if use has already started in India before filing of the trademark application, the date of first use must be stated along with documentary evidence submitted in the form of an Affidavit.
While there is no express provision in the Trade Marks Act prohibiting amendment of the use statement, the present policy of the Trademark Office does not allow such amendment.
- Can an opposition be filed by any party based on other reasons, such as absolute grounds?
Yes. An opposition can be filed based on any of the absolute grounds specified in the law that would render a mark unregistrable.
- Can the owner of a non-registered well-known (6bis Paris Convention) mark file an opposition?
Yes. A comparable provision is available under Section 11 of the Trademarks Act, 1999.
- Is recording of a licence agreement mandatory?
Recording a trademark licence agreement is not mandatory. However, if recordal is desired then the request must be filed within 6 months of the execution date. Licences can be recorded for registered trademarks only.
- Definition of what constitutes a protectable design; Meaning of “Design” in Relation to the Designs Act, 2000; What is an Article; Design Applied to Part of an Article; Essential Requirements to the Registration of a Design and Originality/Novelty
“Design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to, and are judged solely by the eye, but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.
“Article” means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately.
Stamps, labels, tokens and cards are not considered articles for the purpose of registration of a design because once the alleged design, i.e. ornamentation is removed, only a piece of paper, metal or like material remains and the article referred to ceases to exist. The article must have its existence independent of the designs applied to it. However, novel shapes of labels, tokens, card, etc., can be registered as designs.
Novelty in respect of designs is absolute. In order to meet novelty requirements the article should not have been published in India or in any other country. Novelty in India in respect of designs is lost if the product is published, sold or used within India or in any other country prior to the filing date, or where applicable the priority date, of the application for registration.
- Who is entitled to register a “Design”?
Any person claiming to be proprietor of a new or original design not previously published in any country, and which is not contrary to public order or morality, may apply for registration of such design to the Head Office of the Patent Office in Calcutta and in the Branch Offices of Indian Patent Office in Mumbai, Delhi and Chennai. However, design applications are examined, prosecuted and registered only in Calcutta (Kolkata) Head Office. In case of an application claiming priority, the application should be made by a person who made the application in the United Kingdom or any of the other convention countries or groups of countries that are members of inter-governmental organisations, or by his or her legal representative or assignee, within six months from the date of the convention application. [Convention countries include members of the Paris Convention and the World Trade Organisation].
- Procedure for Filing an Application for the Registration of a Design?
In India, there is no provision to file a multiple design application. Separate applications have to be filed for designs which are similar but not same. Protection can be obtained for a design applied to an article in a particular configuration/state/position. Separate applications have to be filed for designs illustrating the article in different configurations/states.
In India divisional applications cannot be filed for designs. It is recommended to file the important variations in the first instance.
Application for registration of a design (Convention and non-Convention) under the new Designs Act, 2000, shall be filed on the prescribed form (Form 1 under the Designs Rules, 2001) accompanied by the prescribed fee.
A design may be registered in more than one class by making separate applications, and in respect of any or all of the articles in a prescribed class of articles.
Requirements for filing a design application remain as follows unless notified otherwise:
Four copies of drawings, photographs, tracings or specimens suitable for record, duly prepared or pasted on durable paper of A4 size should be filed in the Calcutta Patent Office, or Branch Offices of the Indian Patent Office in Mumbai, Chennai and Delhi, accompanied by the prescribed fee.
Secondly, the design should be shown as applied to the article and if one view of the article is not sufficient to properly show the design, different views such as side elevation, top view, bottom view, front view, rear view, or perspective views should also be filed. In case of textile designs with repeated surface pattern, each specimen should be of sufficient portion of the repeat in length and width and shall not be less than 5 inches by 4 inches or 13 centimetres by 10 centimetres, so as to clearly show at least one full repetition of the design.
Thirdly, the name, address and nationality of the applicant must be provided. A power of authority can be filed any time within six months of filing the application (no legalization is necessary). One general power of authority is sufficient for all applications by a particular applicant.
India became a member of the Paris Convention with effect from 07 December, 1998. Priority can be claimed by anyone who first filed applications in the United Kingdom or any of the other convention countries or groups of countries which are members of inter-governmental organisations. The list of convention countries including members of the Paris Convention and the World Trade Organisation will be notified separately. Priority cannot be claimed from an EPO/PCT application even if it designates one of the convention countries. Certified copy of the design first filed in a convention country is required for a priority application. It is preferable that a brief statement of novelty claimed for the design be endorsed on each copy of the design.
Where a design has been registered in respect of an article contained in a class, the application of the proprietor of the design to register it in respect of other article (s) in that class shall not be refused, nor the earlier registration invalidated, either on the ground of novelty, or on the ground of publication, by reason only that it was previously registered, provided that such subsequent registration shall not extend the period of copyright in the design beyond that arising from the previous registration.
Further, if any person applies to register in respect of an article, a design not substantially different from a design previously registered by another person in respect of the same or some other article, and if at any time while the application is pending the applicant becomes the registered proprietor of the previously registered design, then the applicant shall be treated as the registered proprietor of the previously registered design from the time of making the application.
The Designs Rules, 2000, has notified the adoption of the International Classification for Goods.
In case of any doubt regarding the class to which any particular description of article belongs, it shall be determined by the Controller, whose decision shall be final.
- Post Application Stage
- Following an application for registration of a design, the application is numbered, dated and examined and defects (objections), if any, are communicated to the applicant.
- The applicant should meet the official objections and put the application for the design in order for acceptance within six months from the date of application. The said period of six months may be extended for maximum three months under Rule 18 of the Designs Rules, 2001, as amended in 2008, with the prescribed fee before the expiry of the six months. When an application for registration of a design is in order, it will be accepted; on acceptance, a certificate of registration is issued to the applicant and the registration is recorded in the Register of Designs.
- The Designs Rules, 2000, provides for the applicant or his agent to be “heard” by the Controller before the Controller takes the final decision for grant or refusal of a design. Appeal from the Controller’s decision will lie before the High Court.
- The Controller has been empowered to make orders regarding substitution of applications at any time before a design has been registered on satisfactory submission, in the prescribed manner, of claims of joint applicants or rights of surviving applicant(s) by common consent or by operation of law.
- On acceptance of the design in respect of an application, the Controller has also been empowered to cause publication of the particulars and registration of the design, and as notified in the Designs Rules, 2000, one or more view(s) of the design will be selected by the Controller for its publication in the Gazette, which in his opinion would best depict the design.
- Register of Designs
- The Register of Designs is maintained by the Calcutta Patent Office as a statutory requirement. It contains the design number, the class number, date of filing (in India) and reciprocity date (if any), the name and address of the proprietor, and such other matters as would affect the validity or proprietorship of the design.
- The Register of Designs is open to public inspection on payment of the prescribed fees, soon after the design is registered.
- The registration of a design confers upon the registered proprietor copyright in the design for the period of registration. “Copyright” means the exclusive right to apply a design to any article belonging to the class in which it is registered.
- Duration of Protection
The duration of registration of a design is initially ten years from the date of registration. The initial period of registration may be extended for a final period/term of five years on an application to the Controller before the expiry of the copyright, accompanied by the prescribed fee. Where a design has ceased to have effect by reason of failure to pay the prescribed fee for extension of copyright, the proprietor of the design or his legal representative or one or more of joint holders without joining the others, may, with the leave of the Controller, make an application for restoration of the design in the prescribed manner with the prescribed fee, within one year from the date on which the design ceased to have effect.
- Expunging/Cancelling Registration
The registration of a design may be canceled on any of the following grounds:
- that the design has been previously registered in India; or
- that it has been published in India or in any other country prior to the date of registration; or
- that the design is not a new or original design; or
- that the design is not registrable under this Act; or
- it is not a design as defined under clause (d) of section 2
According to clause (d) of section 2
- “design” means only the features of shape, configuration, pattern, ornament or
composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.
- Infringement of a Design
The application of a design or its fraudulent or obvious imitation to any article belonging to the particular class of goods in which the design has been registered for the purpose of sale or importation of such articles without the consent of the registered proprietor constitutes infringement of the design. Publishing such articles or exposing terms for sale with knowledge of the unauthorized application of the design also amounts to infringement of the design. Under Section 22 of the Designs Act, 2000, during the existence of copyright in any design it shall not be lawful for any person: If any person acts in contravention of this section, he or she shall be liable: Suit for infringement of registered design cannot be instituted in any court lower than that of a District Judge, and, in the event of defence being taken by the defendant or alleged infringer on the grounds available for cancellation of registration of the concerned design, the proceedings shall be transferred to the High Court for decision.
- Marking of an Article and Penalty for Infringement of a Registered Design
It is not compulsory that an article to which a registered design has been applied be marked by the registered proprietor. However, it is advantageous to the registered proprietor to mark the articles so as to indicate the registered design number (except in the case of textile designs and in respect of articles made of charcoal dust which are brittle). Otherwise, as is the case with patents, a registered proprietor would not be entitled to claim damages from any infringer unless it can be shown that all proper steps to ensure the marking of the article were taken, or unless it can be shown that the infringement took place after the infringer knew or had received notice of the existence of the copyright in the design. An infringer who has proceeded on the basis of a report from the Patent Office that no registration subsists in respect of a particular design and is later held as infringing copyright for the said design can plead as an innocent infringer and get relief from damages.
Anyone contravening the copyright in a design is liable to pay for every offence a sum not exceeding Rs.25,000/- to the registered proprietor, subject to a maximum of Rs.50,000/- in respect of any one design. The registered proprietor may bring a suit for the recovery of the damages for any such contravention and for an injunction against repetition of the same.
- Defences to Infringement
- The design has been previously registered in India;
- The design has been published in India or in any other country prior to the date of registration;
- The design is not a new or original design; or
- The design is not registrable under the provisions of the Designs Act, 2000;
- No suit or other proceedings can be commenced in respect of piracy of a registered design, if committed between the date on which the registration of the design ceased to have effect and the date of restoration of the design.