What is the governing law of Trademarks? The Trademarks Act, 1999 is the governing law of Trademarks which came into effect from September 15, 2003. This new Trademark Act has in effect repealed the old Act, Trade and Merchandise Marks Act, 1958 and Rules there under. The new Act is broadly based on the requirements of TRIPS (Trade Related Aspects of Intellectual Property Rights) as well as the effects of the various judgments pronounced by the courts of India from 1958 till date. This Act, in all respect, is in conformance with international standards. There are far reaching changes in the trademark related issues in India with one of the best and broad protection in the world. What is Registrable as a Trademark? A Trademark must be a mark, which includes a device, brand, heading, ticket,
name, signature, word, letter, numeral, shape of goods, packaging, or
combination of colours or any combination thereof which is capable of
represented graphically or in writing; and Capable of distinguishing the
goods/services of one person from that of another.
Collective Mark: Now it is also possible to file application for a Collective Mark in the name of any Associations or Federations and only their authorized members will be allowed to use the same. Whether a Search of a Trademark is compulsory? Although not compulsory, it is highly advisable to conduct a prior search to find out any identical or resembling trademarks to avoid any disputes at a later stage. IT IS ALWAYS ADVISABLE TO CONDUCT A PRIOR SEARCH BEFORE ADOPTING A TRADEMARK Does India follow NICE Classification of Goods? Yes. Schedule IV of the new Trade Marks Act, 1999 has adopted the International Classification of Goods (VII Edition of NICE Agreement) divided into 1 to 42 Classes. Is it possible to claim Priority? Yes. Since India is a member of Paris Convention and WTO, it is possible to claim priority on the basis of first application filed in any of the member country within a period of six months. What are the Filing requirements? I. The Trademark (if not a word mark, 15 prints of the trademark). If colour is to be claimed, prints should be in the exact colour with colour descriptions.
It is to be noted that multi class application for registration of a Trademark is allowed, but the fees have to be paid on the basis of number of Classes included in an application. It is also pertinent to note here that, if the mark in one class is opposed, the applications in other classes will be kept in abeyance till the opposition is decided unless the application is divided by payment of additional fees. What is the Examination procedure (Office Action)? After an application is filed, the same is examined by the Examiner of Trademarks and an Examination Report is sent normally within 30 days of filing, stating the reasons for non registrability of the Trademark, if any. The new Trademark Act, 1999 does not define the marks which are registrable but defines which marks are not registrable under the two headings - Absolute grounds or on Relative grounds. The Absolute grounds of refusal are:
The Relative grounds of refusal are:
To overcome these objections, a written submission is to be made within a period of 30 days with suitable evidence, may be, in the form of an Affidavit. If the Examiner is satisfied with the reply beyond any doubt, he may accept the application or call for a personal hearing before the Asst. Registrar of Trademarks before whom the matter is required to be argued. If the Asst. Registrar is satisfied with the arguments and the evidences submitted in support thereof, he will accept the application or reject the same as the case may be. ADVERTISEMENT: Once the application is accepted, it will be then advertised in Trademarks Journal. OPPOSITION: Once the application is advertised, any aggrieved person, may, within a period of three months from the date of publication of the Journal (which period may be extended by further period of 1 month) give Notice of Opposition in writing (Form TM-5) stating the grounds of opposition to the registration of advertised mark. The Applicant will then be required to file its Counter Statement (Form TM-6) within a period of two months from the date of receipt of Notice of Opposition. Thereafter, both the parties are required to file evidences in support of opposition in a form of Affidavit and after giving an opportunity of being heard, the matter is decided by the Registrar. REGISTRATION: If there is no opposition or if any opposition is decided in favour of the Applicant, the mark is entered in the Register and a Certificate of Registration is issued accordingly. Will the registration lapse due to non payment of renewal fees? And if yes, then is there any way to restore the lapsed registration of a Trademark? Yes. Non payment of renewal fees will result in lapse of registration. However, the lapsed registration may be revived and restored within a period of 1 (one) year from the due date of renewal upon payment of additional fees. Is it possible that the registration may be cancelled due to non use? Yes. Any registered Trademark can be cancelled or expunged at the instance of any aggrieved person on the grounds of no bona fide continuous use of a Trademark in respect of goods / services, it is registered, for a period of 5 years and 1 month. What is the approximate time period within which the registration process will complete? It is not possible to exactly specify the time period within which the entire registration process would be competed. However, generally, it takes about 12 to 18 months within which the entire process of registration could be completed provided no major dispute arises. Is it necessary to put any symbols or legends near the Trademark? It is not mandatory to put or apply any symbol or legend near the mark but Use of Symbols / Legends is highly advisable (e.g. use of letters ฎ and TM in case of registered and unregistered marks respectively.) It is a criminal offence to indicate an unregistered Trademark as registered Trademark and attracts penal provisions of the Act. What is Passing off and Infringement of a Trademark? Infringement: A registered trademark is infringed, if a person uses unauthorizedly the identical or confusingly similar Trademark in relation to the goods for which it is registered. Infringement action is possible only for the Registered trademark and in such cases plaintiff has to show the identical or deceptively similar trademark is being used without any authority by the defendant in relation to the goods covered under his registration. No need to show the proof of actual harm or loss to his business is necessary. TEST OF INFRINGEMENT CAN BE LIKELIHOOD OF CONFUSION, MISTAKE, DECEPTION OR DELIBERATE COPYING. Passing off:
What are the remedies available against Infringement / Passing off of a Trademark? Civil remedies:
Criminal action: by conducting raids |