TRADEMARK LAW OF INDIA

Indian trademark law statutorily protects trademarks as per the Trademark Act, 1999 and also under the common law remedy of passing off. Statutory protection of trademark is administered by the Controller General of Patents, Designs and Trade Marks, a government agency which reports to theDepartment of Industrial Policy and Promotion (DIPP), under the Ministry of Commerce and Industry. 

 

UNREGISTERED TRADEMARK 

In India, an unregistered trademark is entitled to protection under the tort of passing off. Section 27(2) of the Trademarks Act expressly provides for an action for passing off.

 

The plaintiff must prove that:

• the trademarks are similar;

• the defendant is deceptively passing off its goods as those of the plaintiff; and

• there is bound to be confusion in the minds of consumers. The test to be applied is whether a person of average intelligence and of imperfect recollection would be confused.

 

While the Indian courts prefer evidence (eg, sales or advertisements) pertaining to India, they have come a long way in terms of recognising trans-border reputation and goodwill as a basis for enforcing rights. Certain rulings have even taken cognisance of a mark specific to one industry, stating that even in the absence of any physical use in India, knowledge and awareness of a mark or business can be attributed and enforced against dishonest use.

 

 

REGISTRABLE MARKS

According to Section 2 (zb) of the Trade Marks Act, 1999, “trade mark 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 and may include shape of goods, their packaging and combination of colours.” A mark can include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any such combinations.

 

The following marks are not registrable :

(i) a mark the use of which would be likely to deceive or cause confusion ; (Section 11(a) of the Act.)

 

(ii) a mark the use of which would be contrary to any law for the time being in force (See Section 11(b) of the Act)

 

(iii) a mark comprising or containing scandalous or absence matter ; (See Section 11(c) of the Act)(iv) a mark comprising or containing any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India ; (See Section 11(d) of the Act)

 

(v) a mark which would be disentitled to protection in a court of law ; [Section 11(e) of the Act.]

 

(vi) a mark 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 ; [Section 12(1) of the Act.](vii) a word which in the accepted name of any single chemical name or chemical compound in respect of chemical substances; [Section 13 of the Act.] 

 

(viii) marks prohibited under the Emblems and Names Act.Whether a mark comes, within the prohibition of any of the above categories arises for consideration at the time of examination of the application by the Registrar, opposition and rectification proceedings and infringement and passing off actions.

 

 

TERM OF PROTECTION

Term of registration of a trademark is ten years, which may be renewed for a further period of ten years on payment of prescribed renewal fees.

 

Non-user of a registered trademark for a continuous period of five years is a ground for cancellation of registration of such trademark at the behest of any aggrieved party.

 

 

PROCEDURE OF REGISTRATION

An application for registration of a trademark in India can be filed by either claiming use of the trademark in India or on a proposed to be used (intent to use) basis. 

 

The application is then formally examined by the Indian Trade Marks Office, as to its inherent registrability and/or any similarity with existing marks. If an objection to registration is raised, an official examination report will issue. To overcome the objection, it is necessary to file a written response or presenting evidence of acquired distinctiveness and in most cases, an interview/hearing with the examiner is posted. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used.

 

 

If, following examination, the trade mark application is considered allowable, a Letter of Acceptance (TLA order) will issue, after which the trademark will be published in the Trade Marks Journal. If there are no oppositions within 4 months from the date of advertisement in the Trade Marks Journal, then the trademark registration certificate will issue.