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Indian Trademark Law has been codified in conformity with the International Trademark Law
and is about to undergo an amendment to be at par International Trademark Law. Recently India
has signed Madrid Protocol that will allow Foreign Applicants to file an International Application
designating India like many countries around the globe e.g China. Though unlike China and many
Indian Trademark Law has been codified in conformity with the International Trademark Law and is about to
Recently India has signed Madrid Protocol that will allow Foreign Applicants to file an International
Application designating India like many countries around the globe e.g
China. Though unlike China and many other countries Multi class filing is allowed in India.
Statue:
The various statues dealing with Intellectual property laws in India are as follows:
Requirement:
A ‘Trademark’ means a mark capable of being represented graphically and which is capable of distinguishing
A ‘Mark’ includes a device, brand, heading, label, ticket, name (including abbreviations), signature, word,
letter, numerals, shape of goods, packaging or combination of colors and any combination thereof.
The two main requirements of a trademark are that it must be distinctive (adapted to distinguish the
goods/services of the applicant from that of others) and not deceptive. Therefore while selecting a
trademark, words that are directly descriptive of the goods, common surnames or geographical names
should be avoided as these confer weaker protection to the proprietor even if registered.
Now the concept of “well known mark” has been introduced after the last amendment and Section 2 (zg)
“Well-known trademark, in relation to any goods or services, means a mark which has become so to the
substantial segment of the public which uses such goods or receives such
services that the use of such mark in relation to other goods or services would likely to be taken as
indicating a connection in the course of trade or rendering of services between those goods or services and a
person using the mark in relation to the first mentioned goods or services.”
While determining whether the mark is well-known mark, the registrar will take in to consideration while
(a) the knowledge or recognition of the alleged well known mark in the relevant section of the public
(b) the duration, extent and geographical area of any use for that trademark.
(c) The duration, extent and geographical area for any promotion of the trademark including advertising or
(d) The duration and geographical area of any registration of any publication for registration of that
trademark under this Act to the extent that they reflect the use or recognition of that
trademark.
(e) The record of successful enforcements of the rights in that trademark, in particular the extent to which
the trademark has been recognized as a well known trademark by any Court or Registrar under that record.
Whereas a trademark has been determined to be well known in at least one relevant section of the public in
India by any court or Registrar, the Registrar shall consider that trademark
“Relevant section of Public” may be actual or potential consumers of, persons involved in channels of
distribution of or business circles dealing with the type of goods or services to which the mark is applied.
The Registrar is not required to consider the following facts while determining a well known trademark.
c) The application for registration of the Trademark has been filed in India.
d) The trademark is well known in or has been registered in, or in respect of which an application for
Priority:
For claiming a priority from an application filed in United States a corresponding application should be filed
Absolute grounds:
Section 9 of the Trademarks Act, 1999 sets out the absolute grounds for refusal of trademarks, which can be
d) Trademarks or signs that are customary in current language and in the bonafide and established and
e) Trademarks comprising scandalous or obscene matter or likely to hurt religious susceptibilities in India;
f) Trademarks consisting of shape which are purely functional or are necessary to obtain a technical result or
g) Trademarks whose use is prohibited under Emblems and Names (Prevention of Improper Use) Act, 1950.
Prohibition:
Section 13 of the Trademarks Act, 1999 prohibits registration of any word as trademark which is:
a) Commonly used and accepted name of any chemical element or any chemical compound (as
b) Declared by the World Health Organization and notified as such by the Registrar, as an International non-
proprietary names.
Section 11 of the Trademarks Act, 1999 sets out the relative grounds for refusal of trademarks, which can
a) identical or similar to a previous mark with and/or without similar or identical goods;
For registration:
b) Acquiescence; or
c) Prior user
b) Parallel Imports;
d) Generic ness.
As per Section 11 of the Trademarks Act, while considering an application for registration of a trademark
However this provision shall not effect the trademark if it trademark has been registered in good faith
trademark has been acquired through use in good faith before the commencement of this Act.
Opposition (before the Registrar) and Cancellation (before the Registrar as well as Appellate Board)
Opposition can only be done after publication of the trademark and within 3 months of date of availability of
Journal. One month extension is available if sought before the expiry of 3 months time.
Cancellation on the ground of non-use for a period of 5 years and 3 months and proof of intention on part of
the registered proprietor not to use the trademark at the filing date and nonuse till the cancellation petition.
Before the Courts: Ex-parte Injunction, Permanent Injunction, Anton Pillar Order, and /or Arrest and Seizure
Assignment/ license:
Trademarks are now recognized as a “movable property” under the Indian law and can be therefore
assigned/ licensed. A trademark can be assigned with or without the goodwill attached to it.
Renewal:
The trademarks can be renewed perpetually, are renewable for a period of 10 years on payment of
prescribed fees.
Express processing:
Under Indian trademark law now it is possible to expedite the various proceeding e.g. search, examination
etc. by filing a request with prescribed fees. Indian Trademarks law is at par with the International laws and
has stringent procedures for safeguarding and protecting interest of the proprietor of mark.
ABOUT THE AUTHOR: Sudhir Kumar
The author is an Advocate & IPR Attorney practising in India and working with Aswal Associates, Attorneys
Safeguards to be taken by the proprietor of a registered trade mark to protect his rights: -
The proprietor should use and renew the trademark regularly and in time. If the trademark
is misused by others he should file a suit for infringement and passing off and also take
criminal action.
The proprietor should keep a watch in respect of trademarks published in the Trade Marks
Journal and institute opposition proceedings if identical or deceptively similar trademarks
are advertised. He should initiate rectification proceedings if an identical or deceptively
similar trademark is registered.
There is no system as yet wherein a single trademark application is sufficient to protect the
trademark right internationally. However, Paris convention* provides certain privileges to
member countries in trademark registration. A party that files their first trademark
application in a member state of the Convention, such as India, can within six months of
that filing date file applications in other member countries claiming the priority of the first
application. If such a trademark is accepted for registration it will be deemed to have
registered from the same date on which the application is made in the home country.
It is also possible to utilize multinational filing systems in certain regions in order to obtain
trademark protection. For example, Belgium, the Netherlands and Luxembourg have a
single trademark registry, commonly referred to as the Benelux Trademark Register. The
European Union consisting of 15 countries has adopted its own trademark system, known as
the Community Trademark. The African Organization for Intellectual Property (OAPI), a
group of African nations, have replaced their national trademark offices with a common
trademark office which offers a single trademark registration valid in all of the member
states.
Almost all countries have trademark offices in which applications may be filed. Therefore,
when contemplating trademark protection in various countries, it is most helpful to start
with a list of countries where registered trademark protection is available. Deciding where to
register a trademark involves various considerations. Countries where a trademark is
currently in use, but prior use of trademark is not recognized, should be the first to be
considered for seeking registered protection. If commencing use shortly or expanding use to
other countries within a few years, then such countries should also be included. The last
group of countries should be those have a history of unauthorized registration of other's
trademarks.
* Paris Convention is the most basic and important multilateral convention relating to
intellectual property, including trademarks, of which India is a member. It defined the
meaning and scope of industrial property rights protection and established basic principles
and rules.