FAQs on Trademark
What is a service mark?
A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.
A SERVICE MARK is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.
What is a collective mark?
A COLLECTIVE MARK is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization.
What is a Trade Name?
A trade name is a company name. Some trade names are also used in a way that makes them trademarks as well. For example, ACME Inc. may use the mark, “Widgets R Us” or “ACME Widgets.” If they use the former, then ACME remains a trade name only. If they use the latter, then ACME is both a trade name, because ACME it is the name to identify their company, and a trademark, because they identify the source of their products with the word, “ACME-�
How are trademarks, copyrights and patents different?
A trademark is different from a copyright or a patent or geographical indication. A copyright protects an original artistic or literary work; a patent protects an invention whereas a geographical indication is used to identify goods having special characteristics originating from a definite territory.
Patents protect new inventions, discoveries and designs, while copyrights protect original works of authorship such as paintings, computer programs, sculpture and architectural designs. Trademarks do not protect creation or inventiveness at all. In fact, a trademark can be acquired with no creative or innovative input from the owner whatsoever. For instance, when the public spontaneously began referring to “Coca Cola” as “Coke,” the new term became a source identifier for the product, and thus automatically a trademark.
What is the difference between a trade name and a trademark?
A trade name or business name is the name which identifies a business. It is either the formal name under which a business is incorporated or organized, or the assumed or fictitious business name adopted by the business. A trademark or service mark is the word(s), logo, or slogan used in connection with goods or services, such as a brand name. Trade names are sometimes used as trademarks or service marks, but this is not always the case.
What a trademark does?
Trademarks benefit both businesses and individuals. They allow businesses to build an identity and reputation with customers, and thereby grow or expand. Trademarks also allow individuals to be better consumers. In fact, Trademark law is the original consumer protection statute. It ensures that consumers can repeat their positive buying experiences by searching out familiar brand names, and avoid bad buying experiences by steering clear of brands they didn’t like.
What are some tips for using a trademark or service mark?
Once a mark has been cleared, decide on a consistent way in which the mark will appear. For goods, use the mark on the goods themselves or on the packaging of the goods in a prominent manner in which potential customers will see it when deciding whether to purchase the goods. For services, use the mark in promotional material and advertising of the services. The mark should be used as an adjective rather than as a name for the goods or services, in order to prevent the mark from becoming commonly known as a generic name for the goods rather than a brand name, and thus a loss of trademark rights. Use a “TM” symbol or “SM” symbol for trademarks or service marks, respectively, as a superscript or subscript immediately following the mark. Do not use the “®” symbol without a registration. Separate the mark from the generic term for the goods or services, and from any designation of the business name or address, using spacing, font size or style, color, etc. Seek advice of counsel regarding registering the mark.
When can I use the TM or SM symbols?
The “TM” and “SM” designations (“trademark” and “service mark,” respectively) are commonly used as superscripts or subscripts after trademarks and service marks to place the public on notice that rights in the mark are being claimed. These symbols may be used as soon as the mark is in use without any registration of the mark.
When can I use the ® symbol?
The ® designation is reserved to indicate that the mark is registered as Trademark. This symbol should not be used under any circumstances until a certificate of registration has issued on the mark.
Do I need to register my trademark?
No. You should use the “TM” or “SM’ designation to indicate that your brand name/slogan belongs to you. The use of TM is a way of informing the world that you have (or you think you have) a protectable trademark.
Rights given to trademark owners
Trademarks are essentially limited monopolies over the use of symbols in business. The government grants trademark owners the right to exclude all other businesses from using a similar mark on related goods or services. For instance, nobody in the computer industry is allowed to use the name “apple” as a way of identifying themselves, except for Apple Computers, Inc., who was the first to use that symbol to sell computers. If someone selling computers uses “apple,” Apple Computers, Inc. has the right to sue immediately in court and force that company to stop using the mark immediately, and without compensation. In fact, they may even be able to make the other party pay monetary compensation for their losses, and have them pay attorneys fees as well.
One when selling related goods or products. Because the government can enforce this exclusivity, trademarks are considered assets of a business, and thus can be licensed or even mortgaged as collateral.
How are Trademark Rights established?
Trademark rights are established through either (1) “actual use” of the mark, or (2) the filing with a bona fide “intent to use” the mark in commerce.
What are the remedies available against Infringement and passing-off?
Two types of remedies are available to the owner of a trademark for unauthorized use of his or her mark or its imitation by a third party.
These remedies are: – -�an action for infringement’ in case of a registered trademark and -�an action for passing off*’ in the case of an unregistered trademark.
The basic difference between an infringement action and an action for passing off is that the former is a statutory remedy and the latter is a common law remedy. Accordingly, in order to establish infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required. In the case of a passing off action, proving that the marks are identical or deceptively similar alone is not sufficient. The use of the mark should be likely to deceive or cause confusion. Further, in a passing off action it is necessary to prove that the use of the trademark by the defendant is likely to cause injury or damage to the plaintiff’s goodwill, whereas in an infringement suit, the use of the mark by the defendant need not cause any injury to the plaintiff.
However, the registration cannot upstage a prior consistent user of trademark in India, for the rule followed is -�priority in adoption prevails over priority in registration`.
In many other jurisdictions like Saudi Arabia, Nepal etc. where the first party to register a trademark is considered the party to own the mark, regardless of prior use of the mark.
What are the 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 others misuse the trademark 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.
What to do to have the mark registered in other countries?
Trademark rights are granted on a country-by-country basis. There is no system as yet wherein a single trademark application is sufficient to protect the trademark right internationally. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws. 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.
Is an INDIAN Trademark registration valid outside the INDIA?
No. Certain countries, however, do recognize a Indian registration as a basis for registering the mark in those countries. Many countries maintain a register of trademarks. Keep in mind that the Internet is changing international trademark boundaries. By adding your trademarks, you are being proactive in minimizing the potential cost of international litigation.
What is meant by “goods/services” classification?
Almost all jurisdictions including India employ a classification system in which goods and services have been grouped into classes for registration. Most countries follow the same classification system, namely the International Classification of Goods and Services, which consists of 34 classes of goods and 8 classes of services. (The WIPO recently revised the Nice Classification, adding three service classes (43, 44, and 45) and restructuring Class 42, retaining certain services. This provision has not yet been implemented in India). See Trademark Classification
Can I register my domain name as a trademark or service mark?
Yes, so long as it is being used as a trademark or service mark. If it is merely used to indicate the URL or address at which a web site may be found, such use is not sufficient. It must be used as a source identifier for the goods or services.
DOES REGISTRATION COVER OTHER COUNTRIES?
A INDIAN trade mark registration only covers INDIA. It does not, therefore, afford protection in any of other country, and a separate application must be filed in each of these countries if registered protection is required. Applications for registration in foreign countries can be based on an INDIAN trade mark application. Convention priority may be claimed if foreign applications are filed within six months after filing of the INDIAN application. Such applications are made in terms of the International Convention of Paris, as in the case of patents, but the period provided is limited to six months.
LICENSING: HOW TO PROTECT THE LICENSOR AND LICENSEE
The registered proprietor of a trade mark is obviously entitled to use his own mark. The proprietor can also authorise third parties to use a trade mark. In such a case there are advantages to the licensees being recorded in the Trade Marks Register as “Registered Users”.
HOW CAN THE APPLICATION FOR REGISTRATION BE OPPOSED?
Within a period of three months from the date of advertisement in the Indian Trademark Journal, any party may lodge opposition to the registration of the trade mark. Extensions of this period can be obtained on application to the Registrar
Various grounds of opposition are available and include conflict with prior registered or common law trademarks. Generally trademarks which do not conform to the requirements for registration may be opposed.
Opposition is an important facility, especially in that it affords trade mark owners the opportunity of ensuring that competitors do not register similar trademarks.
Good to know
- Make sure your sign is distinctive.
- Search before you register a trademark.
If you register a trademark that is similar or identical to one that is already registered, your mark may infringe on the prior one. The owner of the prior trademark can possibly even demand the cancellation of your mark and financial compensation. Because we do not determine whether your mark has already been registered in a similar or identical form at the time of application, it is important for you to do it.
Note that trademarks can also infringe on business and domain names.
- Select your goods and service classes carefully.
A trademark is always protected only for certain classes of goods and services. When you register, you must indicate the goods and services for which you wish to register and use your trademark. If you don-�t use your trademark for the products (or services) you claimed within five years of registration, you can lose your trademark protection.
- Consult a trademark attorney.
We would be glad to answer your questions about the registration procedure. If you are unsure about choosing a trademark or your trademark strategy, or you would like advice in an infringement case, consult a Lawyer.
Steps to take before registering
The following steps apply to both kinds of trademark registrations.
- Figure out what kind of trademark you have and what the trademark is.
Most trademarks consist of words, designs, or composite marks made up of a combination of words and designs. Other kinds of marks include sound, color, and scent marks-you should probably contact a trademark attorney to proceed with registering those.
Is it advisable to conduct a trademark search before filing an application?
Before making an application for registration it is prudent to make an inspection of the already registered trademarks to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one.
How preparing an application for Registration?
An application for trademark may be made on Form TM-1 with prescribed fee at Trade Marks Registry. The application is examined to ascertain whether it is distinctive and does not conflict with existing registered or pending trademarks and examination report issued. If it is found be acceptable then it is advertised in the Trade Marks Journal to allow others to oppose the registration. If there is no opposition or if the opposition is decided in favour of the applicant then the mark is registered and a certificate of registration is issued. If the applicant’s response does not overcome all objections, the Registrar will issue a final refusal. The applicant may then appeal to the Appellate Board, an administrative tribunal.
What is the definition of a patentable invention under the Indian Patent Law?
All inventions that have commercial application can be covered by Patent – “invention means a new product or process involving an inventive step and capable of industrial application” (Section 2(1) (j).
What are the unpatentable inventions under the Indian Patent Law?
Sections 3 & 4 of the Patents Act, 1970 enlist the non-patentable inventions.
Section 3 reads as follows:
The following are not inventions within the meaning of this Act,
(a) an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
(b) an invention the primary or intended use or commercial exploitation of which could be contrary public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;
(c) the mere discovery of a scientific principle or the formulation of an abstract theory [or discovery of any living thing or non-living substance occurring in nature] (But the dividing line between invention and discovery is very thin a lot of it will depend on the projection of the invention);
(d) the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant;(Explanation Derivatives of a same substance such as salts, esters, ethers, polymorphs, metabolites, new form particle size and other derivatives of a known substance will be considered as the same substance unless they defer significantly in properties with regards to efficacy)
(e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance; (A synergistic admixture is patentable. If the admixture discloses a beneficial new properties not disclosed by the individual ingredients, the same is patentable)
(f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
(g) a method of agriculture or horticulture;(Crop protection chemical and new devices used in agricultural of horticultural operations are patentable)
(h) any process for the medicinal, surgical, curative, prophylactic [diagnostic, therapeutic] or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products;
(i) plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;(New plant varieties can be protected under a different law)
(j) a mathematical or business method or a computer program per se or algorithms;(But if the software is responsible for causing an improved technical effect or improves the efficacy of the existing device, then the technical or the improved device can be patented)
(k) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;(The same can be protected under the Laws of Copyright)
(l) a mere scheme or rule or method of performing mental act or method of playing game;
(m) a presentation of information;
(n) topography of integrated circuits; (This can be protected under a different law)
(o) an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.](But an improvement to the traditional knowledge complying with the requirement of novelty, utility and non-obviousness can be a subject matter of Patent)
And Section 4.:
No patent shall be granted in respect of an invention relating to atomic energy falling within sub-section (1) of Section 20 of the Atomic Energy Act, 1962 (33 of 1962)
What are the requirements for patentability of an invention?
2. Inventive Step
Further, “Inventive step means a feature that makes the invention not obvious to a person skilled in the art”. (Section 2 (1) (j)) is to be replaced by “Inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.” (Section 2 (1) (ja))
3. Industrial Applicability
Is there a possibility for patent registration when the technology sought to be covered by the Patent has been publicly known or described in a publication before an application is filed?
Novelty is crucial for Patent protection. Usually, the novelty is lost by:
(a) prior publication;
(b) prior public use;
(c) prior claiming (if it has been claimed in an earlier specification.)
However Section 31 and 32 provide that if the disclosure is before a scientific body or an exhibition notified by the Union Government, then, within twelve months from such publication or display, a patent application can be made.
A non-commercial experimental use does not defeat novelty. But, it is always better to apply for a patent first and publish or exhibit the product after patent application. If such publication or display had occurred prior to the application, contact a patent attorney immediately to know whether an application can be made notwithstanding the disclosure.
Can an applicant file an application in foreign language?
An application can be filed in India either in English or Hindi.
Is it possible to have global or world Patent?
No, patenting is a matter that falls within the domestic jurisdiction of a State. However, Article 27 of the WTO TRIPS agreement establishes ‘international minimum standard in patent protection.’ Paris Convention on protection of Industrial Property, 1883 confers on all the Applicants irrespective of Nationality, among other things (a) a right to national treatment; (b) right of priority.
Patent Co-operation Treaty (PCT) facilitates filing of a single application that can be deemed as an application for all member states of PCT. National application in India has to be filed within 31 months of PCT Application. Grant of Patent in pursuant of the PCT National Phase Application is still left to the discretion of Local Patent Office.
International filings have to be made within 12 months of the filing of the Domestic Application.
Is India a signatory to the Paris Convention and the Patent Corporation Treaty?
Yes, India is a signatory to the Paris Convention and the Patent Corporation Treaty.
What is the application procedure?
An application for patent has to be made in Form 1 (duplicate) and shall be accompanied by prescribed fee (Rs. 1000/- for individual and Rs. 4000/- for artificial legal entities), Form 2 (provisional or complete specification) and Form 3 (a declaration and undertaking regarding the foreign patent filings of the same invention).
What is Form 1? Should this Form necessarily contain the signatures of the Inventors and the Applicant? If an employee invents a new technology who should be the Applicant for Patent?
If an invention originates in the course of Contract of Employment (in the absence of a contract to the contrary) the technology vests with the employer and he should be shown to be Applicant for Patent.
Form 1 need not have the signature of Inventors for the initial filing. If the initial filing is made without the signature of the inventors, subsequently, From 1 duly signed by the inventor must be logged with the Patent Office within six months of the Application.
If the Applicant is a Company, Form 1 must be signed by the Company Secretary or a Director or any Authorized Signatory who has been specifically authorized to represent the Company by means of a Resolution passed by the Board of Directors of the Company.
What is Form 2 or Specification? What is the difference between Complete and Provisional Specification?
Specification is the most important document in the entire Patenting procedure. We strongly recommend that you consult an Attorney before finalizing the specification. There are two types of specification provisional and complete.
Provisional Specification is logged to achieve earliest priority date. When the inventive concept is in its formative stages, and a lot of final details of the invention have to be worked out in future, it is better to log a provisional specification. On the other hand, if every thing about the invention is known and the invention can be commercialized or marketed the next day, it is better to log the complete specification straight away.
If a provisional specification is followed by a Complete Specification, the Applicant will also have to log the declaration of inventorship as in Form 5.
If a Complete Specification is not logged within 12 months of logging the Provisional Specification, the Patent Application will be deemed to have been abandoned.
Who will read my Patent Specification?
A good specification is Legal, Technical and Commercial Document. To begin with, the Specification would be read by the “Examiner” in Patent Office who would normally be a person skilled in the art or the field of the invention. However, during the later stages the Specification would be read by
(a) the Controller of Patents
(b) Investment Banker
(c) Lending Banker
(d) A Judge
Hence, it must be comprehensible even for those who are not so skilled in the area of invention.
What should be the contents of the Specification?
Adopt the following format while preparing the Specification.
(a) Title of the invention.
(b) Area of the Invention.
(c) Background of the invention.
(d) Summary of the invention.
(e) Explanation about the drawings. Law does not compel you to submit drawings. But remember a good drawing can save you from pages of written description.
(f) Detailed description of the invention.
(g) Claims. This is the most important part in a Patent Specification. Please always consult an Attorney before drafting the claim.
Is there an automatic right to Publication and Examination once a Complete Specification is Lodged?
There is an automatic right to Publication. The application gets published after 18 months from the date of filing of application or the date of priority of the application, whichever is earlier.
The Applicant has to specifically request for Examination after the publication of the Specification in the Patent Office Gazette, by paying prescribed fee. If the Examination is not requested within 48 months of the Priority Date, the Application will be deemed to have been abandoned.
Can this examination be expedited? When does the publication take place?
Normally publication of the application is done after 18 months from the date of filing of application or from the date of priority of the application, whichever is earlier. An applicant can request for examination only after publication.
Request for expedited publication can be made in Form 9 by paying the prescribed fee of Rs. 2,500/- for individuals and Rs. 10,000 for companies.
Thereafter, request for examination has to be made in Form 18 with a prescribed fee of Rs. 2,500/- for individuals and Rs. 10,000/- for companies.
The Express Request for Examination for National phase applications is possible on further payment of official fee of Rs. 1,000/- for individuals and Rs. 4,000/- for companies.
What should we do after the issuance of First Examination Report?
Usually, the First Examination Report will comprise many objections from the Patent Office. All the requirements of the Report would have to be complied within 1 Year from the date of the issuance of the First Examination Report.
In between, the Patent Office may issue further Official Actions if warranted by circumstances. If the requirements of the Examination Report are not complied within 1 year, then the application is deemed to be abandoned
Is it possible to amend the Patent Specification once filed?
The Patents Act, 1970 considers 2 types of amendments. After the receipt of the First Examination Report, amendments may be made to comply with the requirements of the Report. These are involuntary amendments made at the instance of the Patent Office and the same can be done free of cost.
In addition, voluntary amendments are also possible by filing Form 13 on payment of the prescribed fee. Voluntary amendments can be made either before or after the grant of the Patent.
However, amendments cannot be made for the purpose of increase in the scope of the claims or for incorporating additional disclosure.
The prescribed fee for amendment before grant is Rs. 500/- for individuals and Rs. 2,000/- for companies.
The prescribed fee for amendment after grant is Rs. 1,000/- for individuals and Rs. 4,000/- for companies.
Minor amendments for changing the name, address of the applicant and address for service can be effected on payment of reduced fee of Rs. 200 for individuals and Rs. 800/- for companies.
What happens if the requirements of the First Examination Report (FER) is not complied within the stipulated time? Will the applicant have a right of hearing and appeal?
If the requirements of the FER are not completed within the stipulated time, the application is deemed to have been abandoned. In case of abandonment, the Controller does not pass any speaking order but merely informs the applicant that the application has been abandoned. In such a case, the applicant does not have any right of appeal, but the aggrieved applicant can either file a Review Petition under Rule 130 of the Patent Rules before the Controller of the Patent or file a Writ petition under Art.226 of the Constitution.
Under the Patents Act, there is no automatic right of hearing before the rejection of the Patent application. If an applicant is very keen to have an oral hearing, he must specifically request for hearing. If the Controller rejects the application, even after hearing, the applicant can file an appeal within 90 days to the Intellectual Property Appellate Tribunal (IPAT) within 90 days of the order of rejection. As on date, the jurisdiction to hear patent appeal has not yet been conferred on IPAT and hence, the High Courts within whose jurisdiction the Patent Office is located are empowered to entertain Miscellaneous Appeal.
If two or more persons work together to make an invention, to whom will the patent be granted?
If each had a share in the ideas forming the invention as defined in the claims – even if only as to one claim, they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application.
What is the term of patent in India and when does the renewal fee become payable?
A patent is valid for 20 years from the date of filing of the application. In case of International applications filed under Patent Cooperation Treaty designating India, the term of the patent is 20 years from the international filing date
Does the Indian Law provide for Compulsory Licensing?
Yes. Indian Laws on Compulsory licensing are fair reasonable and/ or inconformity with the Paris Convention and WTO TRIPS agreement. Under Indian Law, any person interested may make an application for grant of Compulsory licence after 3 years from the date of the grant of the patent. A compulsory license can only be granted:
a. if the reasonable requirement of the public (domestic and foreign) have not been satisfied;
b. if the Patented Invention is not available to the public at a reasonable price;
c. if the Patented invention worked in India.
Thus it follows that if a Patentee is meeting the local demand for a patent at a reasonable cost, he can successfully prevent compulsory licensing.
In addition, in the case of a national emergency or extreme urgency for the purpose of preventing major disease like AIDS, Tuberculosis, malaria or other epidemics, the Controller can permit compulsory licensing irrespective of the above three conditions.
What is a Design?
Design is the ornamental value which appeals to the eyes of the user. The article to qualify for design protection must be related only to the appearance of the goods and not to the functions of the product. In other words, under Designs Act, only the aesthetic appeal of the product is protected and not the functions.
What is difference between Copyright and Design?
The Copyright is an inherent right which comes into existence along with the work under protection. Whereas, design is a statutory right granted by state to the author or owner of the Design. In cases where the work was to be protected under Designs Act and has not been done so, the automatic protection of Copyright extended to it will cease after 50 industrial reproductions. Hence it is advisable to seek protection under Designs Act for the articles of commerce which needs to be reproduced industrially.
Is registration compulsory to avail Design protection?
Yes to avail protection under the Designs Act, the article should be registered under Designs Act. Otherwise, the automatic protection of copyright will cease after 50 industrial reproductions.
What Designs are not registrable under Designs Act?
The following designs are not registrable according to designs act;
A design which is not novel or original;
The design which is anticipated by prior use or publication;
A design which is not significantly distinguishable from known designs or combination of known designs;
Comprises scandalous or obscene matter;
What is the term of Design Registration?
The term of design is 15 years, subject to the design being renewed after 10 years. The renewal is for another 5 years making the total duration up to 15 years.
What are the remedies available for Design Infringement?
The remedies available under the Designs Act are compensation payable which shall not exceed Rs. 50000/- (Rs. Fifty Thousand only). Apart from the compensation we can also pray for injunction.
What are Designs and are they protected in India?
Designs are for goods and articles that appeal to the eye of an individual or to his esthetic. Functional features are not protected under the Law of Designs. For it to qualify for design protection, it must relate to the shape and appearance of the goods or articles and it must be applied by a mechanical or chemical process. Design of garden or the petrol pump cannot be subject matters of design protection. The eligibility for design registration will be judged solely by the appeal to the eye.
Section 2(d) read with Section 2(a) and Section 5(1) of the Design Act lays down the definition of the Design.
What can be protected under Law of Designs?
Section 2 (a) makes it clear that only an article of manufacture and any substance which is artificial or partly artificial and partly natural and includes any part of an article capable of being made and sold separately.
Is a design for part of an article(s) registrable?
Yes, only if the part of an article is such that it is capable of being made and sold separately
Is registration compulsory for obtaining design protection?
Designs and patent are statutory rights and the statute prescribes registration as condition precedent for protection. Trade Mark and copyrights where originally common law rights and it is possible to have an unregistered copyright or an unregistered trade mark.
Is it possible for an Applicant to obtain design registration in all the classes of goods narrated in the IIIrd Schedule of the Design Rules?
Unlike the Law of Trade Marks that specifically permits multi class registration, Designs Law discourages Multi Class Application. Section 5 (3) provides that a Design may be registered in not more than one class.
However we are of the opinion that this is only directory and not mandatory as the Section uses the word ‘may’ instead of the word ‘shall’. Therefore it might be possible to file separate application for each classes. If the Patent and Design Office refuses, then to overcome the prohibition an appeal to the High Court against the Order of the Controller in this regard could be filed.
What is the inter-relationship between copyright and designs? Can one have both copyrights and designs at the same time?
No. It is not possible to have concurrent registration of both Design and Copyright to cover the shape and appearance of the goods.
Normally, an Applicant would be tempted to protect the shape and appearance of the goods by declaring the goods either as an artistic work or a sculpture because of the easier method of acquisition longer duration of protection and no obligation to pay renewal fee.
However Section 15 (1) of the Copyright Act makes it clear that Copyright shall not subsists concurrently with design.
Section 15 (2) further makes it clear that if an article is capable of being registered under the Designs Act but which has not been so registered, the copyright protection shall cease as soon as the article has been reproduced more that 50 times by an industrial or mechanical process.
What is the inter-relationship between registered design and trade mark? Can the shape of the article be covered under the Trademarks Act?
Prior to the enactment of Trademarks Act, 1999, the Law did not permit even non-functional shape of a good under the trade marks law. Now it is possible to obtain trade mark registration for goods that have a special shape which does not have any bearing on the functionality.
The Trademarks Act does not insists novelty as a requirement for registration. So we are of the opinion that it is possible for an Applicant to obtain Design registration first and when the design registration is about to expire, apply for a trade mark registration claiming prior use from the date of design registration and convert the design registration into a trade mark registration. By this method, the Applicant can protect his novel design in perpetuity.
However, before adopting this course of action consult your attorney.
Will all designs qualify for registration under the Deigns Act, 2000?
The Registration of following design is prohibited under law:a. A design which is not novel or original;b. The design which is anticipated by prior publication or prior public use;c. A design which is not significantly distinguishable from known designs or combination of known designs;d. Comprises scandalous or obscene matter.
How are colors handled under the design registration act?
The definition of design under the Indian Act includes designs with respect to lines or colours, the same being applied to an article whether in a two-dimensional or three-dimensional form.
Is any claim statement required?
(i) A statement to the effect as to what part of the Design has been claimed for protection, such as ornamentation, shape, composition of lines and colour, etc.(ii) A statement as to the claim of novelty.(iii) A statement as to the claim of priority
Is one design of a set of articles, such as a set of cups and saucers, allowed to be included in an application?
Yes, one design of a set of articles is allowed to be included in an application
Is a substantive examination conducted?
Yes, a substantive examination is conducted and the following are examined:-
(b) Prior publication in any tangible form anywhere in the world and
(c) Should not be against public order and morality
(d) Should be significantly distinguishable from other known design or combination of design
(e) Should be capable of being applied to a vendible article
(f) Whether the classification of the design is proper
(g) Whether the application has been filed in the prescribed format and along with the prescribed fee
How many days are provided to respond to the Office Action?
3 months are provided to respond to the Office Action.
How long does it usually take from the filing to the issue of registration?
It takes 6-9 months from the filing to the issue of registration certificate.
How long is the term of a design registration right?
The term of a design registration right is 15 years (First Registration continues for the period of 10 years. However, the same can be renewed for another 5 years).
Can a registered design subsequently revoked by Controller?
Yes. Any time during the subsistence of Design registration, any person can seek cancellation of design registration by filing an Application before the Controller under Section 19 and 31 of the Designs Act, 2000 in Form 17 by paying the prescribed fee of Rs. 500/-.
What are the remedies available for infringement of a registered design?
Section 22 of the Designs Act, 2000 provides that any fraudulent or obvious imitation of a registered design without the consent of the proprietor is unlawful and also prohibits the import of such material which closely resembles a registered Design.
The section very specifically provides that in a civil case compensation payable shall not exceed Rs. 50,000/- in respect of infringement of one registered Design. Because the compensation payable is statutorily limited, this is a good ground of insisting an interim injunction even before the commencement of trial.
Can criminal remedies be availed in case of design infringement?
Copyrights Act and Trademarks Act which provide that the infringement of these rights are cognizable offences where a Police Officer not below the Rank of the Inspector can conduct a search and even arrest without a warrant.
Section 22 of the Designs Act, 2000 does not expressly provide for criminal remedies in case of design infringement. The same Section does not specifically bar criminal remedies in case of Design infringement.
It might be possible in some cases to prosecute the design infringers under Indian Penal Code for various offences such as conspiracy, fraud and cheating.
We strongly advise that you consult an Attorney before initiation of such proceedings.
Who can apply for registration of the Geographical Indication?
Generally geographical indications are registered in the name of association of persons or an organization hailing from the same geographical region can apply for registration. Statutory bodies like development boards can also apply for registration.
What is the term of Geographical Indication Registration?
The registration of GI is valid for a period of 10 years and can be renewed for a period of 10 years, perpetually.
Can a Geographical Indication registration be transferred?
No, Section 24 of the Geographical Indication of Goods Act, 1999 clearly says that “notwithstanding anything contained in any law for the time being in force, any right to a registered GI shall not be subject matter of assignment, transmission, licensing, pledge, mortgage or any such other arrangement.
What is the legal position relating to geographical indications of goods in India?
Prior to the enactment of Geographical Indication of Goods (Registration and Protection) Act, 1999. There was no enactment relating to geographical indications. Prior to this enactment, a misdescription or false representation relating to a geographical indicators was considered as an act of passing off. Now after the passing of this Act, registration of a geographical indication is mandatory. Some of the most famous Indian Geographical Indicators are Darjiling Tea, Basmati Rice, Kanjeepuram sarees, etc. This legislation was also to give effect to the obligations India voluntarily assumed by becoming the member of WTO TRIPS Agreement and Paris Convention on the Protection of Industrial Property.
What is a Geographical Indication?
It is an Indication which, identifies the goods with a particular geographical location regarding the origin of the goods. It will be available to agricultural goods, natural goods or even manufacture goods. For a geographical indication to be registrable, the goods should display a unique quality, reputation or other characteristic attributable to its geographical origin, such as the climate or soil qualities, processing and production methods etc. It is possible to cover even handicrafts and foodstuff under the Act.
Can a geographical indicator be registered in the name of an individual?
Normally, a geographical indicator is a community or a group right. Hence it is not possible to get Geographical Indication registration in the name of an individual.
Who administers the registration of geographical indication?
A statutory body called Geographical Indication Registry has been established under the Act. The Registry maintains a Register of Geographical Indications and the Register is maintained in 2 parts viz, Part-A and Part-B.
Part A contains the essential characteristics of the goods and the name of the Registered Owner.
Part B contains the rules relating to the registration of the Authorized Users of that Geographical Indicator
What are the prohibitions against the registration of geographical indications?
(a) Indications which are likely to deceive or cause confusion.
(b) Indications which would be contrary to any law.
(c) Indications which contain scandalous or obscene matter.
(d) Indications which would hurt the religious sentiments of people.
(e) Indications which are generic in character.
What is the procedure for registration?
Any association of persons or organization or Statutory Authority can apply for registration and the application should contain:
a) A statement as to how the indication connotes specific quality, reputation or other characteristic which, are essentially due to the geographical environment, natural and human factors, special methods of production, processing or preparation, which takes place in the said geographical area.
b) The class of goods sought to be covered by the registration.
c) The geographical map of the territory in which, the goods originate.
d) Method of appearance of the geographical indicators on the goods.
e) Particulars of the procedures of the authorized users of the geographical indications.
A single application can be made covering the different classes of goods and in that case, prescribed fee for each class must be paid.
In the case of registration of foreign geographical indications, the application should contain an address for services located in India.
What happens to the application for registration in the Registry of Geographical Indications?
The application may be accepted either absolutely or conditionally. In case of refusal or conditional acceptance of the registration, the Registrar shall record in writing the grounds for refused or conditional acceptance stating the reasons for such decisions.
After the acceptance of the application, the application will be advertised in the Geographical Indication Journal and within 3 months of such advertisement any person can file an opposition proceedings against the registration.
The Registrar will forward the copy of the opposition to the applicant and within 2 months of receipt of opposition copy, the applicant should lodge a counter statement against the opposition.
If the applicant fails to lodge the counter statement, the application would be deemed to have been abandoned.
After this procedure is over, the parties are permitted to submit evidence in support of their respective cases.
After the submission of evidence, the Registrar will give an opportunity to the parties for an oral hearing and thereafter the matter will be decided in a quasi-judicial manner. Foreign entities wanting to lodge opposition will be required to furnish security for costs.
Is it possible to amend and correct the entries in the register of geographical indicators?
YES. Section 15 of the Act provides for making corrections and amendments to the entries in the register either before or after the registration of geographical indications.
What is the duration of a geographical indications?
The initial Registration of a Geographical Indication shall remain valid for a period of 10 years each. A grace period of 2 years has been provided for restoring the registration of geographical indications that has lapsed due to non payment of renewal fee.
What are the remedies available to the infringement of geographical indications?
The law provides both civil and criminal remedies.
Civil remedies include injunctions (Interim and permanent), damages, delivery up of the infringing goods for destruction and forfeiture of the goods that bear false representation of an existing Geographical Indication.
The criminal remedies may involve punishment to the offender which can be a minimum mandatory sentence of 6 months imprisonment and maximum of 3 years and the minimum mandatory fine of Rs.50,000/- and a maximum of Rs.2 lakhs. In case of subsequent convictions of the same offence, the minimum mandatory sentence will be one year imprisonment and fine of Rs.2 lakhs.
Is there a period of limitation for indication of criminal cases?
The law provides that the right to initiate a criminal case comes to an end after the expiration of 3 years from the commission of offence charged or 2 years after the discovery thereof by the prosecutor, whichever is earlier. The infringement of geographical indicator is a cognizable offence and the investigation has to be carried out by an officer with the rank of a Deputy Superintend of Police.
What is copyright?
Copyright is a right given to creator or owner of an artistic, literary or dramatic work to reproduce work for publication and performance in public.
Can an Idea be copyright?
No, an idea which is not expressed in a tangible form is not protected under Copyright.
What work can be copyright protected?
Any original work which is expressed in written form or in the form of a drawing or painting or any other form of expression except oral are eligible for copyright protection. Mere oral expression of an idea is not entitled for copyright protection.
Is the Copyright Registration mandatory?
No, the copyright is an in built right which is available from the moment the work (literary, dramatic, artistic) came into existence.
What are the rights available to owner against the infringers of copyright?
The owner can avail both the civil and criminal action against the infringers under the Copyright Act.
What is the duration of Copyright?
The duration of the protection under the copyright depends on the nature of work;
in case of literary work, the term is life of author plus 50 years from the day of calendar year preceding the death.
Copyright in photograph, a cinematographic film and sound recording is 60 years from the next Calendar year of publication.
Is Copyright transferable?
Yes, like any other property a copy right can be transferred absolutely e.g sale or assignment or can be transferred for a limited period of time under licensing arrangement.
Is the Copyright protection worldwide?
The laws governing copyright are almost similar in many countries. Moreover, there are international treaties and agreement which govern the protection extended to national of different countries under Copyright. The main Conventions are Universal Copyright Convention, Berne Convention, WIPO Copyright Treaty etc. Many countries require that work should be published in their territory to avail the protection under the Copyright Law.
Is reproduction in all form amounts to infringement?
No, the reproduction for educational purposes, for news articles or for delivering lectures does not amount to infringement. However, if the reproduction is done for commercial gains, it amounts to infringement e.g. photocopying a text book might be for educational purpose amounts to violation of Copyright. (This is very general view and to have more precise insight into the relevant provisions, please consults an advocate)
What are the criteria for award of copyright protection?
Copyright protection will be available if the following two conditions are fulfilled:
a. Originality, meaning that the work owes it origin to the author. Originality is different from novelty. An author of the work need not be the first to articulate the ideas or create the work.
b. Reduction into tangible form. For a work to be protected, it must be written down, drawn, painted or taped. Mere oral expression of idea will not qualify for copyright protection
Does the copyright law protect the ideas of the author and the future commercial expressions of the same idea?
No. The copyright law does not protect the idea and protects only the method of expression of idea. If an idea can only be expressed in a single way, such expressions cannot be protected under the Law of Copyright. Future commercial expressions of the idea cannot be protected under the Law of Copyright and it can be protected only under the Law of Patent.
What type of creative work does copyright protect?
Categories of works of authorship can include but are not limited to; Literary, Dramatic (including accompanying music) and Musical (including accompanying words or lyrics), Choreographic (including Pantomimes), Pictorial, Graphic, Sculptural, Computer Programs, Motion Pictures, Audiovisual and Sound recordings and Architectural works.
The subject matter of Copyright is generally described as an original creation of authorship that must be fixed in a tangible medium of expression. The works as now known or as later developed, must exist in some physical form. Virtually any form of expression will act as a tangible medium from which they can be reproduced or communicated, directly or using a machine or a device.
How long does copyright last?
The duration of the protection depends on the type of copyright.
In case of ‘literary work’ Copyright lasts for the life span of the author and for sixty years after the author’s death.
The same principle applies to joint authorship (two or more), with the copyright lasting for the life span of the longest surviving author and sixty years after the longest surviving authors death.
In the case of anonymous and psydonoumous work the copyright will subsist for sixty years from the date of publication.
Copyright in photographs will subsists for sixty years from the next calendar year of publication.
Copyright for cinematographic films will be sixty years from the next calendar year of publication.
Copyright for sound recording will be sixty years from the next calendar year of publication
Is copyright protection worldwide?
Most countries have acts of law relating to intellectual property and copyright issues with regard to their citizens rights. These countries are usually signatories to the numerous world treaties and agreements on copyright. Copyright laws are fairly similar worldwide. Many countries insist that for a work to be protected in their territories, there must be a publication within their territory within one year of the first publication. This requirement can be complied with by sending an e-mail with the attachment of the protected work to an addressee in other territories.
What is Copyright?
Copyright is a legal right, given exclusively to the creator/originator (or assignee) to make further copies for publication and public performance.
What are the various international Treaties relating to the Copyright?
There have been numerous international copyright conventions some of which include;
Universal Copyright Convention at Geneva in 1952.
Universal Copyright Convention as revised at Paris on 24th July 1971.
Berne Convention for the Protection of Literary and Artistic Works, Paris Act of 24th July 1971 as amended on September 28th 1979.
[Note: The first Berne Convention was on September 9th 1886]
WIPO World Intellectual Property Organization Diplomatic Conference Geneva, December 2 to 20, 1996
WIPO Copyright Treaty of December 20th 1996
WIPO Performances and Phonograms Treaty of December 20th 1996
The World Trade Organization Agreement on Trade Related Aspects of Intellectual Property Rights, Final Act Marrakech on 15th April 1994.
What work should I protect?
You should protect everything that you create and which you consider to be of value to you, or yours, now or in the future. If it is worth creating and if others would find it worthy of copying then it is worth protecting.
What is the benefit of protecting my work?
Once your creation has been fixed in a tangible medium of expression the copyright on your work is protected by copyright law.
By registering your copyright you will have irrefutable proof of first ownership of your intellectual property.
This proof can be used in a court of law in alleged cases of copyright infringement. When faced with an alleged case of copyright infringement you need this proof.
Proving the date of creation can be a problem. Copyright registration can make the proof on this point a lot easier. By registering it you will have an individually numbered certificate of registration of copyright relating to that particular copyright work.
Can I transfer my copyright?
Copyright can be ‘assigned’ (sold or given away) by the execution of a written document signed by the copyright owner. It is also possible for you to grant a copyright license, for a limited period of time, for specified forms of reproduction and merchandising, and in limited countries throughout the world. It can be for a specified flat fee or royalty, or both. In this way, you keep the copyright, and control over the merchandising, and still generate income, with the client also achieving their commercial aims.
Can a company be considered the author? Can an author and owner be different from one another?
A company can never be considered as an author of a work. However, it can become the owner, if the author creates the work within the scope of an employee’s duties. A distinction between contract of employment and contract for services. In the first case the employer becomes the owner and in the second case the author becomes the owner.
Who is an author?
Under the copyright law, the creator of the original expression in a work is its author. The author is also the owner of copyright unless there is a written agreement by which the author assigns the copyright to another person or entity, such as a publisher. In cases of works made for hire, the employer or commissioning party is considered to be the author
What are the rights of an author?
If the owner of the work is different from the author, the author will be eligible for the “moral rights” of the author. These rights include the right to be identified as an author and the right against the mutilation of the copyrighted work.
How much do I have to change in order to claim copyright in someone else’s work?
Only the owner of copyright in a work has the right to prepare, or to authorize someone else to create a new version of that work. Accordingly, you cannot claim copyright to another’s work, no matter how much you change it, unless you have the owner’s consent
What are the authorities created under the Copyright Act?
Under the Copyright Act there is a Registrar of Copyright and a Copyright Board, which specifically ascertain roles and responsibilities.
Copyright Office is an Administrative Authority and Copyright Board is a quasi–judicial body headed by a retired Supreme Court Judge.
Is it possible for other people to use the copyrighted work even without the consent of the owner?
Yes. But before that they would have to apply to the Copyright Board and obtain a Compulsory License. The Board will determine the terms and conditions under which the other person can get a compulsory license.
In addition, the Section 52 lays down that certain types of uses of Copyright will not amount to a copyright infringement.
For your information the Section 52 runs into 5 pages in fine print and hence it is advisable to consult an attorney.
What is a trademark?
A trademark is a word, name, sign, symbol, logo or device which is used in relation to the articles of commerce or the services to distinguish it from the other same or similar goods or services coming from a different source.
For the registration of the trademark, is it necessary that the mark is used?
No, a trademark can be registered for intended use or proposed use.
How to adopt a trademark?
A trademark should be easy to speak, spell and remember. The proprietor should avoid using laudatory words such as best, superb, perfect etc. It is always advisable to conduct a market survey and trademark search with the Registry before using a trademark.
Who can apply for the trademark registration?
Any person or legal entity claiming to be the proprietor can apply for trademark registration.
Are the trademarks transferable?
Yes, like any other property trademarks can also be transferred by way of assignment or transmission.
Can a third party use the trade mark?
Yes, a third party can use the trademark under a license from the proprietor of the trademark.
Can the trademark be removed from the register of trademarks?
Yes, the trademark can be removed from the register of trademarks. This can be done on the ground that the mark is wrongly remaining on the register.
Can a registered trademark be amended at a later date?
Yes, the trademark can be amended. However, the amendment should not amount to substantial change in the original character of the trademark.
Is the registration needs to be renewed?
Yes, the registration of a trademark is valid for a period of 10 years. However, it can be renewed every 10 years, perpetually.
Is the trademark required to be used in India?
No, the export of the goods originating from India also amounts to be use in the territory of India.
Is the trade mark liable to be cancelled on the ground of non use?
Yes, a trademark registration can be cancelled on the basis of non use.
Is the registration of a trademark compulsory?
Registration of a trademark is not compulsory. However, the registration is the prima facie evidence of the proprietorship of the trademark under registration.
Whether foreign proprietors can apply for registration of their trademark in India?
Yes, foreign proprietors can also apply for registration in India. The trademark law in India is TRIPS compliant and provides for protection of well-known trademarks and recognizes trans border reputation.
Can a foreign applicant claim the priority based on earlier application.
Yes, the applicant can claim priority based on earlier application made in a convention country. The application needs to be filed in 6 months from the date of earlier application
For a trade mark to be registrable, should the mark be used?
No, for a trade mark to be registrable it is not necessary that the trade mark must have been in actual use. Even the marks that are proposed to be used can be registered.
Is a statement of use of a trade mark required at the time of filing an application for registration?
Yes, a statement of use of a trade mark is required at the time of filing.
At the time of filing the trade mark application, is “intent to use” the trademark sufficient?
Yes, at the time of filing the trade mark application, “intent to use” the trade mark is sufficient
Does the Indian Law permit trade mark registrations for goods as well as services?
Yes the revised Trademarks Act, 1999 permits registration of trade marks for goods as well as services
How does the trade mark registration system operate?
Under the Trademarks Act; Goods and Services have been classified into 42 different classes and the applicant will have to ascertain as to which of the classes their goods fall under. Sometimes, the business of the applicant may relate to similar goods but (like tooth paste and tooth brush) under 4th Schedule of the Trademarks Act, these goods fall under different categories since 2 applications may be necessary to secure complete protection.
What is the classification of the goods adopted in India?
The 7th Edition of International Classification of goods and services (Nice Classification) is adopted in India.
Is a three-dimensional mark registrable?
Yes, a three-dimensional mark is registrable
Is sound or smell registrable as a mark?
Yes, sounds or smells are registrable as a mark.
If sounds or smells are registrable, how are these marks specified?
They should be capable of being reproduced graphically and should be distinctive.
Sound – musical notations along with the sound recording
Smell – chemical formula along with the sample
Are there any grounds for refusal of registration of trade marks?
Under the Trademarks Act, there are 2 grounds for refusal of registration of trade marks:
(a) Absolute ground for refusal of registration of trade mark: marks that are devoid of any distinctive character which in the trade serve to designate the kind, quality, quantity and geographical origin will not be registered. However, if it can be proved that these marks have acquired a distinctive character prior to application by long continuous and uninterrupted use of the mark; marks will also not be registered if they are likely to deceive public or confusion. If the mark comprises scandalous or obscene matter or if the mark is likely to offend the religious sensibilities of the people the same cannot be registered. In addition, if the mark registration is prohibited under the Emblems and Names (Prevention of Improper Use) Act, it will not be registered. Normally, if the shape of the goods is necessary to obtain a technical result or the shape that adds substantial value to the goods it will not be registered.
(b) Relative ground for refusal of registration of trade mark: when the proposed mark for registration is in conflict with the identity of an earlier registered trade mark in respect of the same or similar goods or services or if it conflicts with the internationally well-known trade mark even if it is not registered in India.
Can a Registered Trade mark be amended at a later date?
Yes, the filed mark is allowed to be amended as per the provision of Section 22 of the Trademarks Act, which allows the amendment of the mark provided it does not amount to a substantial change in the character of the mark as such. It is practice of the Registrar Registrar of Trade Marks that if the mark applied as a label mark, any superficial or insignificant character or feature of the said mark, is allowed to be amended, if a request filed in the prescribed format along with 16 copies of the amended label mark.
Is it possible to get an opinion from the Registrar regarding the registerability of the marks?
Yes, any person by applying in Form 55 and payment of an official prescribed fee can get an opinion from the registrar as to the distinctiveness of the proposed mark by mentioning the mark as well as the goods or services with which the marks are proposed to be used.
Can we know whether similar marks have already been registered in respect of the same type of goods?
Yes, it is possible to make a request for search.
What is the procedure adopted by the Trade Mark Registry for completing the process of registration of a brand?
The Trade Mark Office requires that an application for registration must be made in Form 1 in triplicate along with a prescribed fee of Rs. 2,500/- per application per class. Form 1 should be accompanied by five representations of the brand in the prescribed manner.
On receipt of the Application, the Trade Mark Registry will issue an Examination Report and the Applicant will have to comply with the requirements of the report within a month of receiving the report.
On compliantion of these requirements, the mark will be advertised in the Trade Mark Office Journal prior to the acceptance. If there is no opposition, the mark will proceed towards acceptance.
Is there any opposition system for third parties?
Yes, there is an opposition system for third parties wherein within three months after the publication of the mark in the Trade Marks Journal and from the date of publication (the same being extendable by another one month). Soon after the receipt of Notice of Opposition, the Applicant for Registration must file Counter Statement against Opposition. There after, the Opponent will be allowed to file Evidence in Support of Opposition. The Applicant would also be given an opportunity to rebut the Evidence filed by the Opponent. If the Applicant fails to lodge the Counter Statement against the Opposition, then the Application will be deemed to be abandoned.
What if the Applicant doesn’t respond to the First Examination Report within the stipulated time?
It is imperative that the Applicant must respond to the requirements of the Examination Report within 30 days. If the Applicant either does not respond to the Examination Report or fail to comply with the requirements of the Report, the Application shall be deemed to be abandoned. In such a case, the Applicant does not have a right of Appeal any where. However, the Applicant can file a Writ Petition
What are the ways to overcome the objection raised in the Examiners Report?
The Applicant can produce evidence to the Examiner that the mark had over a period of time acquired distinctiveness and the consumers associate the brand only with the Applicant and none else. For this purpose, the Applicant can file an Affidavit along with evidence to show the amount of money spent on advertisements, produce publicity brochures and the other hand bills to popularize the brand.
What if the Examiner rejects the Application even after the Applicant had responded to the objection in the first examination report? Will the Applicant be heard before the rejection?
There is no automatic right of hearing before rejection of a trade mark Application. If the Applicant is so particular, the Applicant has to request for hearing while responding to the first examination report.
Despite the hearing and the response given by the Applicant or in pursuant of a opposition logged by a third party, if the Trade Mark Registry rejects the Application the aggrieved Applicant can file an Appeal to the Intellectual Property Appellate Tribunal within 90 days of the receipt of the order.
Is renewal allowed?
Yes, renewal of a trade mark is allowed. Renewal must be applied for in Form 12 along with a prescribed fee of Rs. 5,000/-.
How long is the term of trade mark right (registration)?
The trade mark right can be perpetual (provided it is renewed after every 10 years).
Is a renewal petition (application) examined?
Yes, usually the examination includes whether the renewal application is in time, the same is filed along with the prescribed fees and the same is filed by the proprietor of the mark on record.
Is the trade mark holder supposed to use his registered trade mark?
Yes, the trade mark holder is supposed to use his registered trade mark. But if the Law prohibits the employment of the mark in Indian market by the Registered Owner, in such a case, the non-use of the mark by the owner can be condoned.
Is there any cancellation system on the ground of non-use of a registered mark?
Yes, there is a cancellation system on the ground of non-use of a registered mark or fraudulent obtaining of the trade mark by filing petition for rectification of the trade mark under Section 92 of the Trademarks Act.
How many years of non-use does causes cancellation?
5 years of non use causes cancellation.
What are Collective trade marks?
A collective trade mark can be obtained by an organization which can permit the members to use the mark. The association has to prepare and file a regulation with the Trade Mark Registry setting out the rules specifying standards and criteria for membership. Collective trade mark cannot be owned by individuals or a body corporate. It has to be a registered association or Trust having many members or beneficiaries.
What are Certification Trade Marks?
Certification trade marks guarantee that the goods or services that use the mark have been certified by to have been made of a particular material, method of manufacture, quality, accuracy or origin. This can be owned by individuals or a corporate body. Regulation governing the Certification would have to be logged with the Trade Mark Registry along with the application.
Is registration of trade mark compulsory? What if a person has a mark which is well known and has been used for a long time and some one else fraudulently uses the identical or similar mark?
Registration of a trade mark is not compulsory. However, the Registration of the trade mark establishes that the registered owner is the proprietor of the mark covered by the registration. Obtaining registration is like having a reserved ticket for a journey even though Law doesn’t compel you to reserve a ticket for traveling.
In the case unregistered yet well known brands, the owner of the brand can initiate a passing off action. Differences between Passing Off action and trade mark infringement are given as under:
1In case ofTrade Mark Infringement, Mere possibility of confusion is enough for getting interim and final relief.
But in case of Passing Off Actual deception has to be proved for any relief.
2.Trade Mark infringement is actionable per se and the Registered Owner need not prove specific monetary damage because of the infringement.
In a Passing Off case, the owner of the unregistered brand has to prove actual damage because of the wrongful adoption.
Trade Mark registration is prima facie proof of ownership of the mark.
In a Passing off case, the Plaintiff has to lead evidence showing long uninterrupted use of the brand and the fact that the infringer adopted the mark knowing the goodwill of the Plaintiff’s mark
Registered owner can initiate proceedings within the Jurisdiction of a Court where the Owner / Plaintiff resides or carries on business.
Passing Off case can only be initiated in a place where the Defendant resides or carries on business or where any part of the cause of action arose.
What is an Invention?
According to Indian Patents Act, 1970 “invention means a new product and process involving an inventive step and capable of industrial application.
What inventions are not patentable under Indian Patent Law?
Section 3 of Indian patents Act defines as non patentable invention.
· an invention which is frivolous or which claims anything obvious contrary to well established natural laws;
· an invention the primary or intended use of which would be contrary to law or morality or injurious to public health;
· the mere discovery of a scientific principle or the formulation of an abstract theory;
· the mere discovery of any new property of new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant;
· a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
· the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
· a method or process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement or control of manufacture;
· a method of agriculture or horticulture;
· any process for the medicinal, surgical, curative, prophylactic or other treatment of human beings or any process for a similar treatment of animals or plants to render them free of disease or to increase their economic value or that of their products;
· plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
· a computer programme per se other than its technical application to industry or a combination with hardware;
· a mathematical method or a business method or algorithms
· a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works or television productions;
· a mere scheme or rule or method of performing mental act or method of playing game;
· a presentation of information;
· topography of integrated circuits;
· an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components;
Further, Section 4 of Patents Act provides that No patent shall be granted in respect of an invention relating to atomic energy.
What inventions are considered patentable?
Inventions which are Novel, inventive and have industrial applicability are considered patentable.
What are the languages for filing a patent application?
An application for patent can be filed in English or Hindi. However, for the sake of convenience it is advisable to file the application in English. No other language is accepted by patent office except English or Hindi.
Would the subsequent changes in ownership or right to use of the mark be notified to the Registry?
Trade Marks can be either assigned in full of transmitted in part. All transmissions or assignments must be registered with the Registrar of Trade Marks on Form 23 or 24 of the Trade Marks. Under the Act there is a classification if the owners delay the registration of the transmission or assignment, the Applicants will have to increased registration fee. The Trade Mark Rules make a classification between assignment of a trade mark with goodwill and assignment of a trade mark without goodwill. In case of Assignment without goodwill the Registry would insist on Advertisement in Newspapers and permit assignment only after ensuring that interest of the third party would not be affected.
Advice to foreign applicants who are interested in protecting their mark in India?
Indian Law has been harmonized and the same have now become TRIPS compliant. Further, the Indian Law now protects a well-known and famous mark irrespective of the facts as to whether the same is used and/or registered in India. Moreover, it also provides for claiming priority based upon an earlier application made in a convention country.
Is it possible to amend the specification filed?
Yes, a patent specification can be amended. However, the amendments should not go beyond the scope of the invention disclosed in the specification.
Can an inventor file application for patent if different countries?
Yes, an inventor or his assignee can file an application for grant of patent in different countries. The applicant can either opt for convention route or PCT route to reach different jurisdictions for the patent.
Is there a single patent, enforceable in all the countries?
No, there is nothing called global patent. The applicant has to approach the respective patent office to get a patent granted in his name for the invention.
What is the duration of a patent in India?
A patent is valid for 20 years from the date of filing of the application for patent. Once the patent is granted, the owner of the patent is required to pay annuity to keep the patent in force.
What are the remedies in case of an infringement of copyright?
The Law provides civil and criminal remedies in case of infringement of copyright. Copyright infringement is a cognizable offence where a Police Officer not below the Rank of a Sub-Inspector can arrest the offender without the warrant and conduct the search even without prior authorization of a Court.
Copyright infringement if proved in a Court of Law carries a minimum mandatory sentence of imprisonment of six months and minimum fine of Rs. 50,000 which can extend upto Rs. 2 lakh. The Act further provides that there will be an enhanced penalty in case of second and subsequent convictions.
In Civil Cases, the District Court can be persuaded not only to give an interim injunction without notice to the other party but also usually gives a direction under Order 39 Rule 7 of C.P.C. where a Commissioner appointed by the Court will visit the premises of the infringers and will be empowered to conduct a search of the inventors premises and cease infringing material from the infringers premises. The seized material can be used at a later point of time to establish infringement.
In UK these types of orders are called ANTON PILLOR ORDERS.