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October 10, 2008 By Aswal Associates
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 other countries Multi class filing is allowed in India. 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 other countries Multi class filing is allowed in India.
Statue: The various statues dealing with Intellectual property laws in India are as follows: 1. Trademarks Act, 1999 2. Copyright Act, 1957 3. Patents Act, 1970 as amended by Patents (Amendments) Act, 2005 4. Designs Act, 2000 5. Code of Civil Procedures, 1908 6. Indian Penal Code, 1860 7. Geographical Indication of Goods (Registration & Protection) Act, 1999 8. Semiconductor, Integrated Circuit Layout Design Act, 2000 9. Plants Varieties Protection and Farmers¶ Rights Act, 2001 10. Information Technology Act, 2000
Requirement: A µTrademark¶ means a mark capable of being represented graphically and which is capable of distinguishing
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. . A µMark¶ includes a device. numerals. ticket. 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. Now the concept of ³well known mark´ has been introduced after the last amendment and Section 2 (zg) defines a well known mark as: ³Well-known trademark. (c) The duration. common surnames or geographical names should be avoided as these confer weaker protection to the proprietor even if registered. Therefore while selecting a trademark. (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. letter. extent and geographical area of any use for that trademark. (a) the knowledge or recognition of the alleged well known mark in the relevant section of the public including knowledge obtained as a result of promotion of the trademark. name (including abbreviations).´ While determining whether the mark is well-known mark. (b) the duration. (e) The record of successful enforcements of the rights in that trademark. words that are directly descriptive of the goods. signature.the goods or services of one person from those of others. the registrar will take in to consideration while determining that the mark is a well known mark. in particular the extent to which the trademark has been recognized as a well known trademark by any Court or Registrar under that record. packaging or combination of colors and any combination thereof. word. shape of goods. heading. brand. label. in relation to any goods or services. extent and geographical area for any promotion of the trademark including advertising or publicity and presentation at fairs or exhibition of the goods or services in which the trademark appears.
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. d) Trademarks or signs that are customary in current language and in the bonafide and established and customary practice of the trade. ³Relevant section of Public´ may be actual or potential consumers of. f) Trademarks consisting of shape which are purely functional or are necessary to obtain a technical result or . 1999 sets out the absolute grounds for refusal of trademarks. persons involved in channels of distribution of or business circles dealing with the type of goods or services to which the mark is applied. or in respect of which an application for registration has been filed in any jurisdiction other than India or e) The trademark is well known to the public at large in India. the Registrar shall consider that trademark as a well known trademark for registration under this Act. b) Trademarks that are descriptive. which can be grouped under following heads: a) Trademark is devoid of distinctive character. The Registrar is not required to consider the following facts while determining a well known trademark. a) The Trademark has been used in India b) The Trademark has been registered c) The application for registration of the Trademark has been filed in India. Various Grounds for refusal: Absolute grounds: Section 9 of the Trademarks Act. d) The trademark is well known in or has been registered in. Priority: For claiming a priority from an application filed in United States a corresponding application should be filed in India within 6 months of date of filing of original application. e) Trademarks comprising scandalous or obscene matter or likely to hurt religious susceptibilities in India. c) Trademarks likely to deceive of cause confusion.
c) Fair use in description of the goods or services. b) Prohibition of use of the trademark under passing off or law of copyright.give substantial value to the goods. or g) Trademarks whose use is prohibited under Emblems and Names (Prevention of Improper Use) Act. which can be grouped under following heads: a) identical or similar to a previous mark with and/or without similar or identical goods. or c) Prior user Against Injunction suit or criminal matters a) Use in accordance with honest practices in Industrial or commercial matters. 1999 sets out the relative grounds for refusal of trademarks. b) take into consideration the bad faith involved either of the applicant or the opponent affecting the rights . as an International nonproprietary names. or b) Declared by the World Health Organization and notified as such by the Registrar. Special Considerations in case of well known mark: As per Section 11 of the Trademarks Act. 1950. or d) Generic ness. Statutory defense available under the Act: For registration: a) Honest concurrent use. while considering an application for registration of a trademark and opposition filed in respect thereof the Registrar shall a) protect a well known trademark against the identical or similar trademark. b) Acquiescence. Prohibition: Section 13 of the Trademarks Act. Relative grounds of refusal: Section 11 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 distinguished from mixtures) in respect of a chemical substance or preparation. b) Parallel Imports.
Indian Trademarks law is at par with the International laws and has stringent procedures for safeguarding and protecting interest of the proprietor of mark.g. A trademark can be assigned with or without the goodwill attached to it. are renewable for a period of 10 years on payment of prescribed fees. Assignment/ license: Trademarks are now recognized as a ³movable property´ under the Indian law and can be therefore assigned/ licensed. Anton Pillar Order. by filing a request with prescribed fees. One month extension is available if sought before the expiry of 3 months time. search. examination etc. 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. Express processing: Under Indian trademark law now it is possible to expedite the various proceeding e. ABOUT THE AUTHOR: Sudhir Kumar . However this provision shall not effect the trademark if it trademark has been registered in good faith disclosing the material information to the Registrar or where right to a trademark has been acquired through use in good faith before the commencement of this Act. Enforcement of Trademarks Rights: 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. Permanent Injunction.relating to the trade mark. Before the Courts: Ex-parte Injunction. and /or Arrest and Seizure of goods (irrespective of registration). Renewal: The trademarks can be renewed perpetually.
the Netherlands and Luxembourg have a single trademark registry. An Indian registration provides protection only in India and its territories. a . Belgium. 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. International trademark protection There is no system as yet wherein a single trademark application is sufficient to protect the trademark right internationally. The African Organization for Intellectual Property (OAPI). A party that files their first trademark application in a member state of the Convention. such as India. For example. the owner must seek protection in each country separately under the relevant laws.The author is an Advocate & IPR Attorney practising in India and working with Aswal Associates. known as the Community Trademark. 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. The European Union consisting of 15 countries has adopted its own trademark system. He should initiate rectification proceedings if an identical or deceptively similar trademark is registered. India. can within six months of that filing date file applications in other member countries claiming the priority of the first application. Paris convention* provides certain privileges to member countries in trademark registration. If the owner of a mark wishes to protect a mark in other countries. If the trademark is misused by others he should file a suit for infringement and passing off and also take criminal action. However. It is also possible to utilize multinational filing systems in certain regions in order to obtain trademark protection. Use Of Trademarks In Foreign Countries Trademark rights are granted on a country-by-country basis. 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. Attorneys at Law & Intellectual Property. commonly referred to as the Benelux Trademark Register.
Article Source: http://EzineArticles. 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. The last group of countries should be those have a history of unauthorized registration of other's trademarks. It defined the meaning and scope of industrial property rights protection and established basic principles and rules. Therefore. Countries where a trademark is currently in use. Almost all countries have trademark offices in which applications may be filed. should be the first to be considered for seeking registered protection. of which India is a member. including trademarks.com/76015 . If commencing use shortly or expanding use to other countries within a few years.group of African nations. when contemplating trademark protection in various countries. but prior use of trademark is not recognized. * Paris Convention is the most basic and important multilateral convention relating to intellectual property. have replaced their national trademark offices with a common trademark office which offers a single trademark registration valid in all of the member states. then such countries should also be included.
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