Index of Authorities: Examination-Of-Trademark-Conflicts

INDEX OF AUTHORITIES
CASE-LAW
1. K.R Beri and Co. v The Metal Godds Manufacturing Co. Pvt Ltd., AIR 1980 Delhi 299
2. Anchor Health and Beauty Care v. Colgate Palmolive Co, 108 (2003) DLT 51
3. Dragao Quimica vs. J & F Participacoes
4. Cadila Healthcare Ltd v. Cadila Pharmaceuticals Ltd. 2001(5) SCC 73
STATUTES
1. Trademarks Act, 1999, No. 47, Acts of Parliament, (India)
2. Law on Industrial Property,1996, No. 9279, Acts of Parliament, Brazil
3. Normative Act No. 135, 1997
4. Constitution of the Federative Republic of Brazil, 1988
5. Specific Relief Act, 1963, Act No. 47, Acts of Parliament (India)
6. Code of Civil Procedure,1908, Act No.5, Acts of Parliament, India
ARTICLES
1. Bherig Advogados ‘Legal Framework- Brazil’ https://www.worldtrademarkreview.com/portfolio-
management/brazil-4
2. Bhering Advogados’ ‘At a glance: trademark registration and use in Brazil’
https://www.lexology.com/library/detail.aspx?g=e6d25ea0-d0ff-40a6-8621-e067f88f546d
3. Financier Worldwide ’Brazilian courts approve doctrine for examination of trademark
conflicts’ https://www.financierworldwide.com/brazilian-courts-approve-doctrine-for-
examination-of-trademark-conflicts
4.
JURISDICTIONAL COMPARISON OF TRADEMARK LAW IN INDIA
AND BRAZIL
ABSTRACT
I. DOES THIS JURISDICTION USE “FIRST –TO-USE” OR “FRIST TO FILE”?

A. India: this jurisdiction uses the principle of first to use which is if a person has used a
trademark for certain time period prior to its registration he can claim rights over it.
This principle is reiterated in the section 341 of the Trademark act. The section expands
this principle as follows: “Saving for vested rights.—Nothing in this Act shall entitle the
proprietor or a registered user of registered trade mark to interfere with or restrain the use
by any person of a trade mark identical with or nearly resembling it in relation to goods or
services in relation to which that person or a predecessor in title of his has continuously used
that trade mark from a date prior— 21 (a) to the use of the first-mentioned trade mark in
relation to those goods or services by the proprietor or a predecessor in title of his; or (b) to
the date of registration of the first-mentioned trade mark in respect of those goods or
services in the name of the proprietor of a predecessor in title of his; whichever is the earlier,
and the Registrar shall not refuse (on such use being proved) to register the second
mentioned trade mark by reason only of the registration of the first-mentioned trade mark.”
B. Brazil : this jurisdiction uses the first to file approach. Which is if a proprietor has filed
for a mark to be registered in his name then the other prior users will have to abandon
their claim on the mark. The article 1262 of the brazil industrial property law elaborates
the same.
II. WHAT IS THE GRACE PERIOD FOR RENEWAL OF TRADEMARK
REGISTRATIONS IN INDIA AND BRAZIL?
A. India:
Section 25 of the Trademarks Act, 1999 prescribes the Duration, renewal and restoration of
registered Trademarks.3 It states that the trademark is registered for 10 years and can be
renewed. If the application and fees of renewal is made within six months from the date of
1
Trademarks Act, 1999, §34, No. 47, Acts of Parliament, (India)
2
Law on Industrial Property,1996, Art. 126, No. 9279, Acts of Parliament, Brazil
3
expiration of the last time the trademark was registered, the trademark shall be renewed. 4
Further, where a trademark has been removed on grounds of non-payment of the prescribed
fee, after six months and within 1 year from expiration of last registration, the Registrar may,
if it feels it fit to do so, renew the registration for another 10 years.5
B. Brazil:
The Brazil Industrial Property Law (Hereinafter “BIPL”) states in Article 108 that the
renewal request must be filed during the last year of the term of the registration and must be
accompanied by proof of payment of the respective fee. If a renewal request has not been
made by the end of the registration term, the registrant may make such request within the
following six months on payment of an additional fee.6
Further, Article 133(§1) states that such a registration for renewal has to be made during the
last year of the registration period, before which it expires. A further grace period of 6
months is given if a request of renewal has not been made by the end of the last date of expiry
of registration.7
It is clear that the difference of the grace period is the flexibility in terms of registration
before the last day of expiration of the 10-year period. While the BIPL states that the renewal
application must be filed only during the last year of the registration term, The Trademarks
Act of India does not have such a restriction.
III.LICENSING OF REGISTERED MARKS.
A. India:
The Trademarks Act, 1999 contains no mention of the terms such as "licence" or "licencing."
Sections 48-55 of the Act8 explain the idea of trademark licencing and the rules that regulate
it. The word "registered user" under the Act can be considered equivalent with the term
"licensee." According to Section 2(1)(r) of the 1999 Act9, "permitted use" refers to the use of
a registered trademark by a third party as a registered user, as well as use by a third party with
the registered proprietor's approval. The term "may" in Section 48(1) of the Act indicates that
a licencing agreement's registration is not required in order for it to be licenced. 10 Sections
48-54 of the Act outline the steps to becoming a registered user of a trademark.
4
Trademarks Act, 1999, §25(3), No. 47, Acts of Parliament, (India)
5
6
7
8
Trademarks Act, 1999, §48 -§55, No. 47, Acts of Parliament, (India)
9
Trademarks Act, 1999, §2(1)(r), No. 47, Acts of Parliament, (India)
10
To become a registered user, the user must submit a joint application/request to the
Trademark Registrar with the Licensor within 6 months after signing the licence agreement
(in Form TM-28).11 Once the Registrar is pleased with the application, he registers the
prospective registered licensee for the products or services in question. It is important to note
that the sale by proprietor/licensor of a registered trademark instantly ends the licence.
B. Brazil:
According to Article 2 of the Brazilian Industrial Property Law, 1996, the act protects the
rights relating to Industrial Property, which includes Trademarks.12 The BIPL also presents
general provisions on transfer of technology agreements, which are further regulated by the
Normative Act No. 135, 199713, which has specified various categories of agreements
involving technology transfer, one of such being licensing of trademarks.
The Brazilian Industrial Property Institute (the “INPI”) is the main authority in charge of
regulating any transfer of technology agreements. A licence agreement becomes binding
between the contracting parties the moment it is signed. However, in order to be effectively
enforced against third parties, a trademark licence agreement must be recorded with the
Brazilian Patent and Trademark Office (Hereinafter “BPTO”). It will take effect against third
parties on the date it is published in the Official Gazette.
If royalties are agreed upon, registration of the licence agreement with the BPTO is also
required. Remittance of payments from trademark licences will be accepted only after the
BPTO grants a respective trademark registration. Payments made before the registration is
granted are not permitted to be made retrospectively. Proof of usage does not need
registration with the BPTO.14
IV. ASSIGNMENT OF REGISTERED MARKS.
Assignment of a trademark signifies transfer of ownership of the mark. The relevant

provisions in the jurisdictions are as follows:
A. India:
Section 2(b) of the Trademarks Act defines assignment as a written assignment made by the
parties involved.15 Sections 37 and 38 of the Trademarks Act govern trademark transfer.
When a trademark is assigned, the assignee has the right to use the trademark and takes the
place of the former proprietor or owner.16
B. Brazil:
11
12
13
Normative Act No. 135, 1997
14
Bherig Advogados ‘Legal Framework- Brazil’ https://www.worldtrademarkreview.com/portfolio-
management/brazil-4
15
Trademarks Act, 1999, §2(b), No. 47, Acts of Parliament, (India)
16
Trademarks Act, 1999, §37 - §38, No. 47, Acts of Parliament, (India)
Articles 134 and 135 of the Brazil Industrial Property Act govern assignment of transfers.
The assignment should be recorded at the Brazilian Patents and Trademarks Office in order to
take effect. 17A trademark assignment (application or registration) must be requested using a
specific form, which must include either a simple assignment document signed by the parties
or their legal representatives, or the original assignment document or a simple copy thereof,
as well as a power of attorney executed by the assignee. Applications and registrations may
be assigned as long as the assignee meets the legal criteria for obtaining registration. A
trademark application or registration assignment only covers the trademark; no goodwill or
other business assets must be given for an assignment to be effective.
V. WHETHER PARTIAL ASSIGNMENT OF TRADEMARK OF GOODS AND

SERVICES COVERED BY A REGISTRATION IS PERMITTED IN THE
JURISDICTIONS?
A. India:
Section 38 of the Trademarks Act, 1999 states that a registered trademark is assignable in
respect of all goods or some of the goods and services of the trademark to be registered. 18
This is known as Partial Assignment of a Trademark. Therefore, Partial Assignment is
permitted for registered trademarks in India.
B. Brazil:
Requesting a partial assignment of a trademark application or registration is not permissible.
The assignment must include all registrations or applications that cover same or similar
trademarks covering identical, comparable, or related items or services, according to the
Brazilian IP Act, or the non-assigned registrations or applications will be revoked or
dismissed (Section 135 of the BIPL). The BPTO has recently begun taking formal measures
during the assignment process, requesting that the parties alter the assignment agreement to
avoid the cancellation or dismissal of unassigned marks.
VI. WHETHER PARTIAL ASSIGNMENT OF TRADEMARK OF GOODS AND

SERVICES LISTED IN AN APPLICATION IS PERMITTED IN THE
JURISDICTIONS?
A. India:
17
Law on Industrial Property,1996, Art. 134-135, No. 9279, Acts of Parliament, Brazil
18
Section 45 of the Trademarks Act, 1999 states that when a person acquires rights to a
registered trademark through assignment or transmission, he must apply to the Registrar in
the prescribed manner to register his title, and the Registrar shall, upon receipt of the
application, register him as the proprietor of the trademark in respect of the goods or services
for which the assignment or transmission has effect, and shall cause particular attention to the
trademark.19 The goods and services mentioned could therefore be partially assigned.
B. Brazil:
Article 135 of the BIPL states that the assignment shall include all goods and services in the
application in the name of the assignor. This means that partial assignment is not permissible
and all identical goods and services can only be assigned in case of application for
assignment as well.
VII. WHETHER OPPOSITIONS ARE AVIALIABLE PRE OR POST-GRANT OF

THE TRADEMARK?
A. India:
Section 21 of the Trademark Act, 199920 states that any person can file a notice for opposition
4 months from the date of advertisement of the registration. This means it is available post-
grant other proceedings such as Counter statements, Evidences and final hearing come after
the expiry of the 4 month period.
B. Brazil:
Once the trademark has been examined by the Brazilian Patent and Trademark Office, the
application for opposition proceedings can be filed within 60 days of such examination.21
Further, after the examination by the Office is done after such opposition proceedings, a
decision will be issued which either allowing or rejecting the application for registration.22
VIII. WHETHER NON-USE IS CONSIDERED AS GROUND FOR CANCELLATION

OF TRADEMARK?
A. India:
19
20
21
22
The trademark may be withdrawn from the register under 47(1)(a) if it is proven that it was
not registered with a bona fide interest and was not put into use three months previous to the
date of application.
Clause 2 of the same section deals with the removal of a trademark that has been unused for
at least five years. This time runs from the date of registration to three months before the
application for removal is filed.23
If the registrar or appellate board determines that the trademark was registered without a bona
fide intent to use in connection with goods and services, and the trademark has not been used
for five years and three months (5 years & 3 months) from the date of application, the
trademark will be removed from the register and lose its status.24
The Division bench of the Supreme Court had held in the case of K.R Beri and Co. v The
Metal Godds Manufacturing Co. Pvt Ltd.25, that a trademark may be removed from the
Register of Trademarks unless it can be demonstrated that the non-use was owing to the
existence of "special circumstances" in the trade, not to any desire to abandon or not use the
trademark. In this case, the petitioners were unable to demonstrate such "exceptional
circumstances." The Court stated that the term "use" does not always entail a real physical
sale, and that even advertising without the presence of products might be considered a "use"
of the mark.
B. Brazil:
Article 143 of the Brazilian Industrial Property Law, 1996 26 states that a mark shall be
forfeited at the request of a person having legitimate interest, if after 5 years from date of
grant of trademark:
i. The use of the mark has not commenced in Brazil,
ii. If the use of the mark has been interrupted for more than 5 years.
IX. WHETHER THE INTELLECTUAL PROPERTY LAW IN THE JURSIDCTIONS

CAN PROTECT TRADE DRESS?
A. India:
Trade Dress in India does not have explicit statutory reference however it does have
recognition in the Trademarks Act, 1999. Section 2(zb) of the Act states that The word
"trademark" is defined as "a mark capable of being represented graphically and capable of
identifying one person's products or services from those of others, and may include the shape
of items, their packaging, and combinations of colours." 25 Furthermore, the term "mark" is
defined as "the form of items, packaging, or any combination of colours or any combination
23
Trademarks Act, 1999, §47(1)(a), No. 47, Acts of Parliament, (India)
24
25
AIR 1980 Delhi 299
26
of colours." The term "package" is defined as "case, box, container, covering, folder,
receptacle, vessel, coffin, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid,
stopper, and cork" in the Act. This essentially conveys the concept of Trade Dress.
The concept of trade dress was decided in Anchor Health and Beauty Care v. Colgate
Palmolive Co.27 :
“Trade dress is the soul for identifying the goods as to their source and origin, and as such is
prone to generate confusion in the minds of unsuspecting clients, particularly those who have
used the product for a long time,” it was observed. In other words, if the initial glimpse at the
item, without getting into the finer points of the colour combination, getup, or layout showing
on the container and packaging, provides the impression of deception or close similarity in
respect of these elements, it was a case of passing off.
B. Brazil:
Trade dress protection is supported in various Brazilian legislation, all of which are based on
the unfair competition principle. Both the Industrial Property Act (Article 195, III) 28 and the
Paris Convention (Section 10-bis, 3, paragraph 1o)29 contain prohibitions prohibiting
fraudulent acts including the misrepresentation or creation of misunderstanding with a
competitor's products or services. In addition, the Brazilian Federal Constitution's article 5,
XXIX30 protects innovations, creations, trademarks, corporate names, and other
distinguishing marks.
When defining "unfair competition," the Industrial Property Law outlines a number of Illegal
acts. Article 195(III) specifically states that any "fraudulent measures to divert, for your own
or a third party's profit, a competitor's clientele" is considered unlawful.
Dragao Quimica vs. J & F Participacoes 31, the Appellate State Court of Rio de Janeiro has
applied a 360 doctrine as a criterion for analysing packaging of two hair conditioners
The 360 test establishes the following criteria: I the degree of intrinsic distinctiveness of the
marks; (ii) the degree of similarity of the marks; (iii) the legitimacy of the alleged infringer;
(iv) the coexistence time of the marks in the market; (v) the nature of the products or services
at issue; (vi) the possibility of dilution of the senior mark.
X. REQUIREMENT FOR DISCLOSURE OF USE.
A. India:
27
108 (2003) DLT 51
28
Law on Industrial Property,1996, Art. 195(III), No. 9279, Acts of Parliament, Brazil
29
Paris Convention for the Protection of Industrial Property of March 20, 1883,
30
Constitution of the Federative Republic of Brazil, Article 5, 1988
31
https://www.financierworldwide.com/brazilian-courts-approve-doctrine-for-examination-of-trademark-
conflicts
The Trademarks Rules, 2017 state in Rule 25 states that unless the trademark is intended to
be used, an application to register a trademark must include a statement of the time during
which, and the person by whom, the trademark has been used in respect of all the products or
services stated in the application.
If the applicant claims use of the trademark previous to the filing date, he or she must provide
an affidavit with supporting documentation attesting to such usage.32
B. Brazil:
The Brazilian Industrial Property Law does not have specific reference to disclosing use of a
mark. Therefore, no statements or proofs of use are required to be disclosed.33
XI. INFRINGEMENT AND PASSING OF PROVISIONS.
A. India:
i. Infringement:
Section 29 of the Trade Mark Act, 1999 states that a registered trade mark is infringed by a
person who, who is not a registered proprietor or a person using by way of permitted use,
uses in the course of trade a mark which is identical with, or deceptively similar to the trade
mark in relation to goods or services in respect of which the trade mark is registered.34
Other parts of the provision stated that in the course of using the trademark, it is said to be
infringing the rights of another company due to the use of an identical or similar trademark
for marketing similar goods and services or the use of a deceptively similar or identical
trademark for any other kind of goods and services. It is also stated in Subsection (9) of this
clause that the violation might be committed through both the verbal and visual usage of the
terms.35
ii. Passing Off:
There is no explicit provision for passing off in the Trademarks Act, 1999. Judicial
intervention is done with regards to passing off action and Supreme Court of India has
accepted passing off as a ground of misrepresentation in Trademark law in Cadila
Healthcare Ltd v. Cadila Pharmaceuticals Ltd.36 The court defined passing off to be the type
of unfair trade competition or actionable unfair dealing in which one person seeks to derive
32
Rule 25(1) of Trademark Rules, 2017
33
https://www.lexology.com/library/detail.aspx?g=e6d25ea0-d0ff-40a6-8621-e067f88f546d
34
35
36
2001(5) SCC 73
an economic benefit from the reputation that the other has created for himself in a specific
trade or business through deceit.
B. Brazil:
i. Infringement:
The Brazilian Industrial Property Law has provisions of Crimes Against Marks in Articles
189 and 190, which have filing of criminal complaint against the infringing act 37, as well as
civil remedies mentioned in Articles 207 to 21038 in which Applications for injunctions
demanding the immediate cessation of the infringing act (plaintiff may request a daily penalty
for failing to comply with an injunction or other preliminary relief) and claims for damages.
ii. Passing off:

Article 195 of the Brazilian Industrial Property Law states in Art. 195(III) that if a person
uses fraudulent means to divert clientele, or under 195(IV), uses another person’s advertising
or commercial name [Article 195(V)] or substituted his own name on a product of another
party without their consent [Article 195(VI)]. These provisions relating to unfair competition
are in essence the passing-off provisions of the Act.
XII. REMEDIAL STRUCTURE, OFFENCES AND PENALTIES IN RELEVANT

LAWS
A. India:
i. Civil Remedies:
An Injunction under Order of the Code of Civil Procedure can be passed for infringement of
trademarks.39
Section 135 of the Trademarks Act of 1999 grants statutory identification to the Anton Piller
Order, preventing the defendant from removing assets beyond the court's jurisdiction. As part
of the execution of a civil remedy, the concerned court frequently appoints a local
commissioner to seal the products or materials that are infringing in nature. In the instance of
a civil remedy, the court either provides for the grounding of the defendant's products or
services that are responsible for generating confusion in the minds of customers or orders him
to pay the plaintiff's damages.40
37
38
39
Code of Civil Procedure, 1908, Order 39 Rule 1, Act No.5, Acts of Parliament, India
40
ii. Criminal Remedies:
Section 103 of the Trademarks Act establishes a criminal penalty for the infringement of any
individual's or entity's trademark, imposing a six-month jail term that can be increased to
three years for infringing trademark rights.41
Section 104 of the Act discusses the fines that must be provided as a penalty for a violation.42
iii. Administrative Remedies:

By opposing a mark that is similar to the original mark, as permitted by Sections 9(1) or 11 of
the Trademarks Act, 1999. If such a circumstance develops, the examiner will conduct
interrogations on the trademark registration. A trademark opposition is always submitted by a
third party, challenging the existing trademark in the trademark journal after its registration
procedure is completed.43
B. Brazil:
i. Civil Remedies:
In civil processes, the aggrieved party may file a lawsuit demanding the termination of the
infringing act as well as damages. Subject to the particular criteria of the Civil Procedure
Code, the case may also contain an ex parte preliminary injunction request, with a view to the
immediate stop of the detrimental behaviour until a judgement on the merits can be given. To
get a preliminary injunction, the plaintiff must show that there is a prima facie good case (ie,
that there is a possibility of victory on the merits of the case) and that delaying providing the
remedy requested will cause irreparable or exceedingly difficult to rectify harm.44
The plaintiff may also seek a daily penalty for failing to comply with the preliminary
injunction. If the requested interim remedy is granted, the defendant will be barred from
engaging in the infringing act until a final and definitive decision on the substantive litigation
is issued. In some cases, a court will only award interim injunctive relief if the petitioner
provides a bond or a fiduciary assurance to pay the respondent's damages.
ii. Criminal Remedies:

Criminal Remedies include search and seizure, and filing of criminal complaint under
Articles 189 and 190 of the BIPL45
Anyone who commits one of the following offences faces a three-month to one-year prison
sentence or a fine: A) reproduces a registered mark, in whole or in part, without the
41
42
43
Trademarks Act, 1999, §9-§11, No. 47, Acts of Parliament, (India)
44
Specific Relief Act, 1963, Act No. 47,§36-42, Acts of Parliament (India)
45
permission of the registrant, B) or imitates it in a way that may cause confusion; C) or alters a
registered mark of a third party already applied to a product placed on the markets
iii. Administrative Remedies

When the registration is published in the Official Gazette, a 180-day period begins during
which anybody with a valid interest may bring an administrative nullity action. The BPTO
may also initiate an administrative nullity proceeding ex officio, and the registrant will have
60 days to reply. Even if no answer is submitted after the period for counterarguments has
elapsed, the subject will be determined by the BPTO president. This judgement concludes the
administrative stage.46
A registration may be declared administratively null and void if a third party can demonstrate
that it was given in violation of the law.47
46
Bhering Advogados, ‘At a glance: trademark registration and use in Brazil
https://www.lexology.com/library/detail.aspx?g=9c6ab6ee-c91c-4b72-a447-28b3e808d9ec
47
Bhering Advogados, ‘At a glance: trademark registration and use in Brazil
https://www.lexology.com/library/detail.aspx?g=9c6ab6ee-c91c-4b72-a447-28b3e808d9ec

Index of Authorities: Examination-Of-Trademark-Conflicts

Uploaded by

Document Information

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Index of Authorities: Examination-Of-Trademark-Conflicts

Uploaded by

Copyright:

Available Formats

INDEX OF AUTHORITIES

I. DOES THIS JURISDICTION USE “FIRST –TO-USE” OR “FRIST TO FILE”?

III.LICENSING OF REGISTERED MARKS.

IV. ASSIGNMENT OF REGISTERED MARKS.

Assignment of a trademark signifies transfer of ownership of the mark. The relevant

V. WHETHER PARTIAL ASSIGNMENT OF TRADEMARK OF GOODS AND

VI. WHETHER PARTIAL ASSIGNMENT OF TRADEMARK OF GOODS AND

VII. WHETHER OPPOSITIONS ARE AVIALIABLE PRE OR POST-GRANT OF

VIII. WHETHER NON-USE IS CONSIDERED AS GROUND FOR CANCELLATION

IX. WHETHER THE INTELLECTUAL PROPERTY LAW IN THE JURSIDCTIONS

X. REQUIREMENT FOR DISCLOSURE OF USE.

XI. INFRINGEMENT AND PASSING OF PROVISIONS.

ii. Passing Off:

ii. Passing off:

XII. REMEDIAL STRUCTURE, OFFENCES AND PENALTIES IN RELEVANT

iii. Administrative Remedies:

ii. Criminal Remedies:

iii. Administrative Remedies

You might also like