1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in India. Registration is prima facie evidence of ownership and validity.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is advisable. As discussed below, the legal benefits of registration may not be available otherwise.
3. What is registrable?
Under the current law, the definition of a trademark is very broad and includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors, or any combination thereof. A trademark can be registered for services in connection with business of any industrial or commercial matter such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising.
4. Can a trademark be registered for retail and like services?
As explained in the response to question 3, the law provides for service mark registration, and it does not explicitly disqualify registration of retail services. It is hoped that the practice now followed by the U.K. Registry may pave the way for registration of such services-provided they are defined appropriately.
5. How are domain names protected?
Domain names are protectable in India. With respect to gTLDs (such as .com, .net, .org, etc.), besides the UDRP procedure, it is possible to enforce the right through a passing off action in India based on the reputation and goodwill of the name involved. Indian courts have been enforcing the rights of domain name owners through such actions. CCTLDs (.co, .in, .org.in, .net.in, etc.) are protectable under Indian law through registration with the Indian Domain Name Registrar. Under the Indian Internet Domain Name Dispute Resolution Policy, the Mandatory Resolution Procedure requires that in the event of a complaint received on any such registration, the Domain Name Registrar will decide the complaint after hearing from both parties. There is a provision for appeal to the Internet Management Group and a further appeal to an appropriate court in Mumbai.
6. Should a trademark be searched before filing?
A prefiling search is always recommended for an applicant. This is done to assess the availability of a mark for registration. If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant situated abroad must have an address for service in India. Therefore, an applicant should contact an Indian trademark attorney to file an application in India.
8. What information must be provided before filing?
Before filing, an applicant must provide fifteen specimens of the mark unless the mark can be represented in plain block capital letters, full details of the applicant, list of the goods to be covered, and the period of use of the mark in India, if any. An authorization signed by the applicant must be filed in support of the application, and can be filed subsequent to the application filing date.
9. Is local registration the only option, or are there international alternatives?
To obtain statutory protection in India, local registration is the only option. An Indian application only has effect in India.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
Since September 15, 2003, it is possible to file multi-class applications.
11. Is it possible to take advantage of a home application or registration?
India acceded to the Paris Convention in December 1998. Since that time, it is possible to claim the home filing date, provided the home application has been filed within six months preceding the Indian application.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
Use of a trademark is not mandatory to maintain its validity. However, a mark will become vulnerable to cancellation for nonuse if not used within five years from the date of registration. The law, however, does provide for exemptions, i.e., 搒pecial circumstances in the trade?justifying nonuse of a trademark. Such circumstances can be used as a defense in the event of an action for cancellation for nonuse.
13. Is using a variation of the trademark allowable?
Yes, provided the difference in the marks is slight and the variation does not substantially affect the identity of the mark.
14. Is there any advantage to using a trademark before filing an application?
Yes. Use of the mark is always advantageous. The first person to use a mark has the right to such mark, even if another party subsequently registers it. In other words, India is a first-to-use jurisdiction and first use of a mark is superior to registration. Prior use of the mark is not a requirement for filing, but where prior use is extensive, it is possible to initiate an action for passing off.
15. For an application to be valid, are there any particular requirements that must be met?
Yes. The application must follow the format prescribed by the pertinent Rules governing the Trade Marks Act and the official fees must be paid.
16. What information is first published about an application/ registration and when is it published?
An application is first advertised (after acceptance) in trademarks journals issued by the Trademark Office. An advertised application gives details of the trademark, name and address of the applicant, the class and goods covered, the period of use and other conditions/limitations (such as associations). If an application is accepted outright, a time frame of one to two years can be anticipated between the filing date and the first publication.
17. What kind of examination (if any) will a new application undergo?
An application will be examined both on absolute as well as relative grounds.
18. What response to official objections is required?
The response would depend upon the nature of the objections raised, should refute such objections, and should be accompanied by documentary evidence to substantiate the use of the mark in India. If a mark is registered in other countries, certificates of registration would have some persuasive value. The time available for responding to official objections is one month.
19. How long is the registration process?
The registration process should be completed within two to three years.
20. What rights does an application confer?
While an application is prima facie proof of ownership of a mark, an application does not confer statutory rights.
21. What is the legal effect of a registration?
The registrant can sue for infringement and cancellation of subsequent registrations and applications. The registrant can also apply for precautionary measures, seize counterfeits at Customs, and obtain criminal penalties.
22. Can an application be opposed or cancelled by third parties?
An application can be opposed within three months of the date of publication in the Trade Marks Journal and this period can be extended by one month by filing a request before the expiration of the three month period.
23. Can an application or registration be assigned?
Both applications and registrations can be assigned irrespective of whether the mark is being used in India or not. For assignment of trade marks without goodwill, prior to filing a request for recordal of assignment, the law mandates obtaining a direction from the Registrar of Trade Marks for advertising the assignment in two leading news papers in the country. Paritial assignment is also possible- subject to the satisfaction of the Registrar that multiple exclusive rights will not be created amongst different parties thereby fuelling confusion amongst the trade and public.
24. Must an assignment include goodwill?
An assignment may be either with or without goodwill. The assignment deed, however, must categorically state whether the assignment is with or without goodwill.
25. Does an assignment have to be recorded?
It is in the interest of the trademark owner to record an assignment to establish the owner's title in the mark in case of legal proceedings and help the applicant to prevent unnecessary complications relating to the ownership of the mark in proceedings such as infringement, passing off, opposition, cancellation.
26. Can an application or registration be licensed?
A registered or unregistered trademark may be licensed by the registrant to a third party. The licensor should, however, exercise control over the quality of the products made and sold by the licensee. A registered user agreement can be recorded at the Trade Marks Registry only in respect of registered Trade Marks. Consult an Indian trademark attorney.
27. Does a license have to be recorded?
It is not legally mandatory to record a registered user agreement at the Trade Marks Registry. Under the Trade Marks Act 1999, use of registered trade marks by an unregistered licensee is accorded statutory approval. The scope of "permitted use" under the new Act has been expanded and accordingly an unregistered licensee, having the consent of the registered proprietor in a written agreement comes within the ambit of 'permitted use'and therefore, registration of the licensee as the registered user is no longer required for such use to inure to the benefit of the registered proprietor. The limited advantage of registering the licensee as registered user is that that the registered user would be permitted to institute proceedings for infringement in his own name as if he were the registered proprietor, subject to any agreement subsisting between the parties. This benefit is not available to an unregistered licensee.
28. What is the territorial limit of a registration?
The territorial jurisdiction is India.
29. How long does a registration last?
The term of registration in India is ten years from the date of application and is renewable for periods of ten years each.
30. What is required to renew a registration?
Payment of a renewal fee is the only requirement under the current law. Under the new law, if the renewal application is not from the same person or legal entity as the registered proprietor, a continuity of title from the registered proprietor to the present owner must be shown at the first instance by way of affidavit and supporting chain of documents. Further, the Registrar may call upon the registered proprietor to furnish an affidavit pertaining to use of the mark where he believes that the mark may not have been used.
31. Is it necessary to indicate a trademark registration on goods or services?
No. Marking is optional. However, to give proper notice to other parties, the registration number or the ?symbol for registered marks and the letters 揟M?for unregistered marks should be marked on or associated with the goods. It is an offense to misrepresent that a mark is registered.
32. Does the International Classification System apply?
Yes, limited to classes 1 to 42. Services under classes 43 to 45 can be filed under class 42.
33. Is your national office accessible online?
The Registry has a website for the limited purpose of providing basic information. The address is www.tmrindia.com. |
