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Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
Ownership of a trademark in India is determined on a first-to-use basis. Unlike the law on patents or designs, the trademark law mandates the first-to-use rule over the first-to-file rule.
What legal protections are available to unregistered trademarks?
As a first-to-use country, unregistered trademarks with prior use can be protected under common law in India. The passing off of trademarks is a tort actionable under common law and is mainly used to protect the goodwill attached to unregistered trademarks. It is founded on the basic tenet of law that one party should not benefit from the labour of another. Various judicial decisions have established that a passing-off action is a misrepresentation made by a person in the course of trade to prospective customers of the manufacturer or the ultimate consumers of the goods or services that it supplies:
- which is calculated to injure the business or goodwill of another party; and
- which causes actual damage to the business or goodwill of the party which has brought or is likely to bring the action.
How are rights in unregistered marks established?
In a typical passing-off suit, the courts will generally consider the following issues:
- whether the plaintiff is a prior user of the mark;
- whether the plaintiff’s goods have acquired distinctiveness and are associated in the minds of the general public with the plaintiff’s mark; and
- whether there is a misrepresentation by the defendant with regard to its goods and such misrepresentation is likely to lead to confusion in the minds of consumers, with the result that they may treat the defendant’s goods as those of the plaintiff.
Are any special rights and protections afforded to owners of well-known and famous marks?
The trademark law accords extraordinary protection to trademarks that are ‘well known’ and safeguards them from infringement or passing off. The Trademarks Registry recognises well-known trademarks in India on the basis of international, national and cross-border reputation.
The Trademarks Act 1999 protects well-known trademarks in two ways:
- an action against the registration of similar marks; and
- an action against the misuse of the well-known mark.
To what extent are foreign trademark registrations recognised in your jurisdiction?
Foreign trademark registrations have persuasive value in support of:
- an application for registration of an identical mark by the same applicant;
- an opposition by the rights holder against an application for a similar mark; and
- infringement and passing-off actions.
What legal rights and protections are accorded to registered trademarks?
A trademark registration:
- provides prima facie evidence of ownership and validity;
- provides statutory protection in India;
- helps to deter others from using the trademark unlawfully; and
- allows a suit for infringement to be brought.
In contrast, in the case of an unregistered mark, a passing-off suit can be filed. As passing off is a common law remedy, the burden of proof is more severe on the plaintiff than in an infringement action.
Who may register trademarks?
A party which claims to be the owner of a trademark can apply to register its mark for goods and services. A party may apply to register a trademark with the trademark office under whose jurisdiction the principal place of the applicant’s business falls. However, if the principal place of business is outside India, the application should be filed with the trademark office under whose jurisdiction the office of the applicant’s agent or lawyer falls.
What marks are registrable (including any non-traditional marks)?
According to the definition of a ‘trademark’, a mark is registrable if it is capable of being represented graphically and of distinguishing the goods or services of one party from those of another. This can include the shape of goods, their packaging and a colour or combination of colours.
Can a mark acquire distinctiveness through use?
Yes. A trademark can acquire distinctiveness through use. Even if a mark lacks inherent distinctiveness, it can still be registered if it acquires distinctiveness and secondary significance due to continuous and extensive use.
Under Section 9 of the Trademarks Act, if a mark itself lacks distinctiveness, it can still be registered if it has acquired distinctiveness through use.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
The registrar may accept or refuse an application for registration subject to the Trademarks Act. An application can be refused by the registrar on absolute or relative grounds.
Absolute grounds Section 9 of the Trademarks Act provides the following absolute grounds for refusal of a trademark:
- The trademark is devoid of any distinctive character – that is, it is not capable of distinguishing the goods or services of one party from those of another.
- The mark consists exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or time of production of the goods or rendering of the service or other characteristics of the goods or services.
- The mark consists exclusively of marks or indications which have become customary in the language or established practices of the trade.
- The mark is of such nature as to deceive the public or cause confusion.
- The mark comprises material likely to offend the religious susceptibilities of a class or section of Indian citizens.
- The mark comprises or contains scandalous or obscene matter.
- Use of the mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950.
- The mark consists exclusively of-
- the shape of goods which results from the nature of the goods themselves;
- the shape of goods which is necessary to obtain a technical result; or
- the shape which gives substantial value to the goods.
However, a trademark which may initially be refused on absolute grounds can be registered if it acquires a distinctive character or secondary significance as a result of extensive and continuous use.
Relative grounds Section 11 of the Trademarks Act provides the following for refusal of a trademark:
- A mark cannot be registered if there is a likelihood of confusion due to:
- its identity with an earlier mark for similar goods or services; or
- its similarity to an earlier mark for identical or similar goods or services.
- A mark cannot be registered if it is identical or similar to an earlier trademark and is to be registered by a different owner for goods or services which are different from those for which the earlier mark is registered if the earlier mark is a well-known mark in India.
- A mark cannot be registered if its use in India is liable to be prevented by any law.
Are collective and certification marks registrable? If so, under what conditions?
The Trademarks Act makes special provision for the registration of collective marks. A ‘collective mark’ is defined as a trademark that distinguishes the goods or services of members of an association of persons (not a partnership within the meaning of the Partnership Act 1932) which owns the mark from the goods or services of other parties.
Thus, to be registrable, the collective mark must be capable of being represented graphically and must meet other general requirements applicable to the registration of trademarks in India.
When examining an application, the examiner must consider whether:
- the collective mark is owned by an association of persons that is not a partnership;
- the collective mark belongs to a group and its use is reserved for members of the group;
- the association itself cannot use the collective mark, but it ensures compliance with certain quality standards by its members who may use the collective mark; and
- the primary function of the collective mark is to indicate a trade connection with the association or organisation which owns the mark.
Certification marks A certification trademark is a mark which represents certain qualities, characteristics or standards with which the goods or services bearing the mark must comply. A well-known example of a certification mark is the WOOLMARK, which certifies that the goods on which the mark is used are made of 100% wool. A certification mark can be used by any party which complies with the standards attached to the certification mark. For a manufacturer of woollen sweaters to use the WOOLMARK on its products, the owner or manufacturer of the goods must obtain certification from the relevant certification body, Australian Wool Innovation Limited, which owns the WOOLMARK certification trademark.
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