In India, the Trade Marks Act 1999 and the rules thereunder guide the process of registration and enforcement of rights relating to trademarks. The Indian regime affords protection to registered as well as unregistered marks. In case of misuse of a registered mark, the right holder can initiate an infringement action against the violating party. For misuse of unregistered marks, the right holder is entitled to claim protection under the law of passing off. In order to succeed in an action for passing off, the plaintiff must meet these three criteria: (1) established goodwill or reputation of the plaintiff attached to the relevant goods or services under its mark, (2) misrepresentation by the defendant which is likely to deceive the public into believing that the defendant’s goods/services emanate from the plaintiff and (3) damage suffered or likely to be suffered by the plaintiff.

It is important to remember that the Indian regime affords high importance to prior use. Therefore, an infringement action on the basis of a prior registered mark by a registered proprietor may not succeed against a prior user. Trans-border reputation also holds huge weight, but a party relying on trans-border reputation must be able to prove the acquisition of this reputation in India before the date of adoption and use of the relevant mark by the other party in India.

Even though remedies have been provided to owners of unregistered marks, it is still always advisable to register a mark because in actions based on registered marks, the onus of disproving infringement lies with the defendant. On the contrary, when an action is initiated on the basis of unregistered marks, the plaintiff has to discharge a heavy burden of meeting the threefold criteria of passing off as mentioned above.

Prosecution

Procedure

Searches

Searches can be carried out for identical/similar word/device marks at the online portal of the Trademarks Registry.

Examination

A trademark application can be filed physically or through the e-portal. Once filed, it first undergoes scrutiny for procedural formalities. If it fails this formality check phase, an office action is issued and a reply to this must be filed/executed within 30 days from the date of its receipt. After completion of the formality check phase, the application undergoes substantial examination. If objections are raised by the Trade Marks Office (TMO), a response must be filed within one month from the date of receipt of the examination report. After reviewing the response, if the examiner continues to maintain the objection(s), a hearing is scheduled. In the alternative, if the examiner is satisfied with the response, the mark is advertised as accepted in the Trade Marks Journal.

Opposition

Once a mark is advertised, third parties have a period of four months (non-extendable) from the date of such advertisement of the mark to file a Notice of Opposition. Once the Notice of Opposition is filed, the applicant is required to file its counterstatement within two months (nonextendable) from the date of official service of the Notice of Opposition. Once the counterstatement is filed by the applicant, the opponent is required to file its Evidence in Support of Opposition within two months (non-extendable) from the date of official service of such counterstatement. Alternatively, he may intimate to the registrar that he does not wish to adduce any evidence at this stage and may rely on the contents of his Notice of Opposition. Thereafter, the applicant is required to file its Evidence in support of Application within two months (nonextendable) from the receipt of the Evidence in support of Opposition or the intimation that the opponent does not wish to adduce any evidence. Alternatively, the applicant may intimate to the registrar that he does not wish to adduce any evidence and may rely on the contents of his counterstatement. Subsequent to the service of the Evidence in Support of Application to the opponent or the intimation that the applicant does not wish to adduce any evidence, the opponent may file its Evidence in Reply within one month (non-extendable) of such service. Upon completion of the evidence stage, the registrar issues notice of hearing to both the parties and decides the matter on merits.

Registration

If no opposition is filed by any third party within four months from the date of publication, the mark smoothly sails towards registration. Rectification/cancellation A registration can be cancelled on grounds that it was wrongly granted and/or it remains on register contrary to law. It can also be cancelled on the ground of continuous non-use for five years from the date of its registration.

Ownership changes and right transfers

Assignment

Both registered and unregistered marks can be assigned. Assignment can be made either in respect of all or part of the goods and services for which the mark is registered.

Licence

The application for recording of a licence/registration of a registered user must be filed within six months from the date of signing of the licence agreement.

Change of name and address

Change of name and address applications should be filed at the Trademarks Registry to keep the records in order.

Renewal

A mark is valid for a time period of 10 years from the application date and needs to be renewed every 10 years thereafter.

Information/documents required

Application filing

  1. Exact representation of the mark.
  2. Name, address and legal status of the applicant.
  3. Details of goods/services.
  4. A simply signed power of attorney (PoA) of the applicant. No notarisation or legalisation is required.
  5. Priority details and a certified copy of the priority document along with its certified English translation, in case of a priority claim.
  6. In case of user claim – date, month and year of first use along with evidence to corroborate the same. A user affidavit supported with evidence is a mandatory requirement. If no use claim is made, the applications may be filed on a ‘proposed to be used’ basis.

Assignment

  1. Original signed or notarised Deed of Assignment
  2. Original signed and notarised Affidavit of No Legal Proceedings stating that there are no legal proceedings pending in respect of the trademarks and assignment
  3. A simply signed PoA of the assignee.

Licence

  1. An original or notarised copy of the executed licence agreement.
  2. A notarised affidavit from the licensor (registered proprietor/owner) or his/her duly authorised representative stating the following:
    • the particulars of the relationship (as existing or proposed) between the registered proprietor and the proposed registered user including particulars showing the degree of control by the proprietor over the permitted use and as to whether the proposed registered user is the sole registered user or if there are any other restrictions on the number of persons to be applied as registered users;
    • the exact specification of the goods and/or services in respect of which the licensee is to be registered as the registered user;
    • the conditions or restrictions (if any) with respect to the characteristics of the goods /services, the mode or place of permitted use or any other matter;
    • the exact duration of the permitted use or whether it is to exist without any limit of period.
  3. A simply signed PoA of the licensor and licensee.

Change of name

  1. Any document evidencing change of name (for example, certified copy of an extract from the Commercial Register).
  2. A simply signed PoA with the new name of the proprietor.

Change of address

  1. Any document evidencing the change of address (for example, certified copy of an extract from the Commercial Register).
  2. Date on which the address was changed in DD/MM/YYYY format (only in registered matters).
  3. A simply signed PoA with the new address of the proprietor

Renewal

1) A simply signed PoA of the proprietor.

Enforcement

Anti-counterfeiting

Anti-counterfeiting is a major aspect of enforcement of trademark rights of proprietors and right holders, and the term “counterfeiting” is also defined in Section 28 of the Indian Penal Code (IPC) as essentially meaning an act which causes one thing to resemble another thing, intending by means of that resemblance to practise deception, or knowing it to be that deception will thereby be practised. Further, it is not essential for counterfeiting that the imitation should be exact. Moreover, Section 415 of the IPC read with illustration (b) makes the act of counterfeiting into an act of cheating which can either entail imprisonment that may extend to one year, or a fine, or both. Since the sale of counterfeit goods is intended to make illegal profits by defrauding customers and other members of the trade and the public, the courts in India consider such acts as an offence of cheating and dishonestly inducing delivery of property under Section 420 of the IPC, which is punishable with imprisonment of seven years along with a fine.

Sections 102, 103 and 104 of the Trademarks Act also define offences, penalties and procedures in relation to falsification and falsely applying trademarks. These provisions include the offence of counterfeiting and provide for imprisonment for a term not under six months which may extend up to three years and a fine not less than INR 50,000/(USD 742) but which could be enhanced to INR 200,000 (USD 2,966). The term of imprisonment and a fine can be further increased on second and subsequent convictions. The offences defined under the Trade Marks Act are recognisable offences allowing a police officer of a designated rank to make or cause an arrest of the offenders without warrant and to start an investigation with or without the permission of a court. However, prior to taking any action under the Trade Marks Act, police officers are required to seek an opinion from the registrar of trademarks on the facts of the case.

Border control

The government of India has enabled IP owners to enforce their IP rights at Indian borders under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007. For this, it is mandatory to have a validly registered trademark/IP right in place. The period of protection available under customs is five years from the recordation of rights with the customs authorities or upon expiry of the validity of registration of the mark/IP right, whichever is earlier. After the expiry of five years, the right holder is required to furnish a fresh notice.

Infringement/passing off

Under the Trade Marks Act, a civil action for infringement of a registered trademark can be filed by the registered proprietor or the registered user of the trademark in India before a district court having jurisdiction to try the suit. In cases where the infringement occurs in the metropolitan areas of Delhi, Mumbai, Chennai and Kolkata, the suit can also be filed before the concerned High Court in those cities. A civil suit against the infringer may also be initiated alongside criminal action for effective deterrence since the import/sale of counterfeit goods also amounts to infringement. Further, in cases of trademark infringement and passing off involving an artistic work as the subject matter, it is useful for the right holder to plead infringement of his/her copyright in such artwork thus invoking the enforceable provisions of copyright law as well. The remedies provided under a civil suit include preliminary and permanent injunction, account of profits or damages, delivery-up of the infringing labels/marks for destruction or erasure, etc. In appropriate cases, the Courts in India have not hesitated from awarding punitive or exemplary damages to the right holder for effective deterrence even amounting to 10 million rupees (USD 146,920). The court entertaining a civil suit is also empowered to appoint a commissioner or commissioners to visit the business premises of the defendant without notice, to inspect the premises and make an inventory of the counterfeit goods for their safe custody by the defendant as court property. This means that once recorded by the commissioner, the defendant cannot deal with or sell those goods to any third party without obtaining prior permission from the concerned civil court. In case the counterfeited mark is not registered in India, a civil action for passing off can be initiated under Section 27(2) read with Sections 134 & 135 of the act if the mark carries substantial goodwill/reputation in the relevant market. The remedies available under a passing off action are the same as in the case of an action for infringement.

Article was 1st published in Managing Intellectual Property