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Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary domestic legislation governing trademarks in India is the Trademarks Act 1999 and the Trademarks Rules 2017.

International law

Which international trademark agreements has your jurisdiction signed?

India is a member of the following international treaties and agreements relating to trademarks:

  • the Paris Convention for the Protection of Industrial Property;
  • the Nairobi Treaty on the Protection of the Olympic Symbol; and
  • the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

In addition, the following World Intellectual Property Organisation administered treaties also apply in India:

  • the Nice Agreement on the International Classification of Goods and Services; and
  • the Vienna Classification, established by the Vienna Agreement.

Regulators

Which government bodies regulate trademark law?

In India, the trademarks legislation is administered by the Office of the Controller General of Patents, Designs and Trademarks under the Department of Industrial Policy Promotions, which is part of the Ministry of Commerce and Industry.

Rights and protection

Ownership

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.

Unregistered trademarks

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.

Registered trademarks

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?

Collective marks

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.

Filing and registration

Filing procedure

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

An agent filing to register a mark on behalf of the owner requires a simple executed power of attorney stamped under the Stamp Act 1899. No legalisation is required. Since the introduction of the new e-filing portal, the power of attorney must be submitted at the time of filing the application.

What information and documentation must be submitted in a trademark registration application?

The following information and documentation must be submitted in a trademark registration application:

  • the applicant’s name and address;
  • the state or country of incorporation;
  • a description of the trademark;
  • a representation of the trademark;
  • a list of the relevant goods or services;
  • the power of attorney;
  • the dates of first use – if use is claimed, an affidavit of use and documentary evidence must be filed electronically;
  • a statement of intention to use;
  • the official filing fee;
  • a priority claim and documents, where priority of an earlier application is claimed; and

if the applicant is not domiciled in this jurisdiction, a local service address must be provided.

What rules govern the representation of the mark in the application?

Rule 26 of the Trademark Rules 2017 governs the representation of the mark in the application. It states that:

Every application for the registration of a trademark, shall contain a clear and legible representation of the trademark of size not exceeding 8 cm x 8 cm. Where an application contains a statement to the effect that the applicant wishes to claim combination of colours as a distinctive feature of the trademark, the application shall be accompanied with reproduction of the trademark in that combination of colours.

Are multi-class applications allowed?

Yes. Multi-class trademark applications are allowed in India.

Is electronic filing available?

The Trademark Registry allows the comprehensive e-filing of trademarks, which enables the online filing of trademarks, including the entry of the details set out above and the uploading of relevant documents.

Further details regarding the filing of trademark applications can be accessed on the Indian Trademark Registry’s website.

Under the recently notified Trademarks Rules 2017, the official fee for e-filing a trademark application is 10% lower than the fee for physical filing.

What are the application fees?

Rules 10 and 11 of the Trademark Rules govern the filing of trademark applications in India. The forms, along with the requisite fee for filing them, are set out under Schedule 1.

Under the Trademarks Rules the official fee for e-filing a trademark application is 10% lower than the fee for physical filing.

Priority

How are priority rights claimed?

Where a person who has applied to register a trademark in a convention country applies to register a trademark in India within six months of the date on which the application was made in the convention country, if accepted, the registration of the Indian trademark will be backdated to the date on which the application was made in the convention country.

Searches

Are trademark searches available or required before filing? If so, what procedures and fees apply?

Although not mandatory, it is advisable to conduct a trademark search before applying to register a trademark. Trademark searches in India can be conducted for word marks and device marks.

The Trademarks Registry provides a free online trademark search on its website.

Examination

What factors does the authority consider in its examination of the application?

The examiner may refuse to register the trademark while examining the application based 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 incapable 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 service.
  • 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 of material likely to hurt 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 relative grounds 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;
    • 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 in the name of 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 virtue of any law.

Does the authority check for relative grounds for refusal (eg, through searches)?

Yes. The Trademark Registry checks for relative grounds of refusal during the examination stage and cites earlier registrations and applications.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

Pursuant to the issuance of the examination report, the applicant must file an appropriate reply along with the required documents to overcome the objections raised against a trademark by the registry.

The Trademark Rules 2017 provide for a 30-day period from the date of receipt of the examination report to file a reply to the office action or request a hearing. In the absence of such response, the application will be deemed to have abandoned on the grounds of non-prosecution.

The applicant can also limit the application in respect of goods or geographical region, or can accept conditions as directed by the examiner. 

Can rejected applications be appealed? If so, what procedures apply?

If a mark is refused, Section 91 of the Trademarks Act states that an appeal must be filed with the Intellectual Property Appellate Board within three months of the order of refusal.

Registration

When does a trademark registration formally come into effect?

Once registered, the registration of a mark is backdated to the date on which the application was filed. However, for the purpose of non-use cancellation, the trademark registration date is the date when it was entered into the Trademarks Register under Section 47 (b) of the Trademarks Act.

What is the term of protection and how can a registration be renewed?

In India, the term of protection for a trademark is 10 years from the date of application, renewable every 10 years on payment of the requisite fee.

What registration fees apply?

The Trademarks Registry charges no registration fees.

What is the usual timeframe from filing to registration?

For a straightforward application, the usual timeframe from filing to registration is 10 to 12 months. 

Opposition

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

The Trademarks Act prescribes that any person can file a notice of opposition against a trademark within four months of the date on which the trademark application is advertised or re-advertised in the Trademarks Journal.

The opponent need not have an application or registration in India in order to oppose a trademark.

A trademark can be opposed on:

  • absolute grounds of refusal as provided under Section 9 of the act – that is, the trademark is not distinctive or is incapable of distinguishing the goods or services of the applicant from those of others;
  • relative grounds of refusal as provided under Section 11 of the act – that is, the trademark is phonetically, visually, conceptually, confusingly or deceptively similar or identical to the opponent’s trademark; and
  • other relevant grounds depending on the facts of the matter – that is, the applicant’s trademark is well known, protected by copyright or constitutes a geographical indication.

The following procedure applies after a notice of opposition is filed:

  • The registrar will serve a copy of the notice of opposition on the trademark applicant within three months of the date of receipt.
  • Within two months of receiving the notice of opposition, the applicant must file its counterstatement specifying the facts as alleged in the notice of opposition which it admits.
  • The applicant can file the counterstatement once the notice of opposition has been uploaded on the Trademark Registry’s website. In such case, the registry serves no notice of opposition on the applicant. 
  • If the applicant fails to file its counterstatement within two months of service of the opposition, its trademark is deemed to have been abandoned for non-prosecution under Section 21(2).
  • If the applicant files the counterstatement, the opposition will proceed to the evidence stage.

The evidence stage is as follows:

  • Evidence in support of opposition:
    • The registrar will serve a copy of the counterstatement on the opponent within two months of date of receipt.
    • Within two months of receiving the counterstatement, the opponent must file its affidavit by way of evidence in support of the opposition, alongside the exhibits, and forwards a copy to the applicant. Alternatively, the opponent can rely on the facts stated in the notice of opposition by writing to the registrar and the applicant.
    • If evidence or a reliance letter is not filed with two months, the opposition is deemed to have been abandoned.
  • Evidence in support of the application:
    • Within two months of receiving the affidavit in support of the opposition, the applicant must file its affidavit in support of the application, along with exhibits, and must forward a copy to the opponent. Alternatively, the applicant can rely on the facts stated in the counterstatement by writing to the registrar and the opponent.
    • If evidence or a reliance letter is not filed with the statutory two-month period, the application is deemed to have been abandoned.
  • Evidence in reply by the opponent:
    • Within one month of receiving the affidavit in support of the application, the opponent may provide the registrar with an affidavit in reply, including exhibits.

The hearing stage is as follows:

  • After hearing the parties and considering the evidence, the registrar will decide whether the trademark can be accepted for registration.
  • The applicant or opponent cannot seek more than two adjournment, and each adjournment cannot be more than 30 days.

What is the usual timeframe for opposition proceedings?

The usual timeframe for opposition proceedings in India is 18 to 24 months. 

Are opposition decisions subject to appeal? If so, what procedures apply?

The registrar’s decision in opposition proceedings can be challenged by filing an appeal before the Intellectual Property Appellate Board.

Removal from register

Non-use cancellation

Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?

Yes, a trademark can be cancelled on the grounds of non-use. Section 47 of the Trademarks Act 1999 provides for the cancellation of a registered trademark on an application made by the aggrieved party if it is proved that:

  • the trademark was not registered with a good-faith intention to use it in respect of the goods or services for which it was registered and there has been no good-faith use of the mark up to three months before the date of the application; or
  • up to three months before the date of the application, there has been no good-faith use of the registered trademark for a continuous period of five years from the date of issuance of the registration certificate.

However, Section 47 (3) provides for special circumstances under which non-use of the registered mark may be executed. If non-use of a trademark is shown to have been due to special circumstances in the trade (including restrictions on the use of the trademark in India imposed by law or regulation), rather than to any intention to abandon or not use the trademark in relation to the goods or services to which the application for removal relates, the application for removal will be rejected.

Revocation

On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?

Section 57 of the Trademarks Act provides for the revocation of a registered trademark on application by an aggrieved party on the following grounds:

  • any contravention or failure to observe a condition of the registration of the trademark;
  • any absence or omission of an entry in the Trademarks Register (e.g., a disclaimer, condition or limitation on the registered trademark);
  • any entry made without any sufficient cause in the Trademarks Register (e.g., registration was obtained by fraud or misrepresentation of facts or the registered trademark was similar to an already registered trademark);
  • any error or defect in any entry in the Trademarks Register; and
  • any entry wrongly included in the Trademarks Register (e.g., contrary to the act or likely to cause confusion among the public and trade).

Who may file a request for revocation and what is the statute of limitations for filing a request?

Sections 47 and 57 of the Trademarks Act provide for the cancellation and revocation of a registered trademark from the Trademarks Register on application by “any aggrieved person”. In order to file an application for cancellation and revocation of the registered trademark, the applicant must prove that it has been aggrieved by the registration of the trademark.

What are the evidentiary and procedural requirements for revocation proceedings?

An application for cancellation and revocation of a registered trademark is required to be filed before:

  • the same Trademarks Registry office where the application for its registration was filed; or
  • the Intellectual Property Appellate Board (IPAB) in Delhi (for the Delhi jurisdiction) and Chennai (for all other jurisdictions).

Appeal

What is the appeal procedure for cancellations or revocations?

If the order is passed by the registrar, the applicant can file an appeal with the IPAB within 90 days.

The order in the appeal can be challenged by filing a writ petition in the relevant high court under Articles 226 and 227 of the Constitution. 

Surrender

What is the procedure for surrendering a trademark registration?

The registered owner must file an affidavit stating that it wishes to surrender its trademark registration.

Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

No court lower than a district court can hear trademark disputes related to passing off and infringement. Therefore, a case relating to a trademark dispute can usually be filed in a district court. However, in India, a suit relating to trademark dispute can be filed in a high court with original jurisdiction (i.e., the High Courts of Delhi, Bombay, Madras and Calcutta). 

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

The actions which can be taken to protect trademarks in India, including against passing off and infringement, are as follows.

Civil remedies Civil remedies can be enforced by filing a suit for infringement or passing off in the competent court. The following forms of civil relief are available:

  • an interlocutory, temporary or ad interim injunction;
  • a Mareva injunction;
  • an Anton Piller order;
  • a John Doe order;
  • a permanent or perpetual injunction;
  • damages or accounts of profits; and
  • delivery up and destruction

Criminal remedies The Trademarks Act 1999 is the primary statute governing Indian trademarks law. This act enumerates numerous offences in relation to trademarks, such as:

  • falsifying and falsely applying a trademark;
  • making or possessing instruments for falsifying trademarks;
  • applying a false trade description; and
  • applying a false indication of country of origin.

Administrative remedies The following administrative remedies are available:

  • opposition against a similar mark;
  • rectification of a registered mark; and
  • recordal with Customs to prevent the import or export of goods bearing the infringed trademark.

Who can file a trademark infringement action?

A registered owner of a trademark or a licensee (provided that the licence agreements grants such right) which believes that its mark is being infringed may institute infringement proceedings.

What is the statute of limitations for filing infringement actions?

The Limitation Act 1963 sets out the statute of limitations for filing infringement actions.

What is the usual timeframe for infringement actions?

The usual time limit to bring an action is three years from the date of the cause of action.

However, in Timken Company v Timken Services Private Ltd (CS (OS) 3/2010 and IA 21/2010) the Delhi High Court held that if a new deceitful act is committed, the deceived party would naturally have a fresh cause of action in its favour. Thus, every time a party passes its goods off as those of another it commits an act of infringement. Similarly, whenever a party breaches another party’s registered trademark, it commits a recurring act of breach or infringement of that mark, giving rise to a fresh cause of action to the aggrieved party.

Section 22 of the Limitation Act also states that in cases of continuing tort, a new limitation period begins to run every time the breach of tort continues.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

According to Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure 1908, a temporary injunction can be granted by the court where one of the following applies:

  • The property in dispute is in danger of being wasted, damaged or alienated by any party to the suit, or wrongfully sold in execution of a decree.
  • The defendants threatens or intends to remove or dispose of the property with a view to defrauding creditors.
  • The defendant threatens to cause injury to the plaintiff in relation to any property in dispute in the suit.
  • The defendant is about to commit a breach of contract or other kind of injury.
  • The court is of the opinion that the interests of justice require a temporary injunction.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

The following civil remedies are available to the owners of infringed marks:

  • a permanent injunction;
  • damages or rendition of accounts;
  • destruction of the infringed goods;
  • an interim order; or
  • an Anton Piller order.

Punitive damages may be allowed at the discretion of the court. In Time Incorporated v Lokesh Srivastava ( 2005 (3) PTC (3)) the court observed that the award of compensatory damages to the plaintiff is intended to compensate it for the loss suffered, whereas punitive damages are intended to deter the wrongdoer. As such, in appropriate cases these must be awarded to signal to wrongdoers that the law does not consider a breach to be merely a matter between rival parties, but is also concerned about those which suffer on account of the breach.

In Cartier International Ag v Gaurav Bhatia (CS (OS) No 1317/2014) the plaintiff submitted a methodology for computing punitive damages. The Delhi High Court granted damages of Rs10 million after taking into consideration the methodology of computing punitive damages as stated by the plaintiff.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

The IP Rights (Imported Goods) Enforcement Rules 2007 empower customs officers to enforce IP rights over imported goods. The rules provide a detailed procedure by which a rights holder can register its IP rights with customs officials. This registration imposes an administrative duty on Customs to protect the rights holder against violation of its IP rights.

Defence

What defences are available to infringers?

The following defences are available to infringers:

  • delay and laches;
  • acquiescence;
  • honest and good-faith adoption and use;
  • differences in goods and services;
  • the nature of the product;
  • pricing; and
  • the absence of confusion or deception.

Appeal

What is the appeal procedure for infringement decisions?

An appeal from an original district court judgment goes to the relevant high court. An appeal from an original judgment or decree of a single bench of the high court (with original jurisdiction) goes to the division bench of the high court as a regular first appeal.

A judgment or decree in a regular first appeal can be challenged as a special leave petition before the Supreme Court. Once a special leave petition has been admitted by the Supreme Court, it is converted to an appeal.

Assignment and licensing

Assignment

What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?

Under the recently amended Trademark Rules 2017, the procedure for the assignment of trademark rights is set out in Rules 75 to 85. An unregistered trademark can be assigned to Section 39 of the Trademarks Act 1999, whereas a registered trademark can be assigned as per Section 38 of the act. In case of a registered trademark, such assignment must be recorded in the Trademarks Register. 

Licensing

What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?

Permitted use without recordal of the registered user is permissible under the Trademarks Act, which came into force on September 15 2003. The details of registrations held by the registered owner in India must be included in the written agreement, and permitted use will be in respect of services or goods covered under only those registrations. However, it is advisable to record the licence agreement with the Trademarks Registry as a registered user.

What provisions are typically included in a licensing agreement (eg, quality control clauses)?

A licence agreement must provide for quality control by the licensor by including clauses such as:

  • quality control monitoring;
  • trademark usage;
  • grant;
  • indemnity; and
  • termination.

Security interest

Can a security interest be registered over a trademark? If so, what rules and procedure apply?

There is no specific provision for registering a security interest over a trademark.

Related rights

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

In India, a logo can be protected as both a trademark and an artistic work under the Copyright Act 1957. Notably, registration of a copyright is not mandatory in India. However, if copyright in an artistic work is to be registered, a no objection certificate will be required from the Trademarks Registry before filing the copyright application. 

Online issues

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

In India, the Trademarks Act 1999 governs all aspects of the protection of trademarks. There is no separate governing law for the protection of trademarks online. However, the official Indian registry for domain names is .IN Registry, which operates under the authority of the National Internet Exchange of India.

The registry has published the .IN Dispute Resolution Policy (INDRP). The INDRP Rules of Procedure set out:

  • how an aggrieved party should file a complaint;
  • the fees;
  • communications; and
  • other procedures necessary in cases of unauthorised use of domain names.

Once the registry receives a request, it will assign an arbitrator to adjudicate the matter.