Analysing the Indian trademark system

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.


Overview of the Indian TM System : Our partners Amaya Singh and Omesh Puri discuss various aspect of protection and enforcement of trademarks in India in their article, which can be viewed at https://www.managingip.com/IssueArticle/3893424/Supplements/Analysing-the-Indian-trademark-system.html?supplementListId=100703

Article was 1st published in Managing Intellectual Property

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