Summary
India is a member of the Paris Convention for the Protection of Industrial Property; hence an applicant can claim priority of up to 6 months as per the convention. The International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement which consists of 42 classes is followed in India.
The revised trademark law (Trade Mark Act, 1999), which came into effect on September 15, 2003, allows for the protection of service marks in the international classes 35 to 42. Multi-class applications are also allowed, but statutory fees remain the same whether a single application is filed for goods/services falling in different classes or a separate application is filed with respect to each class of goods/services.
Once a trademark application is filed, it is examined as to its registrability which includes distinctiveness, deceptiveness, etc. and availability based on the existence of prior trademarks registered or pending applications. If there are any objections to the registration, an examination report is sent to the applicant. Except in a few cases, examination reports are issued as a matter of practice.
Once an examination report is issued, the applicant or his representative has to reply in writing to the report within one-month of the date of receipt. If the Registrar is not satisfied, he will call the applicant for a hearing. In case the application is rejected, the applicant can file a request for the review of the order of the Registrar. If the application is again rejected, the applicant can file an appeal before the Intellectual Property Appellate Board. (The applicant can invoke the writ jurisdiction against the decision of the Appellate Board). If the trademark application is accepted, it will be published in the Trademarks Journal.
An opposition to the registration of a trademark may be filed before the Registrar by any person or through an authorized representative/agent within 3 months from the date of the publication. The opposing party can seek an extension of one month to file the notice of opposition. In the absence of an opposition, the relevant certificate of registration will be issued.
In case of an opposition, the Registrar - after hearing both sides- would give his decision. Either of the parties may file an application to review the Registrar’s decision within one month from the date of such decision. After such review or without applying for such review, any party may make an appeal to the Intellectual Property Appellate Board within 3 months from the Registrar’s decision.
After the registration of the trademark, plea for cancellation of the trademark pleading that the registration of the trademark is invalid should be prosecuted before the Appellate Board.
A trademark registration is valid for 10 years as of the date of filing the application and renewable for periods of 10 years perpetually. In case of a convention application, the 10-year period begins from the earliest priority date. Trademarks that are registered before September 15, 2003, will remain valid according to the old law (7 years) and they would be renewed for 10 years. In case of applications filed before this date and registered on or after this date, validity period shall be 10 years.
An application for the renewal of the mark should be made within 6 months before expiration. The mark can also be renewed by paying surcharge within 6 months after the expiry date. If not renewed within the said 6 months, the mark would be removed from the register of trademarks. An application for restoration and renewal can be filed within one year from the date of the expiration of the registered trademark. If no action is taken within the said one-year period, a fresh application for the registration of the mark is to be filed.
The assignment of a trademark can be recorded while an application for the registration of the mark is pending, or after the mark is registered. In case of registered marks, unless an assignment has been entered against the trademark in the register, the assignment cannot be enforced.
Assignment can be made in respect of either all goods or services in respect of which the trademark is registered, or of some of those goods or services. If the assignment of the trademark is without the transfer of the goodwill of business, it has to be registered with the Trademarks Registry within 6 months from the assignment deed; otherwise the assignment shall not take effect.
Use of marks in India is not compulsory for filing applications or necessary for maintaining registrations in force. However, a registration is vulnerable to cancellation on the submission of an application by any aggrieved person, if the trademark has not actually been used during the 5 years immediately preceding the application for cancellation, or that the trademark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him, and in fact there has been no bona fide use of the trademark in relation to those goods or services up to a date 3 months before the date of the application for cancellation.
Unauthorized use of a trademark registered under the law or an imitation of such trademark applied on goods and services of the same class, or sale, storing for the purpose of sale, or exhibiting for sale of goods and services bearing a counterfeited mark, or using a mark duly registered under the law by another person to serve the purpose of unauthorized promotion of goods or services of the same class are offenses punishable under the law.
Well-known trademarks in the international market whether registered in India or not and known to the substantial segment of the public, which uses or receives such goods, are recognized by the law.