Jul

27

Indian Trademark Law - Statues, Requirements & Process

Filed Under India Business, India vs China, Indian Companies, Intellectual Property, Research & Development | Leave a Comment

Indian Trademark Law has been codified in conformity with the International Trademark Law and is about to undergo an amendment to be at par International Trademark Law.

Recently India has signed Madrid Protocol that will allow Foreign Applicants to file an International Application designating India like many countries around the globe e.g China.

Though unlike China and many other countries Multi class filing is allowed in India.

Statues:

The various statues dealing with Intellectual property laws in India are as follows:
1. Trademarks Act, 1999
2. Copyright Act, 1957
3. Patents Act, 1970 as amended by Patents (Amendments) Act, 2005
4. Designs Act, 2005
5. Code of Civil Procedures, 1908
6. Indian Penal Code, 1860
7. Geographical Indication of Goods (Registration & Protection) Act, 1999
8. Semiconductor, Integrated Circuit Layout Design Act, 2000
9. Plants Varieties Protection and Farmers’ Rights Act, 2001
10. Information Technology Act, 2000

Requirement:
A ‘Trademark’ means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. A ‘Mark’ includes a device, brand, heading, label, ticket, name (including abbreviations), signature, word, letter, numerals, shape of goods, packaging or combination of colors and any combination thereof.

The two main requirements of a trademark are that it must be distinctive (adapted to distinguish the goods/services of the applicant from that of others) and not deceptive. Therefore while selecting a trademark, words that are directly descriptive of the goods, common surnames or geographical names should be avoided as these confer weaker protection to the proprietor even if registered. Now the concept of “well known mark” has been introduced after the last amendment and Section 2 (zg) defines a well known mark as:

“Well-known trademark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.” While determining whether the mark is well-known mark, the registrar will take in to consideration while determining that the mark is a well known mark.

(a) the knowledge or recognition of the alleged well known mark in the relevant section of the public including knowledge obtained as a result of promotion of the trademark.
(b) the duration, extent and geographical area of any use for that trademark.
(c) The duration, extent and geographical area for any promotion of the trademark including advertising or publicity and presentation at fairs or exhibition of the goods or services
in which the trademark appears.
(d) The duration and geographical area of any registration of any publication for registration of that trademark under this Act to the extent that they reflect the use or recognition of that
trademark.
(e) The record of successful enforcements of the rights in that trademark, in particular the extent to which the trademark has been recognized as a well known trademark by any Court or Registrar under that record.

Whereas a trademark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well known trademark for registration under this Act.

“Relevant section of Public” may be actual or potential consumers of, persons involved in channels of distribution of or business circles dealing with the type of goods or services to which the mark is applied.

The Registrar is not required to consider the following facts while determining a well known trademark.

a) The Trademark has been used in India
b) The Trademark has been registered
c) The application for registration of the Trademark has been filed in India.
d) The trademark is well known in or has been registered in, or in respect of which an application for registration has been filed in any jurisdiction other than India or
e) The trademark is well known to the public at large in India.

Priority:
For claiming a priority from an application filed in United States a corresponding application should be filed in India within 6 months of date of filing of original application.

Various Grounds for refusal:

Absolute grounds:

Section 9 of the Trademarks Act, 1999 sets out the absolute grounds for refusal of trademarks, which can be grouped under following heads:

a) Trademark is devoid of distinctive character;
b) Trademarks that are descriptive;
c) Trademarks likely to deceive of cause confusion;
d) Trademarks or signs that are customary in current language and in the bonafide and established and customary practice of the trade;
e) Trademarks comprising scandalous or obscene matter or likely to hurt religious susceptibilities in India;
f) Trademarks consisting of shape which are purely functional or are necessary to obtain a technical result or give substantial value to the goods; or
g) Trademarks whose use is prohibited under Emblems and Names (Prevention of Improper Use) Act, 1950.

Prohibition:
Section 13 of the Trademarks Act, 1999 prohibits registration of any word as trademark which is:
a) Commonly used and accepted name of any chemical element or any chemical compound (as distinguished from mixtures) in respect of a chemical substance or preparation; or
b) Declared by the World Health Organization and notified as such by the Registrar, as an International non-proprietary names.
Relative grounds of refusal:
Section 11 of the Trademarks Act, 1999 sets out the relative grounds for refusal of trademarks, which can be grouped under following heads:
a) identical or similar to a previous mark with and/or without similar or identical goods;
b) Prohibition of use of the trademark under passing off or law of copyright;

Statutory defense available under the Act:
For registration:
a) Honest concurrent use;
b) Acquiescence; or
c) Prior user
Against Injunction suit or criminal matters
a) Use in accordance with honest practices in Industrial or commercial matters;
b) Parallel Imports;
c) Fair use in description of the goods or services; or
d) Generic ness.
Special Considerations in case of well known mark:

As per Section 11 of the Trademarks Act, while considering an application for registration of a trademark and opposition filed in respect thereof the Registrar shall

a) protect a well known trademark against the identical or similar trademark.
b) take into consideration the bad faith involved either of the applicant or the opponent affecting the rights relating to the trade mark.
However this provision shall not effect the trademark if it trademark has been registered in good faith disclosing the material information to the Registrar or where right to a
trademark has been acquired through use in good faith before the commencement of this Act.
Enforcement of Trademarks Rights:

Opposition (before the Registrar) and Cancellation (before the Registrar as well as Appellate Board)
Opposition can only be done after publication of the trademark and within 3 months of date of availability of Journal. One month extension is available if sought before the expiry of 3
months time.

Cancellation on the ground of non-use for a period of 5 years and 3 months and proof of intention on part of the registered proprietor not to use the trademark at the filing date and nonuse till the cancellation petition.

Before the Courts: Ex-parte Injunction, Permanent Injunction, Anton Pillar Order, and /or Arrest and Seizure of goods (irrespective of registration).

Assignment/ license:

Trademarks are now recognized as a “movable property” under the Indian law and can be therefore assigned/ licensed. A trademark can be assigned with or without the goodwill
attached to it.

Renewal:
The trademarks can be renewed perpetually, are renewable for a period of 10 years on payment of prescribed fees.

Express processing:
Under Indian trademark law now it is possible to expedite the various proceeding e.g. search, examination etc. by filing a request with prescribed fees. Indian Trademarks law are at par with the International laws and has stringent procedures for safeguarding and protecting interest of the proprietor of mark.

The author, Sudhir Aswal, is an Advocate and Registered Patent And Trademark Attorney with Aswal Associates and handles IPR division of the firm and is having the vast experience of having being associated with various premier IPR firms of India in the past. The author is also a member of APAA. Article Source: http://EzineArticles.com/?expert=Sudhir_Aswal

Nov

21

Indian Companies Still Lagging in R&D- Why?

Filed Under E-Business, Emerging Sectors, India Business, India Investment Opportunities, Indian Companies, Intellectual Property, Internet in India, Mobile Telecom, Research & Development | Leave a Comment

Innovation remains a key business growth driver and companies worldwide are pouring in millions of dollars each year to stay ahead of the global competition. There is growing evidence to show that the more a company spends on R&D, the better they tend to perform on sales and profit growth. The UK Department of Trade and Industry started a project for making an R&D scoreboard in 1991, with the belief that British Companies were suffering from under-investment in Science and Technology. Today they give scores to a Global top 1250 companies (referred to as G1250).

An example of the benefits of R&D spending for share prices is the performance of the Scoreboard’s “R&D Portfolio”, comprised of companies in the FTSE100 on the London Stock Exchange that spend more than 4% on R&D. Since August 1997, the portfolio has increased in value by 73%, while the FTSE100 has risen only by 16%.

While global R&D spend by G1250 rose by 10% to £244 billion (or nearly $500 billion), it is dominated by companies from just five countries – USA, Japan, Germany, France and UK – which contributed 81% of R&D by the G1250. Firms from India and China have yet to establish themselves as significant players in the G1250, although both countries are increasingly important locations for R&D outsourcing. The pharmaceutical sector has replaced the technology hardware sector as the largest global R&D sector. Pfizer is the global leader in R&D spend, replacing Ford Motors as the highest spender on R&D from 2002. The top 10 list has 4 Automobile Companies (Ford, DaimlerChrysler, Toyota and GM) and 3 Pharmaceutical companies (Pfizer, J&J and GSK). Apart from interchanging positions, the top 10 spenders remained more or less the same.

Talking specifically about Indian business: in 2006, only 3 Indian companies made it to the Global top 1250 – Ranbaxy, Dr. Reddy’s and Tata Motors. Infosys, Wipro and Biocon had not even made it to the cut off limit ($33 million) for the G1250 in 2006. In 2007, 9 Indian companies made it to the list, with Tata Motors as the top Indian Company at 91st place in the G1250 with a net R&D spend of £92 million ($180 million). Mahindra & Mahindra, Ranbaxy, Dr. Reddy’s, Sun Pharmaceuticals, KPIT Cummins Infosystems and Mindtree Consulting were the other Indian Companies to make it to the G1250. Tata Iron & Steel Co. with the acquisition of Corus, and Hindalco thanks to Novelis also appeared on the scoreboard.

The Indian list leader, Tata Motors, has increased its R&D expenditure both in volume and as a percentage of revenue and the profits have been growing at an excellent pace. And with Tata Motors devoting further R&D to the dream project of the Rs. 100k ($2.5k) car, both topline and bottomline should go up.

With an ever-growing middle-class consumer base, India is now in a position to create its own profitable innovations. But then innovation just doesn’t happen because you have a billion of cash in bank. Innovation needs executive level commitment to identify a profitable niche and go for it, and be willing to take the risk of failure at the first attempt. Just like Tata Motors is trying out a low cost car, what prevents Reliance Telecom/ Airtel from creating a very low cost mobile device with an Internet connection (agreed Reliance made a start with low cost handsets in 2002, but a lot more is possible today)? What prevents Wipro from creating the lowest cost laptop? Nothing really.

About the Author: Ishan Sethi is a Sales & Marketing professional with keen interest in emerging sectors and India business opportunities. He is an alumnus of Indraprastha University and IIM Lucknow. He can be reached via the Contact page.

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