13 Nov 2018

TRADEMARK FILINGS IN INDIA: AN ANALYSIS

Introduction

 

A trade mark is a mark capable of distinguishing the goods or services of one person from those of the other and includes a word, device, label, logo, shape of a product, packaging of a product, combination of colours, sound, slogan, signature, symbols etc. A trademark registration remains valid up to 10 years from the date of filing of application and may be renewed at the expiry of every 10 years. A trade mark aids in advertising ones product and to spread awareness among traders as well as purchasers.

Benefits of having a trade mark

There are a number of benefits conferred by a trade mark upon its owner; some of them are enumerated below:

 

  • Exclusive rights to use the mark: One of the significant benefits of having a trade mark is the exclusive right to use the same. As Section 28 (1) of the Trade Mark Act, 1999 (the Act) reads,

“Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.”

Thus, a trade mark bestows upon its owner the exclusive right to use the same in relation to the goods and / or services for which it is applied. In addition, the trade mark owner can also initiate a legal action in case of passing off or infringement of its mark and is also entitled to obtain relief.

 

  • Use of symbol TM or ®: A trade mark owner may also use the symbol TM in case of a pending trade mark or ® in case of a registered trade mark, thereby spreading awareness about his rights entailed in the mark. Further, it also deters others from using a similar or identical trade mark vis-à-vis same set of goods and / or services.

 

  • Intangible property: A trade mark is an intangible property and akin to any other asset, it may be sold, assigned, transferred or even licensed to use by some other person or an entity.

 

  • Countrywide protection: By obtaining registration of trade mark, the owner gets the rights to use the mark throughout the country as well as to initiate a legal action against unfair use of the mark by a third party within the geographical boundaries, thus, the use or protection of the trade mark is not restricted to a particular area or region.

 

Infringement or passing-off

 

Registration of a trade mark provides its owner the nation-wide rights to use the mark for which it is applied. Having said that, a trade mark may also be infringed by competitors who tarnish the repute of the mark. In case of infringement of a trade mark, the registered proprietor may initiate a legal action under Section 29, against the person misusing it of the Act. Further, Section 27 of the Act provides remedy for passing-off an unregistered trademark by other person. Thus, a trade mark owner may initiate a legal action against the person infringing it and prevent the mark from being diluted. Some judgements passed by the Hon’ble High Courts in favour of the Trademark owners are discussed hereunder:

  • In Nirma Limited v. Nimma International and Anr., it was held that use of the marks ‘Nimma’ or ‘Nima’ by the defendants or any other mark which may be similar to the plaintiff’s registered trademarks ‘Nirma’ and ‘Nima’ will amount to confusion among the purchasers and would lead them to believe that the goods belong to the plaintiff. Thus, the defendants were restrained from using the mark ‘Nimma’ or any other mark including the word ‘Nima’.

  • In Sunil Mittal & Anr. v. Darzi on Call, it was held by the Hon’ble High Court of Delhi that the mark DARZI of the defendant is identical to the plaintiff’s registered trade mark THE DARZI (Label), and the same amounts to infringement of the plaintiff’s mark. Resultantly, the Court granted interim injunction in favour of the Plaintiff.

  • In Pandit Kulfi and Cafe v. Pandit Kulfi, it was held by the Hon’ble High Court of Rajasthan, that the use of mark PANDIT by the respondent amounts to infringement of registered trade mark PANDIT of the appellant and passing-off its goods as those of the appellant. Thus, the appeal filed by the appellant was allowed and the respondent was restrained from using the word PANDIT till the pendency of the suit.

 

Recent initiatives undertaken by the Trade Marks Office, India

Over the past few years, the Indian Trade Marks Office (TMO) is continuously making efforts to streamline the trademark filings and reduce the pendency prevailing at the TMO. Of late, the Indian trade mark filing system has witnessed some major transformations, such as introduction of e-filing module, becoming signatory to the Madrid Protocol, speedy disposal of applications, service of documents through email, submission of responses via email etc. Some of the recent transformations are highlighted below:

  • Introduction of e-filing module: The introduction of comprehensive e-filing module has been one of the most significant transformations in trade mark filings in India. The e-filing module is accessible to the users round the clock and has been aimed at accelerating the filings and to negate the delays in the processing of applications. Further, in order to incentivise e-filing of applications, a rebate of ten percent on the official fees is being offered by the government.

  • Madrid Protocol for international filing: The Madrid Protocol is governed by the World Intellectual Property Organization (WIPO), and allows the applicant to obtain registration in multiple member countries of the protocol by filing single application in the office of origin. The Madrid protocol is convenient and a cost effective mode of obtaining trade mark registration in multiple jurisdictions. India became signatory to the Madrid Protocol on July 8, 2013.

  • Introduction of new Trade Marks Rules: With the new Trade Marks Rules coming into force in March 2017, there has been a major improvement in the trade mark filing. The new Rules brought about a number of changes such as, reduction in total number of forms, expedited processing of applications till the grant of registration, rebate on official fees to incentivise online filing, service of examination reports and other official correspondences via email, show-cause hearing through video-conferencing, weekly publication of trademarks journals, issuance of electronic registration certificates, SMS alerts for examination reports etc.

  • Start-up India Scheme: Start-ups have a limited number of resources, and therefore, it becomes an impediment for them to protect their business identity and to position their product and / or services in the market. The government offers a substantial rebate on official fee to start-ups and small scale enterprises thus encouraging them to obtain registration of their trade mark at the same time reducing their overall expenses in the initial years.

  • Scheme for facilitating start-ups: A scheme for facilitating ‘Start-ups Intellectual Property Protection’, popularly known as the “SIPP Scheme”, has also been introduced by the government in order to help young entrepreneurs to have their trademarks protected. The government has empanelled Trade Mark practitioners and registered Trade Mark agents as facilitators under this scheme who not only facilitate start-ups in obtaining registration for their brands but also provide support in protecting and enforcing their trade mark rights. Under this scheme, the start-ups are required to pay only the statutory fees while the entire facilitation costs are borne by the government.

  • Determination of well-known trade mark: According to Rule 124 of the Trade Marks Rules, 2017, any person may request for determination of trade mark as well-known. Such request may be filed after the payment of stipulated fees and shall be accompanied by a statement of case and cogent documentary evidence relied upon by the Applicant corroborating his claims. Once the trade mark is determined as well-known by the Registrar, the same shall be advertised in the Journal and would also be included in the list of well-known trademarks.

 

  • Registration to sound marks: The new Rules have recognized the registration of a sound mark as a trade mark where sound functions as a trade mark and helps in identifying and associating the goods or services as emanating from a particular source.

 

Trends in Indian trade mark filings

The efforts made by the TMO have resulted in a speedy and efficient registration of trademarks as well as increased the number of trade mark filings per year. The TMO has recruited a large numbers of Examiners in the recent years so as to streamline the filings and propel the processing of applications. The Annual Report of the Office of the Controller General of Patents, Designs and Trademarks demonstrated that in the year 2016-2017, the total number of trademark applications filed at all five jurisdictions of the TMO was 2,78,170. Further, the number of applications examined increased by 98.7{e376cc23ceea11f30dfb577cba2b5547d047ebb7628b6ef4583aa3e610522d69}, while the number of trade mark registrations showed a whopping increase of 284.5{e376cc23ceea11f30dfb577cba2b5547d047ebb7628b6ef4583aa3e610522d69}. The disposal of applications has also increased by 150{e376cc23ceea11f30dfb577cba2b5547d047ebb7628b6ef4583aa3e610522d69} when compared to the year 2015-2016.

 

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