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Search

Prior search for a mark, is the most fundamental part of filing an application for a trade mark. Though not a procedural pre-requisite for application, it finds utmost importance in the fact that the acceptance of a mark for registration as a trade mark, depends on the distinctiveness of the mark. It is crucial to carry an exhaustive search in the Trade Marks Registry, to ascertain the uniqueness of the mark and eliminate all possibilities of duplication. It needs to be ensured that the proposed mark is not identical or even similar to any pre-existing mark which is either registered or pending registration.

Detailed prior search is also proof of honesty and good faith in adoption of the mark, during opposition and infringement proceedings.

Classification

The application for trademark needs to specify the appropriate class or classes of the goods or services, in relation to which the application is filed. The applicant needs to be careful in ascertaining the class of goods or services in his application as the Examiner needs to be convinced about the applicability of goods and services from a particular class or across classes to the application, and a broad or vague declaration can prolong the process of examination.

Selection

Selection of a mark is the fundamental part of the application. The mark needs to meet the qualifications enlisted in the Trade Mark Act and has to fall within the parameters of being a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or, combination of colours, or any combination of these elements, capable of being ‘graphically represented’ and indicative of a trade connection with the proprietor. It essentially needs to have a distinctive character capable of constructively distinguishing the goods and services of the applicant from others. The absence of uniqueness of the mark results in the refusal of the application.

Filing of Application

Application can be filed by a person or his IP Lawyer or any other person authorized in this respect at the Head office (at Mumbai) or branch offices (at Ahmedabad, Chennai, Delhi, Kolkata) of the Registry by delivery at the front office personally or by post, or submitting electronically through the gateway provided at ipindia.nic.in. The application has to be normally filed at the office within the territorial jurisdiction of which the principal place of business of the applicant in India is situated. There are certain applications which need to be filed directly at the Head Office.

Special care has to be taken of the fees, as non-payment results in treatment of the application as not-filed.

Numbering and Examination of Application

On receipt of the application, it is dated and numbered, and a copy is returned to the applicant/ attorney. The number assigned to the mark is the registration number post-registration. The proprietor is allowed to use the TM symbol after their application has been numbered.

The application is henceforth examined for the accuracy of the class in which it has been filed, the necessary documents that need to be attached depending on the type of application- registration of trademark for goods or services included in one class/different classes/with priority claim etc, details of the applicant and the proprietor.

Hearing

After the completion of the examination, the Trade Marks Registry sends the “Official Examination Report” to the applicant. The applicant may be required to reply to objections raised by the Examiner under Section 9 and Section 11 of the Trade Marks Act, in addition to clarifications regarding content of the application. Should the reply be insufficient to satisfy the Examiner, the applicant is granted a hearing to overcome the objections.

Publication in the Trade Mark Journal

The application is published in the “Trade Marks Journal,” after the post-examination hearing with the applicant. The journal is published by the Trade Marks Registry and is a Government of India publication. The application is granted registration if it stands unopposed after the publication in the journal for a period of four months.

In case, the publication is challenged, opposition proceedings commence, and the registration is granted only if the proceedings conclude in favour of the applicant.

Opposition Proceedings

Any person can file a notice of opposition against an application published in the journal, within a period of four months from the date of publication in the journal. The notice of opposition can be accompanied with supportive evidence.

An application can be opposed on the grounds provided in the Trade Mark Act. The Registrar is required to serve a copy of the opposition to the applicant, within two months of receipt of the opposition. The applicant is mandatorily required to reply within two months, failure of which will result in his application being treated as abandoned. The counter-statement is served to the opponent and usually the parties are heard along with consideration of the evidence provided by both parties.

The Registrar has the authority to decide the acceptance of the application for trade mark based on the hearing. The aggrieved party has the right to challenge the decision by filing an appeal before the Intellectual Property Appellate Board.

Registration

The application is registered, if it has been accepted and not opposed, or if opposed, has been decided in favour of the applicant. The applicant is issued a Certificate of Registration, and is henceforth allowed to use R along with the registered trade mark. The registered trade mark is valid for the next ten years from the date of the application for the mark.

Renewal

A registered trade mark can be renewed every ten years for an unlimited period on payment of renewal fees. The renewal request should ideally be filed with the Trade Marks Registry within six months before the expiry of the trade mark. It can also be filed up to six months after the expiry of the trade mark, along with the payment of the prescribed late renewal fees.

1) Obtaining exparte Injunctions and John Doe Orders.

2) Obtaining search and seizure Orders.

3) Conducting market raids.

4) Rendition of accounts of the infringer/ violater.

5) Mediation for amicable settlement of disputes.

6) Arbitration and Conciliation.

The Customs Act, 1962, enables the Commissioner of Customs, on behalf of the Central Government, to prohibit the import of goods on absolute or conditional terms, for the protection of patents, trademarks and copyrights. Pursuant to this, the authorities came up with the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 which specifies the process of protection of intellectual property rights (Copyright, Trade Mark, Patent, Design and Geographical Indication) from violation in the course of import into the country.

Recordation

To initiate the process of protection of the intellectual property rights during the course of import into India, the right holder is required to be registered with the Central Board of Excise and Customs. The application of recordation needs to mention the form of intellectual property seeking protection and the specific port of import of goods. It needs to submitted online at http://ipr.icegate.gov.in/IPR/index.jsp, and the a copy of the same along with the attached documents have to be submitted at the office of the Commissioner of Customs of the chosen port of import of goods.

We provide complete procedural and adjudicatory assistance to our clients (right holders) in the recordation with the Commissioner of Customs. Compliance of the procedural requirements are crucial for the successful registration and need to be meticulously dealt with.

The right holder has to furnish the proof of existence and ownership of a valid intellectual property right by them, statement of grounds for notice of suspension of release of the alleged counterfeit goods. It is also required to carry a detailed description of the goods and samples or photographs of the genuine product for comparison.

A Unique Temporary Registration Number (UTRN) is generated on the successful completion of the application. This is converted into a Unique Permanent Registration Number (UPRN) after approval of the application for recordation by the Commissioner. The UPRN provides access to the customs assistance for a period of five years and can be renewed thereafter. Registration leads to the protection of the right holder from the an infringement of his intellectual property right, by prohibiting the import of the alleged infringing goods into India.

Suspension of Clearance of Goods and further proceedings

The Commissioner can suspend the clearance of goods, firstly on a notice by an intellectual property right holder, (based on a specific intelligence received by the holder regarding a consignment of infringing goods) and secondly on a suo moto basis, if he has prima facie evidence or reasonable grounds to believe that the goods are infringing.

Thereafter, the right holder and the importer or their duly authorized representatives are given an opportunity to examine the alleged goods and provide their samples for examination, testing and analysis to facilitate the determination of the authenticity of the alleged goods.

We provide assistance to our clients in the following aspects-

• Co-ordinating with the Customs Department and submission and execution of required bonds and bank guarantee

• Suspension of the clearance of the infringing consignment

• Examination of the consignment

• Preparation and Submission of the Authenticity Report

• Reply to Show-Cause Notice

• Adjudication Proceedings

• Coordination with the Customs Authorities for destruction of Infringing Goods

It cannot be emphasized enough that Custom Officials are better equipped to spot an intellectual property rights infringement, if they are trained about the characteristic features of the genuine products and difference between the counterfeit and genuine products and associated intellectual property rights.

Hence, we have been actively conducting Intellectual Property Rights training and sensitization, in collaboration with our clients, for Custom Officials and other enforcement agencies in India, and neighbouring countries of Bangladesh, Cambodia and Malaysia. This enables them to actively check for infringing goods and help us keep a cautious check over the infringement of the intellectual property rights of our clients.

A registered trademark can be assigned or transmitted with or without the goodwill of the business concerned, and in respect of either or all of the goods or services in respect of which the trademark is registered. An unregistered trademark can be assigned or transmitted with or without the goodwill of the business concerned. However, in respect of assignment of trademarks (registered or unregistered) without goodwill of the business concerned, the prescribed procedure has to be followed, which includes advertisement of the proposed assignment to be published in the newspapers. The Registrar of Trade Marks could impose certain restrictions and conditions for the assignment or transmission of the trademark. To be effective, the assignment or transmission must be recorded with the Registrar of Trade Marks.

Licensing of Trademarks

Trade mark license is an agreement between the registered proprietor of the trade mark (licenser) and another person (licensee), authorizing the licensee to use the trade mark in course of trade, against the certain payment of royalty to the licenser. The word license is not mentioned in the Trade Marks Act, 1999. But the act speaks about the “registered user” and “permitted use.”

Revocation of Trade Mark

An application for cancellation or rectification of registration of a trademark can only be filed by the aggrieved person (e.g. prior users of the mark). Such an application must be filed with the Registrar of Trade Marks or the Appellate Board.

The following are some of the grounds on which the registration of a trademark can be removed or cancelled:

• The trademark was registered without any bona fide intention on the part of the applicant to use the trademark and there has been no bona fide use of the trademark for the time being up to a date three months before the date of the application for removal;

• That up to a date three months before the date of application for removal, a continuous period of five years from the date on which the trademark is actually entered on the register or longer has elapsed during which the trademark was registered and during which there was no bona fide use thereof;

• The trademark was registered without sufficient cause, or the trademark is wrongly remaining on the Register.

Keeping into purview the growing brand awareness and its protection, our firm has succeeded in keeping pace with the transforming dynamics of law and offering specialized anti-counterfeiting services.

With the objective of effective implementation of Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, our firm has conducted various search and seizure operations with the assistance of enforcement agencies, including Customs Authority of India and aided the confiscation of the counterfeit products of various established brands.

The boundless growth of Internet and its accessibility to people across the world has led to a huge increase in IPR violations and issues over the Internet. Enforcement of IPRs over the Internet is a sphere which we undertake with immense passion, excitement and vigour. IPR violations over the Internet have seen a huge increase in the last half a decade with the upspring of newer business models such as e-commerce platforms and marketplaces and we have kept pace with it.

We have a separate Internet Violations Department within our organisation which specifically deals with IPR violations taking place over and through various means on the Internet.

Services Provided

• Dedicated Internet Monitoring Services

• Arranging & Conducting Test Purchases

• Drafting & Serving C & D Legal Notices

• Drafting & Serving Take-Down Requests

• Reporting IPR Violations

• Take-Down/Blocking of Listings and URL(s)

• Filing Cyber Complaints with Cyber Cell, India

• Carrying out Domain Name Disputes Arbitration (NIXI & UDRP)

• Filing Cases and Litigation in Courts

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an “international application”. The Madrid System is a centralized filing and management procedure through which a single international application in one language (English, French or Spanish) and pay one set of fees in Swiss francs to obtain international registration in multiple territories.

Through the Madrid System there is no need to pay for translations into multiple languages or to spend extra time working through the administrative procedures of multiples offices effectively saving the applicant’s time and money.

Application through your National or Regional IP Office (Office of origin)

Before you can file an international application, you need to have already registered, or have filed an application, in your “home” IP office. The registration or application is known as the basic mark. You then need to submit your international application through this same IP Office, which will certify and forward it to WIPO.

Formal examination by WIPO>

WIPO only conducts a formal examination of your international application. Once approved, your mark is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will then send you a certificate of your international registration and notify the IP Offices in all the territories where you wish to have your mark protected.

It is important to note that the scope of protection of an international registration is not known at this stage in the process.It is only determined after substantive examination and decision by the IP Offices in the territories in which you seek protection.

Substantive examination by National or Regional IP Offices (Office of the designated Contracting Party)

The IP Offices of the territories where you want to protect your mark will make a decision within the applicable time limit (12 or 18 months) in accordance with their legislation. WIPO will record the decisions of the IP Offices in the International Register and then notify you.

If an IP Office refuses to protect your mark, either totally or partially, this decision will not affect the decisions of other IP Offices. You can contest a refusal decision directly before the IP Office concerned in accordance with its legislation. If an IP Office accepts to protect your mark, it will issue a statement of grant of protection.

The international registration of your mark is valid for 10 years. You can renew the registration at the end of each 10-year period directly with WIPO with effect in the designated Contracting Parties concerned.