Indian Trademark Law has been codified in conformity with the International Trademark Law and is about to undergo an amendment to be at tradeonlinemarket 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.
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.
Beside goods India now allows registration in respect of service marks, shape of goods, packaging or combination of colors.
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.
In India definition of mark includes shape of goods and therefore now the three dimensional or 3-Dimensional or 3D Marks could be registered under the provisions of Indian Trademark Act, 1999. The manner in which same has to be provided while filing the trademark application is provided under sub-rule 3 of rule 29 of the Trademark Rules, which states as under:
Rule 29: Additional Representation:
(1)…….
(2)……..
(3) Where the application contains a statement to the effect that the trade mark is a three dimensional mark, the reproduction of the mark shall consist of a two dimensional graphic or photographic reproduction as follows, namely:-
(i) The reproduction furnished shall consist of three different view of the trade mark;
(ii) Where, however, the Registrar considers that the reproduction of the mark furnished by the applicants does not sufficiently show the particulars of the three dimensional mark, he may call upon the applicant to furnish within two months up to five further different view of the mark and a description by words of the mark;
iii) Where the Registrar considers the different view and/or description of the mark referred to in clause (ii) still do not sufficiently show the particulars of the three dimensional mark, he may call upon the applicant to furnish a specimen of the trade mark.
Further three dimensional marks have also been defined under the revised draft manual dated January 23, 2009.
4.2.6 Three dimensional mark- Rule 29(3).
In the case of three dimensional mark, the reproduction of the mark shall consist of a two dimensional or photographic reproduction as required in Rule 29(3).
Where appropriate, the applicant must state in the application form that the application is for a shape trade mark. Where the trade mark application contains a statement to the effect that it is a three dimensional mark, the requirement of Rule 29(3) will have to be complied with
Further a single multiclass application can be filed in India in respect of all the international classes.
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.
Trademark Applications in India can be classified under following categories depending upon their priority claim.
1. Ordinary trade mark application without any priority
2. Conventional trade mark application- has to be filed within 6 months from date of filing of conventional application
In case of conventional trademark application, certified copy of the priority document has to be filed within 2 months from the date of filing of application in India.
Besides above trademark applications, there are also certification trademarks and collective trademarks that are registrable in India.
Certification Trade Marks Registration India:
It is mandatory to supply the Regulations governing use of mark, including provisions as to the cases in which the Applicant is to certify goods or services and to authorise the use of the certification trade mark, along with Application in triplicate on Form TM-49. The regulations governing the certification mark shall specify:
1. Description of the Applicant;
2. Nature of Applicant business;
3. The particulars of infrastructure like R&D, technical manpower support;
4. The applicants competence to administer the certification scheme;
5. The applicants financial agreement;
6. An undertaking from the application that there will be no discrimination of any party if they meet the requirements set down in the regulations;
7. The characteristics the mark will indicate in the certified goods on in relation to the rendering of certified services;
8. The manner of monitoring the use of the mark in India;
The Applicant must not be carrying the business in respect of which the certification mark is sought to be registered.