Trademarks Briefing (Pharma) - India

Please give details of the major acts and directives governing trademarks.

The Trade Marks Act 1999 (No 47 of 1999), as amended (published in The Gazette of India, 30 December 1999, No 60) and the Trade Marks Rules of 26 February 2002 govern trademarks in India.

The Trade Marks Act 1999 is available from the Office of the Controller General of Patents, Designs & Trade Marks website at http://ipindia.nic.in/tmr_new/tmr_act_rules/TMRAct_New.pdf. The Trade Mark Rules are available at http://ipindia.nic.in/tmr_new/tmr_act_rules/tmr_rules_2002.pdf.

Is your jurisdiction party to any international conventions on trademark protection? When did it join these conventions?

India is party to the following international convention on trademark protection:

• WIPO Paris Convention for the Protection of Industrial Property (1883), since December 1998 http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html.

India has also been a World Trade Organisation (WTO) member since 1 January 1995.

Which are the major bodies responsible for assessing trademark applications and registering trademarks?

Trademark applications should be submitted to the Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM) located in Mumbai through the head office of the Trade Marks Registry (TMR) which is located Mumbai, or its branch offices located in Kolkata, Chennai, Ahmedabad and New Delhi.

The Controller General supervises the working of the Trade Marks Act 1999, the Patents Act 1970 and the Designs Act 2000, it also advises the Government on matters relating to these areas submitting an Annual Report to Parliament. The TMR is responsible for the day-to-day administration of Trade Marks Act 1999. A Geographical Indications Registry was established in Chennai, under the CGPDTM, to protect the Geographical Indications of Goods and administer the Geographical Indications of Goods (Registration and Protection) Act 1999.

The Ministry of Commerce and Industry administers two departments, the Department of Commerce which is responsible for implementing foreign trade policy and the Department of Industrial Policy & Promotion (DIPP) to which the CGPDTM reports.

The Department of Industrial Policy & Promotion (DIPP) is responsible for implementing industrial policy as well as intellectual property rights relating to trademarks, patents and designs as well as the Geographical Indication of Goods; overseeing initiatives relating to their promotion and protection.

Today, almost all of the Trade Marks Registry’s functions have been decentralised and are carried out by its respective branch offices, except for the publication of the Trade Mark Journal, issuance of Registration Certificates and post registration activities (eg renewals), which are carried out at the TMR’s head office in Mumbai.

What can be registered as a trademark? Under what circumstances will registration be refused?

Under the Trade Marks Act 1999 a trademark can be registered in India if it consists of:

• Any name (including an applicant’s first or surname or that of a business predecessor or a signature), which is not unusual to use as a mark;
• An invented word or any arbitrary dictionary word/words, that are not directly descriptive of the goods or services character or quality;
• Letters or numbers or any combination thereof;
• Devices, including fancy devices or symbols.
• Monograms;
• Single colours, combination of colours or a single colour in combination with a word or device;
• 3-dimensional marks;
• Shape of goods or their packaging; or
• Sound marks when represented in conventional notation, described in words or graphically represented.

The proprietorship right of a trademark may be acquired by either registration under the 1999 Act or by use in relation to particular goods or service.

A trademark should be, if a word, easy to speak, spell and remember. Laudatory words which describe the quality of goods should not be used; geographical names should also be avoided.

Carrying out a market survey to ascertain if the same or a similar mark has been used in market is advised.

Under the Trade Marks Act 1999 the following trademark types can be registered:

• Product trademarks - those affixed to identify goods.
• Service trademarks - used to identify the services of an entity.
• Certification trademarks - those capable of distinguishing the goods or services in connection with which it is used in the course of trade and which are certified by the proprietor with regard to their origin, material, method of manufacture, quality or other specific features.
• Collective trademarks - registered in the name of groups, associations or other organizations for use by all members of the group in their commercial activities to show their membership of the group.

What is the procedure for registering trademarks? What are the key stages of the process? What fee is payable?

Any person who is the proprietor of a trademark either in use or proposed can apply in writing to register a trademark. A person may apply to the branch of the Trade Mark Registry under whose jurisdiction the principal place of the applicant’s business in India falls. The application should contain:

• the trademark;
• the goods/services;
• the applicant’s and agent’s (if any) name and address with power of attorney; and
• the period of use of the mark and signature.

Applications should be submitted in English or Hindi and filed at the appropriate office.

If the applicant’s principal place of business is outside India, then the application must be filed with the Trademark office under whose jurisdiction the office of the applicant’s lawyer is located. If a company is yet to be formed, anyone may apply in their name for subsequent assignment of the registration in the company’s favour.

Under Indian law the right to use a mark can be exercised either by the registered proprietor or a registered user.

Prior trademark searches are recommended before filing an application to ensure that registration is not denied due to the resemblance of the proposed mark to that of an existing mark or prohibited category, these can be carried out by the Public Search of Trademarks Application facility via the Ministry of Commerce & Industry Department of Industrial Policy & Promotion’s Controller General of Patents Design and Trade Marks website at: https://www.ipindiaonline.gov.in/etmr/publicSearch/searchmain.aspx.

Certain countries have been declared by India as Convention countries (s 154(2) Trade Marks Act 1999), these countries afford Indian citizens similar privileges to those granted to their own citizens. Any person or company from one of these countries can apply within six months of making an application in their home country for trademark registration in India. If accepted the foreign national is deemed to have registered their trademark in India, from the same date on which they made their application in their home country. Where trademark registration applications have been made in two or more convention countries, the six month period is taken from the date on which the earlier or earliest application was made. Although the recovery of damages for infringement of a trademark is possible only if proven the alleged infringement took place after the filing date of the registration application with the relevant trademark office in India; the deemed seniority of filing an application in an applicant’s home country can entitle them to initiate an action in India for an injunction.

Under the Trade Marks Act 1999 goods and services should be classified in accordance with the International Classification of goods and services; a summary of which goods and services fall in different classes is provided in schedule IV of the 1999 Act. Final authority in determining which class a particular good or service falls within lies with the Registrar.

Once a trademark registration application is received at the Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM) it is examined to determine distinctiveness, whether it may be construed as deceptive in any way, or may conflict with registered trademarks. The Registrar will then decide whether the application should be accepted for registration or not. If accepted, the trademark is published in the Trade Marks Journal. Once published anyone can file an opposition within a prescribed period. If so, a copy of the opposition is served to the applicants who are required to file a counterstatement within two months; failure to do so constitutes abandonment of the application.

An opponent must provide evidence in support of their case by way of affidavit. An applicant may counter this by providing evidence by way of affidavit in support of the application; after which an opponent must file evidence if they wish to rebut it. Once evidence has been submitted the case is referred to a Hearing Officer who is responsible for hearing and deciding the case. The Registrar’s decision is appealable to the Intellectual Property Appellate Board.

In order to file a new application the appropriate prescribed form must be used, eg Form TM-1 for an ordinary trademark application, TM-2 for an application claiming convention priority, etc. In order to file a Notice of Opposition to oppose an application published in the Trade Marks Journal Form TM-5 should be used. In the case of the renewal of a registered trademark Form TM-12 should be used. For surcharge for a belated renewal Form TM-10 should be used. Form TM-13 should be used to restore a removed mark. Form TM-26 should be used to apply for rectification of a registered trademark. Form TM-54 requests an official search. Form TM-46 should be used for a Legal Certificate. To gain the preliminary advice of the Registrar as to the registrability of a mark Form TM-55 should be used. Detailed fee information can be found at http://ipindia.nic.in/tmr_new/default.htm.

Under Indian trademark law it is possible to expedite the processing of cases by filing a request accompanied by the prescribed fees. In order to do so the following information should be provided:

• In the case of non-receipt of First Examination Report within 15 days of filing: the filing date, application number, trademark and class of goods or services details should be sent via email.
• In the case of non-receipt of post registration changes:

1. copies of the last renewal intimation/post registration changes or the Trade Mark Journal number in which the changes were notified should be posted.
2. the statement of the case.
3. documentary evidence in support of claims.
4. if changes are sought on the ground of retirement of a partner of firm, notice should be sent to the retired partner to the effect that a request for change has been filed and it should be sent by existing partners to enable filing an objection, if any, before Registrar within 30 days. An affidavit of service should also be filed to that effect.
5. if the change is due to the death of partner/proprietor an attested copy of death certificate and an affidavit of legal heir should be enclosed.
6. if documentation is not in English or Hindi a translated copy certified as true copy is required.
7. an affidavit from the assignor and assignee to the effect that no proceedings are pending relating to the trademark in any court or before the Appellate Board.

In court proceedings the original registration certificate is not produced as subsequent changes take place all the time. The Registrar provides certified copies of entries on the register on request under form TM-46 (Non-receipt of Legal certificate) which enable a litigant to prosecute their case. Interested parties can speed up this service if such a request is supported by the following documentation:

• If it is device trademark, a copy of the identical label as registered.
• Copies of renewal/post registration changes or the Trade Mark Journal in which such renewal/post registration changes were notified.
• A copy of the Trade Marks Journal in which it was advertised before registration.
• A copy of registration certificate.

All Express Service requests should be sent to the Assistant Registrar of Trade Marks, Trade Marks Registry, Baudhik Sampada Bhavan, Near Antop Hill P.O, S.M. Road, Antop Hill, Mumbai-400 037.

Corrections can be made to an application or the register so long as the trademark applied for is not so substantially altered as to affect its identity. Subject to this changes are permissible according to rules detailed in the subordinate legislation.

What is the test for obtaining trademark protection?

Under the Trademark Act 1999, a trademark can be registered if:

• the selected mark is capable of being graphically represented;
• the selected mark is capable of distinguishing the goods or services of one undertaking from those of another; and
• the selected mark is used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods, services or an individual.

For how long is trademark protection given?

A trademark registration lasts for 10 years from the application filing date; registration may be renewed indefinitely upon completion of Form TM-12 for the renewal of a registered trademark and payment of the prescribed fee.

In the case of a belated renewal, Form TM-10 should be completed, an additional fee is payable for late renewals.

When is a registered trademark infringed? What is the process for enforcing brand or trademark infringement? On what grounds can a trademark owner bring an infringement action?

Under the Trade Marks Act 1999 an owner can enforce their trademarks rights by:

Opposition (before the Registrar) and Cancellation (before the Registrar sitting as an Appellate Board):

Opposition can only take place once the trademark has been published and within three months of date of availability of Trade Mark Journal. A one month extension is available if sought before the three months expire.

Cancellation on the ground of non-use can be sought if the trademark has not been used for a period of five years and three months. Proof that the registered proprietor did not intend to use the trademark at the filing date and non-use until the cancellation petition is required.

Before the Courts:

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

An Intellectual Property Appellate Board exists to speed up the appeals process of Registrar orders and decisions.

If a competitor has already registered an owner’s mark in India, under the Trade Marks Act 1999 provision was made for the owner to commence invalidation proceedings; the owner also has the right to initiate a cancellation under these circumstances as well as the right to initiate either a civil or a criminal action against any party violating their mark in India.

Under India’s criminal laws the penalty for selling goods or providing services using a false trademark is a minimum of six months and maximum of three years in jail with a fine of not less than fifty thousand Rupees, with a maximum of two million Rupees.

What defences are available in trademark infringement cases?

Statutory defences available under the 1999 Act include:

In the case of registration:

• Honest concurrent use;
• Acquiescence by the owner of the mark who was aware of such use; or
• The defendant used the mark prior to registration by the person claiming infringement.

For injunctions or criminal cases:

• Use in accordance with honest practices;
• Parallel imports;
• Fair use in description of the goods or services; or
• The mark has become generic.

In the case of well known marks special considerations apply. Under section 11 of the Trade Marks Act 1999, the Registrar, while considering a trademark registration application or an opposition filed against it should:

• protect a well known trademark against the identical or similar trademark; or
• take into consideration the bad faith involved either on the part of the applicant or the opponent which affects the rights of the trademark in question.

This provision however, should not affect the trademark if registered in good faith or where a right to a trademark was acquired through use in good faith before the commencement of the 1999 Act.

Under what circumstances can the registration of a trademark be refused, revoked, invalidated or removed?

Under section 9 of the Trade Marks Act 1999 absolute grounds for refusal of a trademark include:

• being devoid of distinctive character;
• being descriptive;
• being likely to deceive or cause confusion;
• trademarks which are customary in the current language and customary in trade practices;
• trademarks which comprise scandalous or obscene material or are likely to hurt religious sentiment;
• trademarks which consist of shapes that are purely functional, necessary to obtain a technical result or give substantial value; or
• trademarks whose use is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950.

Under section 13 of the Trade Marks Act 1999 registration is prohibited of any word as trademark which is:

• the commonly used and accepted name of any chemical element or any chemical compound in respect of a chemical substance or preparation; or
• declared by the World Health Organization (WHO) and notified as such by the Registrar, as an International Non-proprietary Name (INN).

Under section 11 of the Trade Marks Act 1999 relative grounds for refusal of a trademark include:

• identical or similar to a previous mark with and/or without similar or identical goods;
• prohibition of use under passing off or copyright law.

A registered trademark can be removed from the register on application to the Registrar via the prescribed form on the grounds that the mark is wrongly remaining on the register. The Registrar also can on its own initiative issue a notice for removal of a registered trademark if it believes there are good grounds for doing so.

Non-use of a registered trademark for a continuous period of five years constitutes grounds for cancellation on request by any prospective user of the mark.

What remedies are available to the brand owner?

In India two types of remedies are available to a trademark owner for unauthorised use of their mark or its imitation by a third party. These are:

• in the case of a registered trademark, an action for infringement; and
• in the case of an unregistered trademark, an action for passing off.

In an action involving infringement or passing off, a court may grant relief in the form of injunction and/or monetary compensation for damages for loss of business and/or confiscation/destruction of the infringing goods.

Although registration of trademark constitutes prima facie evidence of a trademark’s validity, registration cannot overrule a prior consistent user of a trademark, for the rule ‘priority in adoption’ prevails ‘over priority in registration’.

What protection is available for non-registered trademarks?

Non-registered trademarks are afforded some protection under the common law of ‘passing off’ if the unregistered mark has some reputation.

Can trademarks be assigned? Can trademarks be licensed?

Under Indian law trademarks are recognized as a “movable property” and it is therefore possible to assign/licence them. A trademark can be assigned with or without the goodwill attached to it.

Useful contacts

Office of the Controller General of Patents, Designs & Trade Marks

Bhoudhik Sampada Bhavan,

Near Antop Hill Head Post Office,

S.M. Road, Antop Hill, Mumbai-400037

Tel: [phone]

www.ipindia.nic.in

Trade Marks Registry

Mumbai (Head Office - for the jurisdictions of: State of Maharashtra, Madhya Pradesh and Goa. Details on Regional Offices and their jurisdictions can be found via the TMR’s website at http://ipindia.nic.in/tmr_new/default.htm)

Intellectual Property Bhavan, Near Antop Hill Head Post Office,

S.M. Road , Antop Hill, Mumbai 400037

Tel: [phone]

Department of Industrial Policy and Promotion (DIPP) (part of the Ministry of Commerce and Industry)

Udyog Bhawan,

New Delhi 110011

Tel: [phone]

http://www.dipp.nic.in/

Department of Commerce (part of the Ministry of Commerce and Industry)

Udyog Bhawan,

New Delhi 110011

http://commerce.nic.in