Assignments, Mergers, and Transmissions of trademarks

Trademarks nowadays are an integral part of every business as it is a part of Intellectual Property. It is uncommon nowadays for the value of business’ IP to far exceed its physical assets. Like their assets Trademarks could also be bought, sold or transferred between the entities. It is always advisable to update with the concerned registry about any kind of changes related to assignment, mergers, change in name of proprietor etc. having updated the Trademark office, it is easier to pursue and legal proceedings against any infriger.

The current system followed in the Indian Trademark office allows for recordal of changes in the details of the owner under Two methods-

  1. Changes due to assignment/ transmission
  2. Change of name of the proprietor

The exact request to be filed depends upon the specifics of each transaction

Below are the scenarios in which transfer of Trademark situations are given and it is assumed that all the scenarios mentioned below refer to the transfer of Trademarks with goodwill.

  1.  Company A sells its Trademark to Company B

It is a straightforward case of Trademark assignment.

  1. Company which owns Trademark merges with company B o form a new company (which owns a company as A&B)

In the adobe example company A and B ceases to operate its business individually as they merge with each other.

  1. Change in Partnership Structure

In case of partnership firms if any partner dies, then it results in dissolution of the firm accordingly it is deemed that in Trademark owned by a firm deemed to be assigned/transferred o a new entity.

While recording an assignment/transfer of Trademarks the following factors also needs to be kept in mind:

  • Under Indian law, it is imperative that a specific value is affixed to the trademarks in question. This is due to the fact that the transfer can only be enforced once the transfer document is duly stamped in accordance with the applicable stamp duty. The rate of stamp duty varies from State to State (for example, in Tamil Nadu, it is 7% of the consideration amount), and accordingly, it is important to have the requisite stamp duty paid.
  • Trademark registry will reject the application if it has not been stamped or has not been stamped as per the requisite amount.
  • In case of assignment or transfer is on a global basis then it is always advisable to mention India specific clauses with respect to the consideration paid to the Indian Trademark office, in the absence of a specific value for the Indian Trademarks/operations, the stamp duty would be payable on the entire consideration.

Recording Assignment/ Transmission with Trademark Office

The following documentation is required for recording Assignment or Transmission with the Trademark Office-

  • A stamped and notarized assignment deed/ merger document showing the spec Trademark application numbers being transferred, as well as the specific consideration value as described above.
  • An affidavit from the assignee stating that there is no litigation regarding the ownership of the marks in India.

Contact BIAT Legal LLP for any Trademark related query for best assistance.

Compulsory licensing: Noble or Ignoble during Covid-19?

There are many substantial developments within the field of property and pharmaceuticals are done during the time of pandemic. New means to stop , treat and mitigate Covid-19 are being researched for developing effective medical treatment as fast as possible. Its vaccine is more important to return to hamper the transmission of disease.

Owing to the continual efforts of pharmaceutical companies, there’s a sign that effective treatment for coronavirus may soon emerge, however there still arises an issue that folks are going to be ready to access them at affordable prices or not. Considering this fact, governments of many countries seem to not support patent based medicine.

To combat the present situation the government has begun to adopt alternative measures to tackle things of Covid-19 pandemic. Accordingly various countries are taking pre emptive measures, like compulsory patent licensing, to affect the monopolies for all times saving medical treatments. Although the laws of varied countries differ on how and under what circumstances a compulsory license should be issued, the essential premise of the measure being invoked at a time of great and urgent national need is the same across jurisdictions. Due to the urgency of this crisis, several countries have issued, or are within the process of issuing compulsory licenses (or their equivalent laws).

Israel, issued a compulsory license to import the generic version of AbbVie’s Kaletra, a fixed-dose antiretroviral combination drug i.e. Kaletra (Lopinavir/Ritonavir) from India for treating coronavirus, which is usually prescribed for the treatment of HIV/AIDS. The license is granted under section 104 of the Israeli Patents Law to permit importation of the generic version of the drug. Germany and Canada have amended their patent protection laws to grant compulsory licenses. Germany has passed a replacement legislation, Prevention and Control of Infectious Diseases in Humans Act, for issuance of compulsory license under the section 13(1) of the Patent Act of Germany. Similarly, Canada also passed a replacement law, COVID-19 Emergency Response Act, which empowers the govt to issue a license initially without negotiating with the patent holder. Chile and Ecuador have each passed resolutions urging their governments to issue compulsory licenses to form it easier to get patented drugs to combat the Covid-19 crisis.

Brazil, also introduced a bill to permit the government to temporarily suspend the patent monopolies for medical products which can be wont to prevent and treat Covid-19; however, such license shall be valid till the duration of emergency. Contrary to the present , Interfarma, a trade group representing drug makers in Brazil, stated that compulsory license, a tool to override patent holders’ rights to market drug competition, doesn’t foster the immediate transfer of data to hurry up production, rather, an equivalent increases the danger of misallocation and inefficient use of resources or raw materials. Further, Interfarma stated that compromising on the property protections may result in long lasting damage which might affect future innovations in most sectors of the economy and wither the power to revive national health systems in any future crisis.

Moreover, it’s important to notice that each one the WTO members agreed within the Doha Declaration on TRIPS and Public Health which affirms that “the TRIPS Agreement doesn’t and will not prevent members from taking measures to guard public health”. this technique allows the exporting country to issue a compulsory license for the aim of exports to an importing country. However, such importing countries have to notify the WTO about its insufficient manufacturing capacity. thanks to the immediate need of a drug/cure for Covid-19, many countries might find themselves insufficient in terms of producing capacities and thus, might seek other countries’ help to supply sufficient supplies.

In view of the grim and urgent situation arising from the pandemic, a resolution for implementation of already inherent flexibilities within the TRIPS agreement was put forth within the World Health Assembly (WHA). India has co-sponsored this resolution, which involves four key measures to be taken to combat the pandemic. These measures include fair distribution of health technologies, preference of the TRIPS flexibilities over any existing IP rights involving health technologies relevant for COVID19, vaccines for COVID19 and increased R&D and global data pool geared towards finding COVID19 health technologies.

Contact BIAT Legal LLP for any Trademark related queries.

Legal Standing of Position Trademarks

There are a lot of brands which have acquired popularity and distinctiveness based on the way their labels and logos are placed on a given product. But did you know that these brands have the right to claim monopoly over the positioning of their label on products? Well, a ‘position trademark’, falling under the category of ‘unconventional trademarks’, allows proprietors to claim rights over the way their label is placed on a product, based on its distinctiveness. Having said the same, the legality of position marks is still comparatively new and unexplored by jurisdictions around the world.

The World Intellectual Property Organization (WIPO) defines ‘position trademark’ as ‘a sign, represented graphically, positioned on a particular part of a product in a constant size or particular proportion to the product’. Hence, a position trade mark consists of two aspects – the mark itself and the position/ placement of the mark on a product. In other words, WIPO recognizes a position mark as a ‘constant element of an identical size placed on a product in a fixed position’. Since the application for registration of such a trade mark is based primarily on the placement or ‘position’ of the mark, a description detailing this position is the foremost requirement. It is pertinent to note that position marks would likely not be registrable if the description indicates that the placement of the mark on a product is variable. In order to claim monopoly over the positioning of a trade mark, the applicant is required to establish the fact that the logo along with its position on their product is distinctive enough to serve as a source identifier.

It is interesting to note how various deciding bodies have adjudicated upon the distinctiveness of a position mark. A few contrasting examples are discussed below for a clearer picture:

  • In 2010, German toy maker Steiff, applied for a trade mark registration based on the position of a metal button along with a yellow flag with their logo, fixated on the ear of their teddy bears. The Office for Harmonization in the Internal Market (OHIM) of the EUIPO, while rejecting Steiff’s application, put forth that the yellow flag along with a metal button is ‘devoid of any distinctive character’ and hence is not sufficient to indicate the ‘commercial origin’ of the toys. Pictorial representations of Steiff’s teddy bear are as below:
  • In 2011, the OHIM while rejecting the application of Austrian shoe company, Think Schuhwerk, ruled that red-tip shoelaces are not sufficiently distinctive to be accepted for registration as a position trade mark. A graphical representation of Schuhwerk’s red-tip shoelaces is as below:
  • In 2013, the European Court of Justice (ECJ) adopted a more liberal approach to adjudge upon the distinctiveness of a position mark while deciding the infringement case filed by Levi Strauss against Colloseum Holding. Levi’s is already the registered proprietor of a composite trademark of their ‘red tab label’ placed along the pockets of various denim goods, along with the brand name. Colloseum Holding also started manufacturing jeans with a similar red label placed in the same way, but with their own brand name. Levi’s filed the trademark infringement case based on the same. The ECJ opined that ‘red label constitutes an integral part of the Levi’s brand, even though it is not used separately’. Pictorial representations of Levi’s red tab label are as below:
  • In 2018, the ECJ ruled that the famous red-sole of Christian Louboutin’s high heeled women’s shoes is in fact a position mark. The Judges put forth that ‘the mark does not relate to a specific shape of sole for high-heeled shoes since the description of that mark explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour covered by the registration.’ Pictorial representations of Christian Louboutin’s red-soled high heels are as below:

The aforementioned case studies only go on to prove how the topic of distinctiveness of a position trade mark is, more often than not, dependent on the discretion of judges and hence varies from one case to the other. It has been seen that courts are hesitant in accepting the possibility of ‘acquired distinctiveness’ of a position mark – however, that trend appears to be changing now. One of the longest legal battles based on position trademarks, which also sees the courts accepting the validity of the principle of ‘acquired distinctiveness’ is the case of Shoe Branding Europe BVBA v Adidas and OHIM.

This case is considered to be one of the landmark judgments in the sphere of unconventional trademarks and more specifically, of position trademarks. Adidas had filed an opposition against BVBA (a German shoe manufacturing company) claiming that the latter’s trademark application for ‘2 stripe design’, for footwear, (image 1) is ‘confusingly similar’ to Adidas’ prior registered and well-known ‘3 stripe design’ (image 2). Pictorial representations of the competing marks are as below:

The opposition panel of OHIM eventually decided that the two marks can be distinguished based on the difference in inclination/ spaces between the stripes. However, Adidas appealed against this decision before the EU General Court, which thereafter opined that the three stripes widely used by Adidas had in fact acquired distinctiveness, and hence, BVBA’s two stripe design would most definitely adversely impact Adidas’ reputation. Continuing with the long string of appeals, BVBA appealed before the Court of Justice of the European Union, although in vain. BVBA was relentless and was determined to defeat Adidas to uphold their rights. Going forward, BVBA filed an independent suit before the EUIPO challenging the registrability of Adidas’ 3 stripe mark, claiming that the same lacked distinctiveness and the characteristics of a source identifier. BVBA managed to win the case after all, wherein Adidas’ 3 stripe mark was ruled to be an ‘ordinary figurative mark’ and not a distinctive pattern. Adidas was unable to establish that they had acquired distinctiveness across all the countries of the European Union, and hence, their registration of the 3 stripe mark was cancelled in 2019.

Although the concept of position trademark is well-established and still growing, it is still in its nascent stage in India. From the aforementioned cases we notice how the EUIPO has been able to explore multiple aspects of a position trademark and the legal ambit of unconventional trademarks is broadening with every passing case.

contact BIAT Legal LLP for any Trademark related query.

Caught in the Cross Hairs of WIPO and Indian Trademark Office

By changing time registration and timelines for Trademark registration has also evolved. After the Trademark amendment, 2017, the registration and timelines of Trademark has become stricter and quicker. We’ve all seen positive changes happening within the IP regime after the amendment, but still there’s lag in some areas like in the Application for Madrid Protocol. Its rules and laws should be more clearer.

Over the past years, we’ve experienced and seen a pool of chaos and therefore the incertitude, accompanying international applications designating India. While international Trademark application is treated within the same manner because of ordinary application in terms of scrutiny, requests for amendments create hassles for the applicant just because of the shortage of routine to file specific requests. Applicants and their agents are vexed by things where they pass things to the Trademark registry where amendment within the application is required.

The Indian Trademark Act is silent on where amendment is to be filed which is asked by the Trademark registry to file during the examination of the appliance . it’s uncommon for applicants to receive instructions from the Indian Trademark office to correct the technical errors to simply accept the applications. However, when an applicant wants to file those amendments which were asked by the Registry they either get unprocessed or declined by the Indian Trademark Office. This leaves the applicant with the sole choice to file an invitation with WPO, which is neither time or cost effective to the Applicant. It takes an extended time for the WIPO to process the requests and further inform the Indian Trademark office; to not forget the time taken by the Indian Trademark office to process an equivalent information and update the records stalling the registration process meanwhile.

For the higher clarity we’ve compiled an easy table to know which amendments are often filed with the TMO and which requests shall be required to be filed with WIPO.

Amendment typeRequest through WIPORequest to the TMO, India
Deletion/addition of specifications
Amendment of the classification
Deletion of the R symbol from the TrademarkRemains conflictedRemains conflicted
Deletion of Priority claim
Division of the ApplicationCannot be doneCannot be done
Change of name of the Applicant
Change of Applicant’s address
Change of Ownership

Can these amendments be filed through a web filing portal? For better clarity, cost effectiveness and efficiency, a system where amendments to international applications are often made locally through the web filing portal already available would be a viable option, especially for cases where the Indian Trademark Office has requested the amendment during the examination, which is extremely India centric and doesn’t concern other jurisdictions. This is able to not only make the lives of the applicants and their agents easier rather it might also speed up the method of filing and processing requests.

Contact BIAT Legal LLP for any Trademark related query. the team of the firm will assist you in a best way while getting your Trademark Registration.

Understanding the Scrutiny Report Or discrepancy Notice Issued by Trademark Office in India

Scrutiny Report or Discrepancy Notice

By filing a Trademark Application in the Registry, Registration of Trademark is being done. After registration if any changes are to be made, an application is given to the Trademark office. This application is to be given along with the supporting documents or forms to the Trademark office. If the Trademark office needs any additional clarification regarding the submitted documents then they issue a notice with the details of the deficiency. This notice is usually called a Scrutiny report of Discrepancy Notice that is issued to address services.

For eg. If someone has filed an application for Transfer of Trademark application, and if the registry wants more clarity in it then they will issue a discrepancy notice to the agent/ attorney of the applicant asking required documents on the same.

The Trademark Act, 1999 and the corresponding Trademark Rules, 2017 provides details and rules for the filing of an application to the Trademark office. After filing the applications, scrutiny takes place to check if they are as per the ac and rules. Upon finding any deficiencies regarding the compliance, the Trademark office issues the scrutiny report or discrepancy notice.

  • Instances of Scrutiny Report of Discrepancy Notice
  • Effects of Scrutiny Report or Discrepancy Notice

Instances of Scrutiny Report of Discrepancy Notice

There are several instances which provide for issuing of a scrutiny report or discrepancy notice. They are as follows-

  • Deficiency in Payment of the Fees for Forms

The Act prescribes filing applications to the Trademark office for various purposes like registration, transmission, assignment etc. the rules provide the list of applications along side fees to file before the Trademark office. The Trademark office issues discrepancy notice to the applicant upon finding any deficiency in payment of the fees prescribed for the appliance .

  • Assignment of Trademarks

Assignment of Trademark is done by the proprietor to another person. For assignment of Trademark an application along with NOC of the owner of Trademark is to be submitted to the Trademark registry along with required documents. When the registrar of Trademarks has doubts about the genuineness of these documents, he requires additional proof of such assignment. In such a case Trademark office issues a scrutiny report or discrepancy notice to the person to whom Trademark is assigned.

  • Transmission of Trademarks

When the transmission of Trademark takes place between one person to another, an application is filed before the Trademark office. This application is to be filed along with the required documents, if the Registrar of Trademark has any doubt pertaining to the correctness of the documents, he issues a scrutiny report or discrepancy notice to the person to whom Trademark is transmitted.

  • Alteration in Address or Goods in the Register

When the proprietor makes a change in the address of the proprietor in the application, then he has to move an application before the Registrar for the same. Upon satisfaction of the correctness of application, he shall change the address. If he requires any additional clarification or documents for an equivalent , he issues a scrutiny report or discrepancy notice to the proprietor.

Effects of scrutiny Report of Discrepancy Notice

The Trademark office can issue the notice at any stage where deficiencies arise. When a person receives the notice, he has to reply to it addressing the deficiency usually within 30 days of the receipt of notice. Responding to the notice within the time given in the notice is essential. If reply is not given in the prescribed period then the notice given may get rejected. If notice is received, it is advisable to consult an expert for assistance.

There are two very general questions that are being asked very often and they are as follows-

  • Is the issuance of the notice a mandatory stage of Trademark prosecution in India?

Scrutiny reports or discrepancy notices are not inevitable but are probable during the Trademark prosecution in India as any Trademark application is filed, if any deficiency is there in the application then scrutiny report or discrepancy notice is being issued.

  • Is it possible to get notice even after registration of the mark?

Yes, any application that is filed before the Trademark office is being scrutinized even after the registration of Trademark, and if any deficiency is found in the application, notice is being sent.

For eg. An application for change of proprietor address is being filed after the mark being registered, and if any deficiency is found according to the Trademark Act or rules, then scrutiny report or discrepancy notice will be issued to the proprietor.

Therefore it is always advisable to involve experts to avoid the risk of such notices to come. 

We at BIAT Legal LLP is a team of professionals who soothes or eases your Trademark registration without any hassle.