Legal Framework

In India Trademarks are protected under Trademarks Act, 1999 and ancillary legislation incorporated under, for eg. Companies Act, 2013 and therefore the Customs Act, 1932.

These Acts and related rules prescribes the related procedures to be followed before the Trademark Registry.

The Indian courts have taken the lead in issuing landmark decisions on several issues, including recognition of trans-border reputation and goodwill, trademark violations in respect of unrelated goods, online counterfeiting and protection of celebrity rights.

Unregistered Marks

In India unregistered marks also are protected under tort of Passing off. Section 27 (2) of the Act provides protection of passing off. so as to urge this protection the plaintiff must prove following things-

  1. The trademarks are similar
  2. The defendant is deceptively passing off its goods as those of the plaintiff.
  3. There must be confusion within the minds of consumers.

Registered Marks

Section 29 and 30 of the Trademarks Act clearly leave an action supported infringement. Unlike passing off, in an infringement action there’s hardly any burden on the plaintiff since entitlement is already established through registration.

Procedures

  1. Searches- it’s vital to look for identical marks, phonetic equivalents and device marks on the web portal of IP India before Trademark application to scale back chances of objection to return from the registry side.
  2. Examination– the registrar examines the mark and should communicate to the applicant any objection thereto through a consolidated Examination report. The applicant may file a claim to contest or seek a hearing. If an application is accepted by the registry then it’s published during a journal by notifying an applicant.
  3. Opposition- Any person after publishing during a journal thinks that published mark is analogous to his, then he can raise opposition through notice of opposition within 4 months from the date of publishing.
  4. Registration– If the mark is unopposed or the opposition is dismissed, then it’ll proceed to registration. The applicant can withdraw the appliance at any time during the opposition proceedings. Section 91 of the Trademark Act provides for an appeal against an order or decision of the registrar to the IP Appellate Board (IPAB).
  5. Rectification/ Cancellation– Once granted, a rectification is often cancelled on the grounds that it had been wrongly granted or remains within the register contrary to the law or thanks to a failure to watch certain limitations or conditions imposed thereon. A registered mark also can be cancelled on the grounds of continuous non usage from 5 years three months from the date of grant of registration. A registered trademark is often cancelled by the registered owner on making an appropriate request to the relevant authority. The rectification action must be instituted by the aggrieved party. Partial cancellation surely goods and services are possible. The petitions are often filed with the trademark registry or the IPAB.

Enforcement

Damages and Other Reliefs

Earlier only remedy available for infringement of Trademark and spending off was injunction, but now applicants can claim for damages and compensation also as relief.

Customs Actions

The government has recognised the necessity for IP rights protection at its borders as a key defense against infringement. Under the property Rights (Imported Goods) Enforcement Rules, rights holders may register their IP rights with customs to safeguard themselves against imports of counterfeits.

Plea Bargaining

Nowadays in many cases IP infringement matters are being settled by way of plea bargain .

Cross Border Reputation

Nowadays courts have also recognised that a mark can acquire cross border reputation and goodwill without actual use in India.

Three Dimensional, Shape, Sound and Texture Mark

Three dimensional shape, sound marks and texture marks also are eligible for its registration.

Trade dress

The test of deceptive similarity appies during a passing off action regarding the trade dress of the merchandise . The party claiming the passing off of trade dress must prove that the trade dress has acquired secondary meaning or goodwill or reputation within the market in reference to the trade dress.

Consult BIAT Legal LLP for any Trademark related query.

Leave a comment

Your email address will not be published. Required fields are marked *