India: Practical application of legislation to enhance dispute resolution efficiency
In summary
This comprehensive study delves into the realm of trademark protection and enforcement in India, with the Trade Marks Act 1999 serving as the governing legislation for registration and enforcement. It explores the safeguarding of both registered and unregistered marks, the criteria for registration, enforcement mechanisms and recent developments. The analysis delves into the registration process, non-traditional trademark registration, trade dress protection, opposition proceedings, changes in ownership, cancellation and rectification, enforcement remedies, passing off for unregistered marks and recent initiatives.
Discussion points
- Trademark protection in India
- Criteria for trademark registration and registration process
- Non-traditional trademark registration
- Trade dress protection
- Trademark ownership changes and transfers
- Trademark cancellation or rectification
Referenced in this article
- Trade Marks Act 1999
- Trade Marks Rules 2017
- Emblems and Names (Prevention of Improper Use) Act 1950
- Intellectual Property Rights (Imported Goods) Enforcement Rules 2007
- Bharatiya Nyaya Sanhita 2023
Trademark protection in India
India’s intellectual property regime is governed by the Trade Marks Act 1999 and the Trade Marks Rules 2017, which provide a comprehensive mechanism for the registration and enforcement of trademark rights in India. The Indian trademark regime extends protection to both registered and unregistered marks. In the case of misuse of a registered mark, the right holder can initiate an infringement action against the infringing party. On the other hand, for unregistered marks, the right holder can seek protection under the law of passing off. To establish a claim for passing off, the plaintiff must showcase three ingredients: demonstrate established goodwill or reputation of their mark attached to relevant goods or services; prove misrepresentation by the defendant likely to deceive the public; and show damage suffered or likely to be suffered by the plaintiff.
Criteria for trademark registration (what can be and cannot be registered)
In India, a mark capable of being represented graphically and distinguishing the goods or services of one entity from others can be registered as a trademark.This includes various forms, such as devices, brands, headings, labels, tickets, names, signatures, words, letters, numerals, shapes of goods, packaging and a combination of colours. In India, unconventional trademarks, such as sound and motion marks, can also be registered.
However, certain types of marks cannot be registered in India. The following categories of marks are ineligible for registration:
- marks that lack distinctive character;
- descriptive marks that provide information about the goods or services, such as their quality, quantity or geographical origin, and cannot be registered;
- marks that have become customary in the current language;
- marks that cause confusion and deception;
- marks that are likely to hurt religious sentiments;
- marks that contain obscene or scandalous matter;
- marks that are prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950;
- marks that exclusively consist of the shape of goods resulting from the nature of the goods themselves or those necessary to obtain a technical result or give substantial value to the goods;
- marks identical or similar to earlier marks covering similar or identical goods and services, which may cause confusion and likelihood of association;
- marks identical or similar to well-known marks;
- marks that are prevented by copyright law; and
- marks that are protected by the law of passing off as unregistered trademarks, which cannot be used or registered by other parties as trademarks.
Trademark registration process
The application for trademark registration can be filed either online or offline with the Trade Marks Registry. After fulfilling the required procedural formalities, the application undergoes substantive examination on both absolute and relative grounds for refusal. If objections are raised, the applicant gets one month to respond after receiving the examination report. If the objections are maintained, a hearing is scheduled for presenting oral arguments. If the examiner is satisfied with the response or submissions made during the hearing, the mark is advertised in the Trade Marks Journal, and four months is allowed for third-party opposition. If the application is refused after the hearing, a review petition can be filed within one month of the date of the refusal order, or an appeal can be filed with the concerned high court within three months. If no opposition is filed during the publication period, the mark proceeds towards registration.
Non-traditional trademark registration
India also allows the registration of non-traditional trademarks, such as colour marks, motion or animated marks, sound marks and shape marks.
Registration of a combination of colours as a trademark can be applied by submitting a reproduction of the mark in colours with colour codes.
Where a mark contains a shape of the goods or its packaging or is a three-dimensional mark, the reproduction of the mark must contain different views of such trademark and a description of the nature of the mark in words. If the representation of the trademark provided by the applicant does not show all the features of the trademark clearly, the registrar may require up to five further views of the trademark.
For a sound mark, a sound recording must be submitted in MP3 format, not exceeding 30 seconds in length and recorded in a medium that allows easy and clear audible replay with a graphical representation of its notation.
For a motion mark, an appropriate representation of the mark clearly showing the motions must be filed.
Non-traditional trademarks are prosecuted and granted registration in the same manner as traditional trademarks.
Trade dress protection
Elements such as packaging design, colour combinations, product shape, texture, graphics and illustrations are collectively known as trade dress. These elements are safeguarded to mitigate misuse by other parties seeking to imitate the product’s overall appearance to capitalise on its established goodwill and reputation. Indian trademark law specifically has a provision for trade dress protection, including the shape of goods, packaging and colour combinations. To qualify for protection, the overall appearance of the product must be distinctive, either inherently or through acquired distinctiveness.
Rights holders often face the challenge of selecting the most appropriate IP legislation for safeguarding a particular shape. Generally, if the shape of a product is novel, original and undisclosed to the public, it should be protected through design registration. However, where the right holder has not registered the shape under design law, it may still be protected under trademark law or the common law tort of passing off if it has acquired distinctiveness through prolonged and continuous use. To successfully claim to pass off, the right holder must demonstrate that the specific shape has become distinctive of their goods or services, that customers recognise such shape with its business and that its use by others would confuse the public. Courts in India have recognised that unique packaging design, colour combinations, product shape, etc, are entitled to protection under the Trade Marks Act 1999, and common law rights of the owner remain.
Trademark ownership changes and transfers
Both registered and unregistered marks can be assigned and licensed in India. However, the licence can be recorded for registered marks only, and assignment can be recorded for both kinds. For recording a licence, the parties must file a recordal request within six months of the date of signing the agreement.
Trademarks are valid for 10 years from the application date and must be renewed every 10 years. Trademarks can be restored after six months and within one year of the date of expiration of the previous registration of the mark.
Additionally, it is recommended that the records for the name and address of the proprietor be updated with the Trade Marks Registry.
