Intellectual Property Rights

Intellectual Property Rights (IPRs) in India

The importance of intellectual property is well established in India. India is a signatory to the agreement concluding the Uruguay Round of GATT negotiations and establishing the World Trade Organisation (WTO) and protection available under Trade Related Aspects of Intellectual Property Rights (TRIPS).

Trade Marks: A  law on Trade Marks has been passed by Parliament and notified in the gazette on 30.12.1999. This law repeals and replaces the earlier Trade & Merchandise Act, 1958.

Copyright: The Indian Copyright Act, 1957 as amended by Copyright (Amendment) Act, 1999, fully reflects the Berne Convention on Copyrights, to which India is a party. India is also party to the Geneva Convention for the Protection of rights of Producers of Phonograms and to the Universal Copyright Convention. India is also an active member of the World Intellectual Property Organisation (WIPO), Geneva and UNESCO. 

Several measures have been adopted to strengthen and streamline the enforcement of copyrights.

Patent: India had already implemented its obligations under Articles 70.8 and 70.9 of TRIP Agreement. A Bill on Patents to amend the Patents Act, 1970 was  introduced in Rajya Sabha on 20.12.1999 and the Bill  was passed by Parliament on 14.05.2002.  

Industrial Designs: Industrial designs refer to creative activity which result in the ornamental or formal appearance of a product and design right refers to a novel or original design that is accorded to the proprietor of a validly registered design. A  law called the Designs Act,2000 relating to Industrial Designs which repeals and replaces the earlier  Designs Act, 1911 has been passed by Parliament in its Budget Session, 2000. The Act has been brought into force from 11.05.2001. 

Geographical Indications: A new law for the protection of Geographical Indications, viz., the Geographical Indications of Goods (Registration and the Protection) Act, 1999 has been passed by the Parliament and notified on 30.12.1999.

Trade Marks and Service Marks services

Benefits of registering Trade Mark / Service Mark:

Registration of trade marks or service marks in India is optional. One can use a mark without registration. Protection for unregistered mark is under common law, i.e. by suit for passing off or action for criminal offence under section 103. These proceedings are cumbersome, expensive and outcome is uncertain. Registration is convenient way of establishing ownership to the mark. Some of the advantages of registering a mark (trade mark / service mark) with Indian Trade Marks Registry (TMR) are summarised below:

• Registration of a Trademark is perhaps the most important measure for protection of intellectual property of any company. Without registration of a trademark, a company relies solely upon common law rights (i.e. rights arise from actual use of a mark) in the geographic area in which it uses the trademark.

• Most significantly, without registration, one runs a risk that a latecomer may register a mark identical or similar to the company’s mark. Consequently the registration of a mark by another user (latecomer) may block the expansion of the company’s use of its trademark in other areas or may block the company’s subsequent attempt to register its trademark. These problems can be avoided with early registration.

• If the company had registered its mark prior to the other user (latecomer), the TMR would have denied the other’s same or confusingly similar trademark. In addition, the company would always have rights superior to the latecomer, and would not be blocked in its expansion plans.

• In addition to the above, trademark registration benefits include:
  
  
  • the exclusive right to use the mark. However it is subject to any conditions entered on the register such as limitation of area of use etc. Also, where two or more persons have registered identical or nearly similar mark due to special circumstances such exclusive right does not operate against each other;
  
  
  • evidence of ownership;
  
  
  • provides constructive notice of the registration, and defeats a claim that an infringer did not know that the company’s trademark was registered;
  
  
  • in the event of misuse of trademark, establishes jurisdiction to file a trademark infringement action (suit) at registered owner's place of business,
  
  
  • provides the basis for claiming damages;
  
  
  • the presumptive right can become incontestable with use of the mark within five years and one month;
  
  
  • other companies that conduct a trademark search prior to adopting a trademark would most likely NOT adopt a mark closely the same or similar to the company’s trademark;
  
  
  • can be the basis for the seizure of counterfeit or infringing merchandise
  
  
  • registration may be filed with Customs Authorities to prevent importation of infringing foreign goods; and
  
  
  • for those companies that wish to expand internationally, the date of registration may be used as the priority date in other countries, if they are a member of an international treaty, such as the Paris Convention.

Until a trade mark is registered it can be designated by ^TM and upon registration indicate so by using the symbol ® in relation to the goods. In respect of services, a mark is designated by ^SM until registered and upon registration indicate so by using the symbol ® in relation to the services.

How do I register my Trade Mark / Service Mark in India?

P. K. Pandya & Co. is a registered trade mark agent of the Indian Trade Marks Registry. Registration of trade marks / service marks is one of the important protections that businesses should avail in India. Many foreign and domestic applicants have been able to successfully register their marks in India. Indian courts have, from time to time, upheld many of those registrations and granted favorable decisions to rights holders.

In addition to the registering of their marks in India, businesses need to adopt suitable strategies for protecting their trade marks / service marks. We provide services in adopting suitable strategies and implementing the same. Some of them could be as under:

• Get trade marks / service marks searches conducted in the Indian Trade Marks Registry in the classes that are of interest to you including the ancillary classes.

• Get common law searches (this includes the internet, market surveys, yellow pages and directories) conducted to ascertain whether third parties are using your trade marks / service marks and if so, the extent of such use. Also search for Domain names, whether registered and who is the owner of domain names.

• Based on these information and after seeking the counsel’s opinion decide if the trademark is available for use or not.

• If the trade marks /service marks be available for use, apply for the registration.

• As legal owner of trade marks /service marks, also register domain names including country coded top level domain names in India. There have been many instances of third parties registering domain names for certain well known marks with the intention of extracting money by selling these domain names to the rights holders.

• If you own trade marks /service marks that are used and acquired goodwill and reputation, it is advisable that along with filing of the trade marks / service marks application in India, also make press releases, publish cautionary notices and advertise the marks to ensure that the relevant section of the public is aware that you are entering the Indian market and are protecting your trade marks / service marks from any kind of third party violation.

• Also consider hiring our 'watching service' to monitor the trade marks /service marks journals in order to alert you to any published, deceptively similar trade marks /service marks or descriptive trade marks / service marks that might be of concern.

• If you discover that your trade marks /service marks is being infringed, take immediate steps to protect your trade marks /service marks, either by the means of filing oppositions, cancellations, rectification of registered mark, conducting investigations, sending cease and desist notices or initiating appropriate civil and criminal actions.

For further questions / discussion you may leave your comments or contact us.