News Archive (40)Sep 30, 2024 (Newsletter Issue 9/24)
Establishment of IP Rights Division at the High Court of Calcutta
The High Court of Calcutta has set up the Intellectual Property Rights Division (IPRD) and the Intellectual Property Rights Appellate Division (IPRAD), effective from September 20, 2024.
The IPRD handles all IP disputes (trademarks, copyrights, patents, etc.) with specialized judges and will also take over cases from the dissolved IPAB.
The IPRAD reviews IPRD decisions with a two-judge bench for appeals and matters requiring Division Bench consideration.
Key Updates:
- Transferred IPAB Cases: Renumbered and assigned to IPRD.
- Faster Case Resolutions: Weekly listings and new timelines for quicker outcomes.
- Filing Process: Electronic submissions with prompt correction of errors.
- Fast-Track & Summary Judgments: Available for eligible cases under the Commercial Courts Act.
What’s the Impact?
This reform will lead to faster and more efficient handling of IP disputes by specialized judges at the Calcutta High Court. Similar divisions in Delhi and Madras have already delivered positive outcomes.
Source: www.anandandanand.com
Sep 14, 2023 (Newsletter Issue 7/23)
Limited Functionality of E-Register and TM Public Search
Due to the increased load on the TM application and database servers, the core
functions of the TM Registry are affected. Until an upgrade of hardware and software
are completed, the TM public search and E-register will not be available from 10 a.m.
to 4:30 p.m. with effect from September 14, 2023, on all working days.
Source: www.ipindia.gov.in
May 01, 2023 (Newsletter Issue 5/23)
Restoration of Abandoned Applications & Oppositions
On April 21, 2023, the Indian Controller General of Patent, Design and Trade Marks (office) issued a public notice to announce the withdrawal of two notices issued on 6 February 2023 and another two notices issued on 27 March 2023, which called for a mass abandonment of pending trademark applications that did not meet the office’s specified deadlines.
This was done to comply with a decision of the High Court of Delhi, India, from April 13, 2023.
Source: https://ipindia.gov.in/writereaddata/Portal/News/888_1_Public_Notice_dated_-21-04-2023.pdf
Jan 12, 2023 (Newsletter Issue 1/23)Open Conference to Discuss Complaints / Suggestions on IPR IssuesOn 13 December 2022, the Indian Trademark Office, Controller General of Patents, Designs & Trade Marks (CGPDTM) announced in a public notice that it will conduct an open house to discuss complaints and suggestions on IPR issues.
The open house discussion will be a public forum held online via the Webex platform every Friday working day from 4.00 pm to 5.30 pm. All participating practitioners must submit their questions to allow sufficient time for resolution. Practitioners can join the discussion by clicking on the following link here, which remains the same every Friday.
For more information, please see hereSource: www.ipindia.gov.in Apr 21, 2022 (Newsletter Issue 5/22)Trademark Office Accepts Oppositions until End of May 2022On March 28, 2022, the Indian Trademark Office, Controller General of Patents, Designs & Trade Marks (CGPDTM), published a public notice allowing any third party to file oppositions against trademarks applications published between November 18, 2019, and January 24, 2022, in the Trade Mark Journal until May 30, 2022, regardless of the current status of the contested application.
This follows the ruling of the High Court in Dehli Order dated March 21, 2022, in the case of Dr. Reddys Laboratories Limited & Anr v. Controller General of Patents Designs and Trademarks, W.P. (C)-IPD 4/2022 & CM 27/2022, wherein the Court issued the following directions:
1. The time limit for filing oppositions against trademarks whose opposition period would have expired after March 15, 2020, shall be extended until May 30, 2022;
2. Registration certificates for trademark applications against which no oppositions have been filed or received until May 30, 2022, shall remain valid; and
3. Registration certificates for trademark applications against which oppositions have already been filed or are filed by May 30, 2022, shall either not be issued or, if already issued, shall stand suspended until the Trademark Office decides the oppositions.
For more information, please see here and here
Source: S. S. Rana & Co., India; ZeusIP Advocates LLP (published at www.inta.org on April 20, 2022) Apr 22, 2021 (Newsletter Issue 8/21)IP Appellate Board AbolishedOn April 4, 2021, the Ministry of Law and Justice has issued an Ordinance, namely The Tribunals Reforms (Rationalization and Conditions of Service) Ordinance 2021 (Ordinance) to further amend the Trademarks Act (1999), the Copyrights Act (1957), the Geographical Indication of Goods (Registration and Protection) Act (1999) and the Patents Act (1970) as well as the Protection of Plant Varieties and Farmers Rights’ Act (2001). The Ordinance came into effect from April 4, 2021.
Some of the important changes to the Trademarks Act (1999) are the following:
- All references to the Intellectual Property Appellate Board (IPAB) in the Act has been omitted. Therefore, the IPAB ceases to have any jurisdiction, power or authority under the Act.
- Any proceedings for cancellation of a mark on the ground of non-use under Section 47 of the Act shall now lie at the Registrar or the High Court only.
- Any proceedings for rectification of a mark under Section 57 of the Act shall now lie at the Registrar or the High Court only.
- All appeals under Section 91 of the Act shall lie at the High Court instead of at the IPAB.
- An action for infringement of trademark shall be stayed under Section 124 of the Act if a defendant pleads invalidity of the mark or raises a defense under Section 30(2)(e) of the Act and the plaintiff pleads invalidity of the defendant’s mark, if rectification proceedings are pending before the Registrar or the High Court in respect of such mark, prior to institution of action for infringement.
- All proceedings pending before the IPAB shall be transferred to the High Court.
For further information, please check here and here
Source: Krishna & Saurastri Associates LLP and S. S. Rana & Co. Mar 25, 2021 (Newsletter Issue 6/21)
IP Appellate Board Endangered
On February 11, 2021, the Ministry of State Finance submitted the bill titled “The Tribunals Reforms (Rationalisation and Conditions of Service) Bill, 2021”. This bill will reform the tribunal structure system and will endanger the continuation of the Intellectual Property Appellate Board (IPAB).
In 2003, the IPAB was constituted by the Indian Government to hear and resolve the appeals against the decisions of the registrar under the Indian Trademarks Act, 1999 and the Geographical Indications of Goods (Registration and Protection) Act, 1999. Later in 2007, the IPAB has been authorized to hear and adjudicate upon the appeals from most of the decisions, orders or directions made by the Patent Controller under the Patents Act.
Should the bill pass through, the competencies of IPAB will be taken over by the commercial and high courts of the country.
Source: www.intellectual-property-helpdesk.ec.europa.eu
Feb 11, 2021 (Newsletter Issue 3/21)Designs (Amendment) Rules 2021 IssuedOn January 25, 2021, the Government of India issued a gazette notification to formalize and introduce the Designs (Amendment) Rules, 2021 and came into force with effect of the same date.
Some of the key amendments are the following:
- Adoption of latest Locarno Classification
- Introduction and definition of start-ups
- Revised fees and relief for natural persons, start-ups, and small entities
For further information, please check the article of our Country Index Partner, the law firm Chadha & Chadha IP here
Source: Chadha & Chadha IP, India Jun 06, 2019 (Newsletter Issue 7/19)IP Office Will Not Accept Division or Merger of Request of Intl. RegistrationThe Government of India has notified the Director General of WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which entered into force on February 1, 2019.
As a result, the Office of India will not present to the International Bureau of WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to Information Notice No. 46/2019Source: www.wipo.int Mar 15, 2018 (Newsletter Issue 5/18)Extracts of Register of Copyrights via EmailOn February 1, 2018, the Copyright Office has published its decision to transmit the Extracts of Register of Copyrights to all the registered users through email to enhance efficiency. This arrangement is in-addition to the current practice of transmission of Extracts of Register of Copyrights through post. The arrangement has immediate effect.
See the official notice here
Source: S. S. Rana & Co., India Jun 28, 2017 (Newsletter Issue 12/17)Guidelines for Filing Well-Known TM Applications The new Trade Mark Rules, 2017, empowered the Registry to declare a mark as well-known if any applicant or proprietor is interested. On May 22, 2017, the Office of the Controller General of Patent, Designs and Trademarks released a checklist for filing a well-known trademark.
In case the mark is determined as well-known, the same will be notified in the Trade Marks Journal and included in the list of well-known trademarks made available on the official website.
Before determining a trademark as well-known, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objection.
Nonetheless, the Registrar may, at any time remove the trademark from the list of well-known marks after giving an opportunity of hearing to the concerned party if it is found that a trademark has been erroneously or inadvertently included in the said list.
For further information on the checklist, please click here
Source: S. S. Rana & Co., India Mar 14, 2017 (Newsletter Issue 5/17)New Trade Mark Rules IntroducedThe New Trade Mark Rules have been published and came into force with effect of March 6, 2017. The most important amendments can be seen following:
- Fee increase: The fees for filing and prosecution has been increased by almost two-folds for certain matters. The official fee for filing a trademark application is now INR 10,000 instead of INR 4,000 previously. Start-ups receive discounts on the statutory fees.
- E-filing is promoted: The fee for filing a trademark application electronically is now INR 9,000.
- E-mail communication encouraged: The mode of communication by the Registry specifically includes electronic mail.
- Withdrawal of agent: Withdrawal of an agent in an application now requires the applicant to provide a new address for service within two months from the date of such withdrawal. Failure of such change in address will result in abandonment of the application.
- Documents showing use: Where use is claimed in an application, affidavit testifying use is required to be filed with supporting documents.
- Expedited registration: Expedited procedure now extends up till registration and is not limited to expedited examination.
- Extension for evidence removed: The extension of one month permissible while filing evidence in support of opposition and application by the opponent and the applicant respectively has been removed and is now non-extendable.
- Faster filing of counter statement: If the notice of opposition is obtained electronically, a counter statement can be filed without the same being served by the learned Registrar.
- Register of well-known marks: The Registrar can now determine whether a mark is well known or not after receiving a request of such from an interested proprietor on payment of INR 1,00,000.
- Cut of trademark application forms: The forms have been cut from 74 to 8.
For more information, please see the notification here
Source: S. S. Rana & Co., India Feb 22, 2017 (Newsletter Issue 4/17)Pending Applications for Clarification ReleasedThe Office of the Controller General of Patents, Designs and Trademarks in India announced that the Office has reduced the Pendency in Examination of applications filed for the registration of a trademark to less than a month, by virtue of which applications filed in January 2017 are already in the process of examination. However, the Office has identified a list of applications that were filed before December 2016, and were not taken up for examination because of lack of complete documentation.
The list of applications that have been released by the Office can be found here
It should be noted that the applications are categorized into two groups:
- Group I: Due to incomplete digitization
- Group II: Due to formality check fail during examination and non-compliance with office direction
The Controller has directed all applicants or their agents whose application is falling in Group I to email the brief details of the application at pendingexam.tmr@nic.in, and those that are falling in Group II to take notice of non-compliance and resolve the same at the earliest.
Source: S. S. Rana & Co., India Sep 13, 2016 (Newsletter Issue 16/16)Automated Issuance of Trademark Registration CertificatesThe Indian Trade Marks Registry announced in a notice that it implements an automated process for generation and issuance of trademark registration certificates.
Accordingly, from August 1, 2016, the registration certificates will be generated through an automated system in accordance with the relevant provisions of the Trade Marks Act & Rules and made available to the applicants concerned or their authorised agents on record, in respect of all trademark applications:
- which have been published in the Trade Marks Journal Number 1720 dated November 23, 2015, and thereafter,
- where no request for amendment filed on behalf of the applicant is pending for disposal,
- where the copy of original application for registration is available in the Trade Marks Registry’s electronic database,
- where no requirement (like fee, Power of Attorney, etc.) is pending for compliance on part of the applicant , and
- which have not been specifically prohibited for registration by the order of any court, IPAB or any competent authority.
The Registration certificate will be transmitted to the applicant concerned or his authorised agent on record on his email and shall also be made available on the official website www.ipindia.nic.in along with status of the application concerned.
Cases which are left out by the automated registration process due to aforesaid reasons will be processed as per law by the Registration wing of the Examination Publication and Registration Section of the TMR Mumbai through the present Trade Marks System on case to case basis.
Source: www.ipindia.nic.in Jul 25, 2016 (Newsletter Issue 14/16)Final Opportunity Before Abandoning TM ApplicationsThe Indian Trademarks Registry had dispatched a total of 13,062 examination reports containing objections under sections 9 (Absolute Grounds for Refusal of Registration), 11 (Relative Grounds for Refusal of Registration) and other relevant sections of the Trademarks Act, 1999 during the month of March and April 2016.
On July 11, 2016, the Office informed that it has received only 3,484 replies. Although, the prescribed time to reply the examination reports of the remaining 9,578 applications has been lapsed, the Office has extended that time up to July 31, 2016. If no reply is received on or before July 31, 2016, the application would be deemed as abandoned. The Office offers applicants and authorised agents that they can send a scanned copy of reply to the examination report to the email address parm.tmr@nic.in
A list of concerned applications can be seen in the Trade Mark Journal No. 1753 dated July 11, 2016 from pages 7,100 to 7,276 or here
For more information on the notice, please click here
Source: S. S. Rana & Co., India Apr 20, 2016 (Newsletter Issue 7/16)Deadline for Submitting Evidence on Erroneous Abandonment of TrademarksIn March 2016, the Indian Trade Marks Registry announced that numerous trademark applications had been abandoned for non-filing of response to the examination report. Subsequently, there had been a lot of turmoil and numerous complaints were received by the Office in this regard.
Taking note of such complaints the Registrar issued a Public Notice on April 4, 2016. The Controller General assured that appropriate measures shall be taken to reinstate applications and oppositions which were erroneously abandoned.
The respective applicants or their authorised agents concerned are requested to submit representations containing relevant details and sufficient documentary evidence substantiating their case until April 30, 2016.
For further information, please see the public note here
Source: S. S. Rana & Co., India and www.agip.com Dec 08, 2015 (Newsletter Issue 19/15)Draft on Trade Mark (Amendment) Rules IssuedThe Indian Ministry of Commerce and Industry (MCI) has recently issued the draft Trade Mark (Amendment) Rules. The MCI has invited comments from the IP fraternity and general public before finalizing the said amendments to the Trade Mark Rules, 2002. Some of the key highlights of the proposed amendments are listed below.
- Increase of official trademark fees
- Inclusion in well known marks list
- Requirement of statement of use
- Expedited examination process
- Expedited opposition process
- Consolidation of forms
- and more
For further information please check the article of our Country Index partner Chadha & Chadha IP here
Source: Chadha & Chadha IP, India
Sep 15, 2015 (Newsletter Issue 14/15)Clarification on Designs Act/Public Notice for AgentsOn August 20, 2015, the Indian Patent Office published on its website clarification regarding Section 5(3) of the Designs Act, 2002 and a public notice for Trade Marks Agent Exam-2015.
For further information, please check the clarification regarding Section 5(3) of the Designs Act, 2002 here and the public notice for Trade Marks Agent Exam-2015 here
Source: www.ipindia.nic.in Apr 15, 2015 (Newsletter Issue 6/15)E-Filing of Design Applications AcceptedThe Controller General of Patents, Designs and Trade Marks in India issued the following statement regarding the e-filing of design applications in the country:
In order to expand the paperless environment and ease access in all offices under the Controller General of Patents, Designs and Trade Marks, electronic filing system has been extended for the filing of new applications of designs.
All the applicants/stakeholders can now file design applications through the official portal of Controller General of Patents, Designs and Trade Marks at www.ipindia.gov.in and www.ipindia.nic.in.
The e-filing facility includes the comprehensive payment gateway comprising net banking, debit cards, ATM cards and credit cards. The users can also use their existing digital signatures (used in patents or trademarks) for login and authentication into the e-filing system of design.
Source: www.agip.com Mar 18, 2015 (Newsletter Issue 4/15)New Interface to Access IPO’s InformationOn January 1, 2015, the Indian Patent Office has launched a new interface to its website, which enables users to access legal texts, official publications and searchable information for trademarks, designs and patents all from one page. This new guide named Explore IPINDIA is available in a dedicated section of the Indian Patent Office's website.
Source: www.epo.org Jan 13, 2015 (Newsletter Issue 1/15)Indian Design Act AmendedOn January 1, 2015, the Indian Patent Office (IPO) published a notice regarding the amendment in Design Rules which has been effective from December 30, 2014. The said rules are available on the official website of Department of Industrial Policy and Promotion (DIPP) and Controller General of Patents, Designs and Trade Marks.
According to the amended Act, a revised fee structure has been provided for filing of design application as well as other proceedings under the Designs Act.
Further, two main categories of applicants for designs have been introduced as 'natural person' and 'other than natural persons(s). This has been further categorized into 'small entity'; and 'others except small entity'.
For more information, please click here
Source: S. S. Rana & Co., India Sep 02, 2014 (Newsletter Issue 13/14)Official Fees IncreasedThe Controller General of Patents, Designs and Trade Marks (CGPDTM) has issued a public notice informing that the official fee has been increased with effect from 1 August 2014:
1. An application to register a trade mark in one class has been increased from INR 3,500 to INR 4,000
2. Application to expedite examination of a mark has been increased to INR 20,000.
Receipt in deficiency of fees after 30 Spetemper 2014 shall result in shifting of actual date of filing the application to the date of payment of deficiency in fees.
The said notice can be accessed at the following website here
Source: S. S. Rana & Co., India
Mar 04, 2014 (Newsletter Issue 4/14)Opposition Period ChangedAs per the Trade Marks (Amendment) Act, 2010 which came into force on July 8, 2013, the time for filing notice of opposition from the date of publication of the advertisement in the Trade marks Journal is now four months (as against three months with an extended period of one month) and no further extension of time beyond four months is permissible.
Source: S. S. Rana & Co., India Feb 18, 2014 (Newsletter Issue 3/14)E-Filing System EnhancedThe Office of Controller General of Patents, Designs and Trademarks (CGPDTM) has announced that the Trade Mark Registry has further developed the system.
The online filing services will in addition to online filing of new trademark applications, now also include subsequent filings. The new service will include e-filing facility relating to renewals, oppositions, corrections, duplicate registration certificates, legal certificates and NOC for copyright.
Further, the Trade Mark Registry has launched the facility of online tracking of requests for issuance of legal certificates and availability of trade mark indexes of registered marks, pending marks and index of the name of the proprietors of registered trade marks.
For access the notice, please click here
Source: www.ipindia.nic.in Dec 17, 2013 (Newsletter Issue 18/13)Classification Goods and Services PublishedThe Indian Registrar of Trade Marks has announced the publication of the classification goods and services under Section 8(1) of Trade Marks Act, 1999 for the purpose of Registration of Trademarks on 29 November 2013.
Please check the Public Notice and Classification of Goods and Services for more information.
Source: www.ipindia.nic.in Jul 01, 2013 (Newsletter Issue 10/13)
Licence Recordal of IR
India has notified the Director General of the World Intellectual Property Organization (WIPO) that the recording of licenses in the International Register shall have no effect in India.
A license relating to an international registration of a mark which has been granted with respect to India shall, in order to have effect in that country, be recorded in the national Register of the Office of India. The formalities required for such recording must be completed directly with the Office of India and according to the conditions laid down by the legislation of that Contracting Party.
The notification enters into force on the date of entry into force of the Madrid Protocol with respect to India, namely, July 8, 2013.
Source: www.wipo.int
Apr 15, 2013 (Newsletter Issue 5/13)Accession to Madrid ProtocolIndia has submitted the instrument of accession to the Madrid Protocol for the International Registration of Marks at WIPO on April 8, 2013. The treaty will enter into force with respect to India on July 8, 2013.
India is the 14th of the G-20 economies to accede to the Madrid Protocol. As of now there are 90 members of the international trademark system. Colombia, Mexico, New Zealand and Philippines are the other countries who have recently acceded to the Protocol System.
Administered by WIPO, an international registration under the Madrid System produces the same effects as an application for registration of the mark in each of the contracting parties designated by the applicant. The trademark owner may thus protect a mark in all member countries (including the European Union with its Community Trade Mark (CTM)) by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs).
However before seeking international protection, the applicants are required to apply for trademark protection in a relevant national or regional trademark office.
Source: S. S. Rana & Co., India Dec 04, 2012 (Newsletter Issue 18/12)Notification on Disposal of Opposition/RectificationThe Office of Controller General of Patents, Designs and Trademarks (CGPDTM) has recently issued a notification directing the trademark office to initiate a special drive for disposal of those opposition/rectification matters where the opponents/applicants have withdrawn their oppositions/applications respectively either 'suo-moto' or on the basis of settlement between parties to the proceedings. This would also include cases where application seeking rectification of the Register of trademarks by cancellation or variation of registered trademarks were filed but were later withdrawn.
The applicants, opponents and agents are also directed to communicate information about their request along with details about the case numbers, date of request, etc. to the concerned TMR branch offices latest by November 30, 2012.
The Section in charge of the Tribunal Section of the all offices of the Trade Marks Registry shall then segregate the opposition and rectification matters and thereafter put up relevant files/records of the cases to the designated officers on the dates scheduled for their disposal.
The cases will be taken up for disposal as follows:
Date Matters
17.12.2012 Opposition matters relating to applications bearing No. 0000001 to
0500000
18.12.2012 Opposition matters relating to applications bearing No. 0500001 to
0900000
19.12.2012 Opposition matters relating to applications bearing No. 0900001 to
1200000
20.12.2012 Opposition matters relating to applications bearing No. 1200001 to
1600000
21.12.2012 All the rectification matters
During the period of disposal of cases all the Deputy Registrar, Assistant Registrar and
Senior Examiners of Trade Marks of the concerned office are also directed to exclusively take up and dispose the cases on the basis of letter or willingness of withdrawal of the trademark application/ opposition as the case may be, and the comments of the opposite party on the said withdrawal. The hearing officer will issue a final order in the opposition/rectification matter in case of genuine withdrawal by competent or authorized person and consent of such person on behalf of the opposite party to the proceedings.
The concerned parties or their duly authorized agents are therefore requested to appear before the nominated officer of the appropriate office at a scheduled date as no separate hearing notice will be issued in such cases. They are further directed to bring the authentic copies of the following documents at the time of their appearance at the Trade Marks Registry:
- Withdrawal letter
- Letter from the other party consenting to withdrawal
- Latest PA/GPA
- Settlement deed
- Request for amendment along with the fee receipt
The notification can be accessed from the Trade Mark Registry’s office here
Source: S. S. Rana & Co., India Sep 02, 2012 (Newsletter Issue 13/12)Suggestions for Classifications of Goods & ServicesThe Indian Trademark Registry invites suggestions for publication of Classification of Goods and Services issued in a notification on August 16, 2012.
The Registrar of Trade Marks has proposed to publish the classification of goods and services for the purpose of registration of trademarks, under the provision of Section 7 and Section 8 of the Trade Marks Act 1999.
The Registrar shall classify goods and services, as far as possible, in accordance with the International system of classification of trade marks and the Registrar may publish in the prescribed manner an alphabetical index of such classification.
The Registry intends to include the goods and services of the Indian origin which is not mentioned in the Nice Classification, the international system of classification of goods and services which is currently being followed by the Trademark Registry. It has therefore invited suggestions of all the stakeholders including advocates, agents and general public and has requested to point out the goods and services of Indian origin as well as the relevant class for such goods.
Suggestions may be submitted in MS excel format to cgoffice-mh@nic.in with a copy marked to ra.tiwari@nic.in before September 16, 2012.
To access the notification, please click here
Source: S. S. Rana & Co., India May 29, 2012 (Newsletter Issue 9/12)
First Compulsory License
In a much-awaited decision the Indian Patent Office issued its first compulsory licensing order relating to generic drugs.
On March 9, 2012, the Indian Patent Office allowed Natco Pharma Ltd, an Indian generic drug manufacturer to manufacture and sell generic version of a blockbuster cancer drug patented by the German Bayer Corp, thus invoking the compulsory license provisions of the Patents Act. The Patent Controller held that the the drug was exorbitantly priced, which conflicts with public requirements because the medicine was not affordable for many of them. While granting the compulsory license to Natco, the Patent Controller imposed certain conditions. This included that the price of the drug shall not exceed a certain amount for a month’s treatment, and that the licence is non-exclusive and non-assignable. In addition, Natco must pay royalty on net sales, manufacture on its own and sell only in India, and supply the drug free of cost to a certain amount of needy and deserving patients each year. Bayer has appealed against the order before Intellectual Property Appellate Board (IPAB).
Source: Lex Orbis IP Practice, India
Feb 21, 2012 (Newsletter Issue 3/12)List of INNs PublishedThe Indian Controller General of Patents, Designs and Trade Marks (CGPDTM) has published the list of International Non-Proprietary Names (INNs) as declared by the World Health Organization (WHO).
More than pharmaceutical substances are mentioned as INNs in the said list. The Trademarks Act, Section 13 provides that international non-proprietary names declared by WHO or deceptively similar names shall not be registered as trademarks. As a high number of Indian applications has been filed in Class 5 (for goods relating to medicinal, pharmaceuticals, veterinary instruments/ apparatus, etc.), the list is expected to help the agents and applicants to assess their application prior to filing for trademark registration and to obviate expensive litigation dispute later on.
It is yet to be seen whether already registered marks, like Ofloxacin, Lactulose or Retinol, that are mentioned as INNs in the aforementioned list will be canceled suo moto by the Registry.
To access the list, please click here
Source: S. S. Rana & Co., New Delhi, India,
Chadha & Chadha, IP, New Delhi, India Jan 23, 2012 (Newsletter Issue 1/12)Info Required on TM ApplicationsThe Controller General of Patents Design and Trademarks (CGPDTM) has issued a public notice regarding the recurrent deficiencies in the trademark applications received by the Registry.
The notice specifically mentions that trademark applications would not be processed unless following information is provided:
- The actual description of goods/services in which the trademark is proposed to be used/has been used;
- Names of proprietors in case of proprietorship firm, all partners in case of partnership firm, managing trustee in case of Trust and person representing the society in case of Society;
- The actual date, month and the year to be given in case of “User”
- Translation/transliteration of the trademark in case of Non-English / Hindi characters appearing in the mark;
- The marks should also be clearly visible on the application.
Applicants/Agents are also directed to refrain from using terms like "all goods/ services", "etc", "all other goods/ services in the application.
To access the public notice, please click here
Source: S. S. Rana & Co., New Delhi, India Nov 08, 2011 (Newsletter Issue 13/11)E-Filing Soon AvailableThe Indian Trademark Office is planning to introduce online filing of documents in the coming months if the proposal of the Indian Government to amend the Indian Trade Mark Rules, 2002 will be accepted.
The amendments would enable
a) Trademark owners and attorneys to file a new trademark application, renewal, response to examination report, notice of opposition, other forms and other documents electronically.
Affidavits are exceptions which still need to be filed in paper.
Furthhermore, if a trademark owner without an authentication is filing documents electronically needs also to file the documents in paper (triplicate) with the trademark office within 15 days from the date of electronic filing.
b) The trademark office can communicate to the applicant or the attorney on record electronically. The date of the communication by the trade mark office is deemed to be the date of dispatch of the electronic communication duly authenticated. In the event of any delay in receipt of the communication by the trademark owner or the attorney, the amendment provides for such delay only, being condoned by the Registrar when a petition to condone the delay is filed with supporting evidence.
The notification was published in the gazette and is open to objections up to November 26, 2011 and can be accessed here
Source: Selvam & Selvam, India May 06, 2011 (Newsletter Issue 7/11)Reconstitution of Misplaced FilesThe Indian Trademark Office (TMO) has announced that a total of 44,404 files relating to registered trademarks are missing from different branches of the TMO.
Registered proprietors are requested to provide duplicate copies of the documents issued by the TMO and other relevant documentation that may assist in reconstitution of the files before July 31st, 2011.
To access branch wise missing files list please click here
Source: Patrick Mirandah PMC Affiliate Office, India Feb 01, 2011 (Newsletter Issue 2/11)Major Changes to Official Fees and TM SearchesMajor changes with respect to official fees and trade mark searches:
Increase of official fees
The official fees for filing a trade mark application in a single class has been increased from INR 2,500 (approximately USD 55) to INR 3,500 (approximately USD 78), with effect from December 29th, 2010. For TM applications filed between December 29th, 2010 and the public announcement of the Notice on January 13th, 2011, an additional fee of INR 1,000 per application (approximately USD 22) will have to be paid before January 30st, 2011.
If this additional fee is paid after January 30th, 2011, the Trade Marks Registry (the “Registry”) will consider the payment date to be the date of filing.
Practice of official trade mark searches discontinued
Official trademark searches will no longer be conducted by the Registry. Proprietors can now conduct trade mark searches on the Registry’s online database. It is accessible free of cost at www.ipindiaonline.gov.in
Advantages: no costs involved in the searches, searches will be easier and faster as the Registry took up to a couple of weeks to issue an official search report.
During the examination procedure, the Registry will still conduct a search for prior trademarks.
Source: Majmudar & CO., Mumbai, India and
Selvam & Selvam, Kilpauk, India Nov 01, 2010 (Newsletter Issue 16/10)Filing of a Petition against Removed TMs PossibleOver the last six months about 56,429 registered trademarks have been removed due to non-payment of renewal fees. within time. Some of the trade mark matters pending over a very long period have also been removed due to lack of prosecution ignoring the fact that orders were issued earlier for the application to proceed to registration.
Due to complaints against this practice, the Controller of Trademarks has given the opportunity to all proprietors to file a petition against the removal of the respective trademark.
The petition needs to be filed on or before November 30th, 2010, with an official fee of Rs. 2,500 along with a complete case history and with substantial reasons to support the case.
For more information please click hereSource: www.selvamandselvam.in Oct 04, 2010 (Newsletter Issue 15/10)
Trademark Journal Now Published Every Monday
The Office of the Controller General of Patents, Designs and Trademarks (CGPDTM) of India announced that the Trademark Journal will be now published every Monday starting September 6th, 2010.
Source: www.patentoffice.nic.in
Oct 04, 2010 (Newsletter Issue 15/10)Clarification Notice IssuedThe Office of the Controller Gerneral Patents, Designs and Trademarks (CGPDTM) has given notice for the clarification of the treatment of registered and pending trademarks under Class 42.
For more information please click here Jul 06, 2010 (Newsletter Issue 12/10)Details on Pending Application and Registered TM AvailableThe Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM) has made available to the public complete details of pending Trade Mark Applications, Registered Trade Marks including the Prosecution History, Examination Report, Copy of the Application, e-Register of Trade Marks, Copy of the Trade Mark Certificate, Opposition details etc.
To access the database please click here
Source: Selvam & Selvam, India Jul 01, 2010 (Newsletter Issue 12/10)
9th Edition of the Nice Classification Adopted
The Government of India has amended the Indian Trademark Rules 2000, adopting the 9th Edition of the NICE Classification. Trademark applications can now be filed in classes 43, 44 and 45, which was earlier filed under class 42.
Furthermore, the amendment will now enable the Registered Proprietor to obtain a duplicate copy or a copy of the Registration Certificate by proving with suitable evidence that the same was never received earlier, without any further payment of fee.
The amended rules are referred to as "Trade Marks (Amendment) Rules, 2010", which entered into force May 20th, 2010.
Source: Selvam & Selvam, India
The legal basis is the Trade Marks Act of 1999, which came into force on September 15, 2003, and was subsequently amended by the Trade Marks (Amendment) Act, 2010.
The Indian Trademark law follows not only the codified law but also common law principles.
The Madrid Protocol came into effect for India on July 8, 2013.
As per section 18 (1) of the Trade Marks Act 1999, any person claiming to be the proprietor of a trademark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trademark.
As per the recent Trade Marks Practice (namely Rule 25 of the Trade Marks Rules 2017), it is required that
(1) An application to register a trademark shall, unless the trademark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of all the goods or services mentioned in the application.
(2) If the use of the trademark is claimed before the date of application, the applicant shall file an affidavit testifying to such use along with supporting documents.
In the case of a "proposed to be used" application, actual use per se is not required for obtaining registration of the mark in India.
Trademark protection is obtained by registration. An unregistered trademark may be protected under common law, owing to use and reputation, and goodwill garnered through such use.
ClassificationNice classification, 12th edition
What is Registrable as a TrademarkRegistrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, combinations of colors, three-dimensional forms, the three-dimensional form of a good or its packaging, sounds, and any combination of the mentioned signs as well as animation trademarks.
The Trade Marks Act also prohibits regulation of names of chemical elements as trademarks under the List of International Non-Proprietary Names (INN).
Trademarks that are likely to hurt religious sentiments comprise of scandalous or obscene matter, prohibited under Emblems and Names Act, 1950, etc. are not registerable.
The following trademark types are registrable: trademarks, service marks, collective marks, certification marks, series marks, and trade names.
Registration ProceedingsThe application is filed at the Trade Marks Registry.
Multiple-class applications are possible.
Foreign applicants must have an address for service in India. Therefore, a foreign applicant may contact an Indian trademark attorney to file an application in India. A simply signed Power of Attorney is required to be filed for filing the application. A Power of Attorney has to be stamped as required under the Indian Stamp Act, 1899.
The application process includes a formal examination, an examination of distinctiveness, and an examination as to prior conflicting trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use. The Registrar may accept or refuse the application subject to absolute or relative grounds of refusal.
It takes about 12-14 months to obtain registration in a straight forward case but may vary due to the backlog at the Trade Marks Registry.
Opposition PeriodNational:The opposition period is 4 months from publication of the trademark application in the Journal. It is non-extendible.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
Trademark DurationTrademark registration is valid for 10 years from the date of application.
The registration is renewable for periods of 10 years thereafter.
Grace Period for Trademark RenewalPractical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a trademark application is INR 9,000 in case of online filing and INR 10,000 in case of physical filing for each mark and for each class in case of proprietors other than individuals, start-ups, or small-scale enterprises. Further, for individuals, start-up or small-scale enterprises, the official fee for filing a trademark application is INR 4,500 in case of online filing and INR 5,000 in case of physical filing for each mark and for each class.
There is no official fee payable for registration or publication in the trademarks journal.
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Restoration of Trademarks
A removed trademark may be restored to the register and renewed provided an appropriate request is filed after 6 months and within one year from the expiration of the last date of registration with the prescribed fee.
Trademark LicensingPractical details on trademark licensing are available in our publication
here
Online you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
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May 27, 2024
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