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September 10, 2014 © HK Acharya & Company . All Rights Reserved

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Intellectual Property Rights in India

H K ACHARYA & COMPANYAdvocates, Patent & Trademark Attorneys

IP Rights in India



TRADE MARKWHAT IS TRADE MARK:

As per Section 2(1) (zb) of The Trade Marks Act, 1999.

“Trade Mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of other and may include shape of goods, their packaging and combination of colours.

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WHAT IS MARK:

As per Section 2(1) (m) of The Trade Marks Act, 1999.

“mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof

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WHAT IS MARK:

As per Section 2(1) (m) of The Trade Marks Act, 1999.

The word "mark" is thus intended to be interpreted broadly and no type of sign is automatically excluded from registration. Marks which will require special consideration are colours, shape of goods, sounds and smells.

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SCOPE OF PROTECTION:

Indian trademark law statutorily protects trademarks as per the Trademark Act, 1999 and also under the common law remedy of passing off.

[1] Statutory protection of trademark is administered by the Controller General of Patents, Designs and Trade Marks, a government agency which reports to the Department of Industrial Policy and Promotion (DIPP), under the Ministry of Commerce and Industry.

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SCOPE OF PROTECTION:

The law of trademark deals with the mechanism of registration, protection of trademark and prevention of fraudulent trademark.

[2] The law also provides for the rights acquired by registration of trademark, modes of transfer and assignment of the rights, nature of infringements, penalties for such infringement and remedies available to the owner in case of such infringement.

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KINDS OF APPLICATION

Ordinary Application

Convention Application

Under Paris Convention Within Six Months from the date of

application filed in convention country) Have to file certified copy of priority

documents in English within two months from the date of filing application in India

International Application under Madrid System Through Madrid protocol (As India is member

of Madrid Protocol only not agreement) Can be filed at any time with designating

India

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USER DECLARATION

IN CASE OF A FOREIGN CORPORATION, IS IT NECESSARY FOR THE PRODUCTS OR SERVICES TO BE SOLD IN INDIA BEFORE SEEKING TRADEMARK REGISTRATION?

No, Indian trademark law allows filing of a trademark application in India on an ‘intent-to-use basis’.

However the registered proprietor of the trademark in India has to commence use of the mark within 5 years and 3 months of the date of registration. Otherwise the registered trademark is open to the challenge of invalidation proceedings.

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PROCEDURE FOR REGISTRATION OF TRADE MARK

Search (Not Mandatory)But advisable to conduct search before Trade Marks

Registry as well as Market Search

Filing an Application (Manually and E-filing)

Issuance of Examination report (Objection U/s 9 & 11)(Request for Expedited examination can be filed

after filing the application)

Comply within one month from the receipt of the examination report

Continue…

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PROCEDURE FOR REGISTRATION OF TRADE MARK

Acceptance

Advertised in the Trade Marks Journal

Notice of Opposition- within four months from

the date of publication

Entered in the Trade Marks Register

Registration certificate issued

Renewal (Every Ten Years)

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SUGGESTIONS:1) Accurate and correct details in

applicationNo Substantial amendment is allowed

2) To take immediate action against the infringer (Delay/Acquisition) Section 33

3) Prior user Section 344) Well known mark is protected5) Special Board for IP Matters

IPAB (For Rectification / Appeal Matters)

6) Quick Disposal of IP MattersDirection given by Apex Court of India

7) Rectification application can be filed on the basis of non user

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INDUSTRIAL DESIGNMEANING:

Sec. 2(d)A design of an article may be registered if the feature of shape, configuration, pattern or ornament given to an article by any industrial process. Whether manual, mechanical or chemical, separate or combine, which is in the finished article appeal to and are judge solely by the eye. The principle or the mode of construction of the article or mere mechanical device cannot be registered as designs. Trade Marks and Trade Names are also excluded from the scope of design.

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Sec 2(a)Any Article of manufacture and any substance,

artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately.

i.e. Car, Parts of Car (Which sold separately)

WHAT CAN BE REGISTERED?

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Sec 4If the article(a) Is not new or original; or

(b) Has been disclosed to the public anywhere In India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or

Cont.

WHAT CAN NOT BE REGISTERED?

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Sec 4

(c) Is not significantly distinguishable from known designs or combination of known designs; or

(d) Comprises or contains scandalous or obscene matterShall not be registered

WHAT CAN NOT BE REGISTERED?

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Convention application may be filed before the Design office within 6 months from the date of filing the application in the priority country.

It is require to file the certified copy of priority documents to claim the priority of the earlier application.

CONVENTION APPLICATION UNDER PARIS CONVENTION

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DESIGN PROCEDURE

Search (not mandatory)[Two types of search: 1. when registration number is supplied

and 2. when registration number is not supplied by the applicant]

Filing an Application

(Ordinary or Convention)

Examination

Reply should be given within 3 months from the date of official communication of objection to the applicant or his agent

Continue…

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TERM OF DESIGN

It is initially ten years form the date of registration. In cases of claiming the priority the duration can be ten years from the priority date. This initial period of registration may be extended by further 5 years only if an application made before the expiry of the said initial period of 10 Years.

Initial 10 Years + 5 Years = Total 15 Years

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SUGGESTIONS

1) One article one design

Multiple article in single design application not possible

2) Parts of an article (which sold separately)

3) Cancellation on grounds of prior publication

Can be filed before Controller as well as IPAB

4) Requirements before delivery on sales Sec 15(1) B

Marked with the prescribed mark, or with the prescribed words or figures denoting that the design is registered

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PATENT

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Where to file?

Type of Filing

Manually

Electronically

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TIME LIMIT

NO. PARTICULARS TIME LIMITS

1 PCT National Phase Application In India

Within thirty one months from the date of priority

2 Conventional Application In India

Within twelve months after the date on which the basic application was made

3 Period within which proof of the right to make the application shall be furnished

Within 6 months after filing Patent Application

4 Translation of the application in English

Within thirty one months from the date of Priority

5 Power of Attorney Within 6 months after filing Patent Application

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NO. PARTICULARS TIME LIMITS

6 Request for examination 48 months from the date of priority

7 Time for putting an application in order for grant

Within 12 months from the date of First Examination Report

8 Issuance of patent certificate Within Seven days from the date of grant of Patent

9 Statement regarding working of a patented invention on a commercial scale in India

Every year before 31st March

10 Where a principal patent is granted later than two years from the date of filing of the application the fees which have

become due in the meantime

3 months from the date of the recording of the patent in the register

11 Application for review of decision or setting aside of orders of the controller

Within one month from the date of date of communication of such decision to the applicant

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Duty of Disclosure

• Section 8 –glimpse of Patent Prosecution Highway (PPH)

• IPO- no reciprocal arrangement with other Patent Offices

• Section 8 (1)- Form 3 within 6 months from filing/up-date

• Section 8 (2)- Search report within 6 months from request of the Controller

• If not- Opposition/Revocation24


Statement Of The Working Of Patented Invention In India

• Furnish at regular intervals (not less than six months)

• For each calendar year before March 31• Whether invention worked or not worked• If not worked: reasons for not working and

steps being taken for working of the invention• If worked: quantum and value (in Rupees), of

the patented product

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Continue…

(i) manufactured in India

(ii) imported from other countries (give country-wise details)

• licenses and sub-licenses granted during the year

• state whether public requirement has been met partly/adequately/to the fullest extent at reasonable price

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PENALTIES

• Refuses or fails to furnish- punishable with fine which may extend to ten lakh rupees = $20000.

• information or statement - false -imprisonment which may extend to six months, or file or with both

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Consequences if not worked

• Compulsory licences

• Revocation of Patents by the controller for non working- compulsory licence - Central Government or any person interested -only after the expiration of two years CL- ordinarily be decided within one year

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Risk to foreign products/technique in India

• Lack of awareness• Pre-grant & Post-grant Opposition• Anti-patenting lobbying• Mind set for reverse engineering• Small players infringing IP rights• Backlog of cases at both the civil and

criminal courts

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Tips for Enforcement

• Patent Marking• Interim injunction • Arbitration and mediation• THE INTELLECTUAL PROPERTY RIGHTS

(IMPORTED GOODS) ENFORCEMENT RULES, 2007

• Advice from Indian IP rights experts• Risk assessment • Opinion from similar business doer

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Thank You

H K ACHARYA & COMPANYHK Avenue, 19, Swastik Society, Navrangpura, Ahmedabad 380 009 INDIAPhone : +91 79 26425258/ 5259 Fax : +91 79 26425262 / 5263E-mail : [email protected] Web : www.hkindia.com

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