The Indian law of trademarks is enshrined in the Trade & Merchandise Marks Act, 1958. However, the existing Act has been amended to bring it in conformity with the TRIPS Agreement to which India is a signatory. A new statute the Trade Marks Act, 1999 has been enacted in India. The new Act dramatically changes trademark protection and is a welcome change for those doing business in India.
The most significant changes which have been brought about by the new Act are that
”Service Marks” are now registerable; multi-class applications are permissible; the period of registration has been increased from 7 to 10 years; colors and shapes are now registerable; the Appellate Board will now hear appeals from the Registrar’s decisions; previously appeals were heard by the High Court; well-known marks are now recognized and increased fines for counterfeiting and trademark infringement have been provided for.
The Trade Marks Registry (TMR) with Head Office at Mumbai and branch office at Ahmedabad, Chennai, Delhi and Kolkata administers the Trade Marks Act, 1999 and maintains the register of trademarks. A total of 1,09,361 trademark have been registered in year April 2006-March 2007 as compared to only 8010 in year April 1999-March 2000.
Under the modernization project, the TMR offices have been modernized and backlog of about 4, 50,000 applications pending at various stages has been liquidated. Time taken for processing of trademark applications at varying stages is substantially less compared to statutory upper time limits. TMR is presently issuing first examination report normally within two weeks of filing of the application. The zero pendency achieved upto the examination stage is being sustained and the examination is being done within 15 days of filing. In respect of clarification cases, disposal is made within 30 days.
It is not permitted to register a trademark which is confusing with a trademark of another trader who has been using the trademark earlier for the same goods or a trademark or which describes the character or quality of the goods which other traders may reasonably want to use in the course of their business. The mark should not conflict with a trademark already registered or pending registration in respect of similar goods. Also some marks are prohibited from registration under the directions of the Government.
A Public Search service with online payment facility is available at the office of Controller General Patents Designs and Trademarks (CGPDTM)
Registration of Designs
The registration of industrial designs under the Designs Act, 2000 is done by the Designs Wing of the Patent Office located at Kolkata. However, applications can be filed at other offices of the Patent Office, namely, at Delhi, Mumbai and Chennai.
The thrust of the modernization programme of the Designs Wing includes a transition from the essentially paper-based examination procedures to an IT-based system supported by the computerization of existing records, on line search facilities, setting up of a user-friendly website and creation of a digital library.
Ten Steps for Registration of industrial design given by the Designs Wing are as follows :
Step 1. Finding out whether any registration already exists
The Designs office can assist you to search whether the design has been previously registered. If the registration number is known, Form No.-6 should be filed along with the prescribed fees of Rs. 500. If the representation of the article or the specimen of the article is filed Form No.-7 along with the prescribed fees of Rs. 1,000 is required.
Step 2. Preparing a representation of the design
A representation is the exact representation of the article on which the design has been applied. It should be prepared on white A4 size paper of durable quality. Do not prepare it on cardboard or mount it on other paper. Indicate details of the design and applicant clearly.
Step 3. Identifying the class of design
Designs are required to be categorized in separate classes in order to provide for systematic registration. An internationally accepted classification of Industrial Designs based upon the function of the article is required. The class and sub-class should be mentioned in the application. There are 32 classes and most of the classes are further divided into sub-classes.
Step 4. Providing a statement of novelty
A statement of novelty should be included on the representation of a design as per the Act in order to specify the claim. This will enable speedier examination and provide a more specific protection. The claim will protect the overall visual appearance of the design as described in the representation of drawing.
Registering Geographical Indications
The Geographical Indications Registry (GIR) is situated at Chennai. Its main function is registration of Geographical Indications (GIs) under the Geographical Indications (Registration and Protection) Act, 1999. The law came into force on 15th September 2003. GIR has registered about 40 Geographical Indications so far and many applications are under various stages of processing.
The Registry also continues to carry out awareness generation activities and guidance to potential applicants with regard to the protection of names of goods which originate in a specific and identifiable geographical territory within the country in order to safeguard the intellectual property inherent in such indications of source. The sectors being concentrated are tea, coffee, rice, spices, tobacco, handloom products, handicrafts, textiles, processed food items, and spirits and wines. Numerous sensitization workshops on the new legislation have been conducted. A documentation center and library with books and CD-ROMs has also been established.
Importance of Registering Geographical Indications
A properly protected GI will give protection to such goods in domestic as well as international market. Geographical indications have proved to be very valuable as they identify the source of the product and are an indicator of quality. Mostly, a geographical indication consists of the name of the place, which is the origin of the goods, such as “Darjeeling” (India) for tea, “Stilton” (England) for cheese, “Swiss” (Switzerland) for chocolate, “Roquefort” (France) for cheese etc.
The use of geographical indications is not limited to agricultural products. They may also highlight peculiar qualities of a product, which are due to human factors, such as specific manufacturing skills and traditions. According to TRIPS, a Geographical Indications which is not or ceases to be protected in its country of origin or which has fallen into disuse in that country cannot be protected. Thus
Registration of GI confers legal protection to your goods that are registered under the Act Thereby preventing unauthorized use of a Registered Geographical Indication by others as it facilitate an action for infringement exclusive right to use the geographical indication
It provides legal protection to Indian Geographical Indications, which in turn boost exports.
It promotes economic prosperity of producers of goods produced in a geographical territory.
When is a GI not Registrable
A GI will not be registered
When GI has become a generic name, that is, names of those goods which have lost their original meaning and are used as common names
If use of GI is likely to deceive public, cause confusions, or is contrary to any law in force
GIs, which comprises scandalous or obscene matter or hurt any section of the society, etc.