The Trade Marks Act, 1999 was brought into force on September 15, 2003. Its salient features are:
- Filing of multiclass applications
- Registration of service marks
- Registration of collective marks
- Widening the definition of trade mark by including shape of goods, packaging and combination of colors
- Protection of well-known trademarks and tests for determination of such marks
- Single Register of trademarks instead of parts A and B
- Assignment of unregistered trademarks without goodwill of business
- Recognition of use of a registered trade mark by an unregistered licensee
- Enlargement of term of registration to ten years
- Widening of scope of infringement of registered trademarks to cover dissimilar goods / services, provided the registered mark has a reputation in India
- Creation of Intellectual Property Appellate Board to hear appeals from the decisions of the Registrar
TRADE MARK SEARCH
A common search in the markets is not possible and the Registry has no facility to conduct device mark and proprietor-wise searches. However, the IP Office offers search in its website of all the marks that are applied for or registered in India.
PROSECUTION
India being a 'first to use' country, date of first use of a mark assumes great significance. Continuous and extensive use of a mark adds to its distinctiveness and helps in overcoming distinctiveness/conflict objections effectively. Given the current trend, one can expect a registration certificate to be issued within two years from the date of filing of application.
OPPOSITION
The time period for filing an opposition is three months from the date of publication of a mark in the Trade Marks Journal. On request, this period can be extended by one month. In the absence of use and prior registration of a trade mark in India, an opposition can be based on prior use and registration of the mark in other countries.
CANCELLATION
A cancellation action can be filed by person aggrieved by the existence of a trade mark on the Register on either of the following grounds-
- If a trade mark is registered without any bona fide intention of use and there has been no bona fide use in relation to the goods or services covered by the mark up to a period of three months before the date of the cancellation action.
- If a continuous period of five years or more from the date of registration has elapsed during which there has been no bona fide use of a registered trade mark.
- It is not necessary to prove continuous use of a trade mark and even isolated instances of use may be sufficient to contest the cancellation action provided such use is genuine.
LITIGATION
In the case of misuse of a trade mark, the law provides for both civil and criminal remedies.
CIVIL REMEDIES
Under civil remedies, a suit for infringement can be filed on the basis of statutory rights. In the absence of registration, an action for passing off at common law can be brought against a person misusing the mark based upon the reputation and goodwill vesting in the unregistered mark. Trans-border or spillover reputation can be relied upon especially if a mark has not been used in India. The period of limitation for filing a suit for infringement/passing off is three years from the date of the impugned act. As passing off is an act of deceit and tort and every time such act or deceit is committed, a fresh cause of action accrues in favor of the aggrieved. In a significant departure from the old law, a suit for infringement can be instituted even at the place where the plaintiff resides or carries on his business.
CRIMINAL REMEDIES
Under criminal remedies, a complaint can be filed either with the
- Court of a Magistrate against unknown persons with a view to obtain and provide directions to the Police to register a case, investigate and carry out search and seizure operation/s; or
- Local Police directly. Upon being satisfied that the named entity is committing any of the offences complained of, the Police may, without the order of the Court, carry out a 'Search & Seizure' operation. The local Police may insist on an opinion from the Registrar of Trade Marks (as provided under the Trade Marks Act, 1999) before proceeding in the matter. The proceedings, after the 'Search and Seizure' progress to their logical conclusion. Further prosecution entails framing of charges, examination of witnesses and arguments.