India – How to protect your Trademark

In this internet age, the limitless possibilities of reaching customers across the globe to sell goods and services comes the challenge of protecting one’s Intellectual Property Right (IPR). Talking specifically of trademarks, like most other forms of IPR, the registration of a trademark is territorial in nature. One would need a separate trademark filing in India if one intends to protect the trademark in India.

But what type of trademarks are allowed registration in India and what is the procedure and what are the conditions?

The Office of the Controller General of Patents, Designs and Trade Marks (the Registry) is the government body responsible for the administration of trademarks in India. When seeking trademark registration, you will need an address for service in India and a local agent or attorney. The application can be filed online or by paper at the Registry.  Based on the originality and uniqueness of the trademark, and subject to opposition or infringement claims by third parties, the registration takes around 18-24 months or even more.

Criteria for adopting and filing a trademark in India

To be granted registration, the trademark should be:

• non-generic
• non-descriptive
• not-identical
• non–deceptive

Trademark Search

It is not mandatory to carry out a trademark search before filing an application. However, the search is recommended so as to unearth conflicting trademarks on file.

How to make the application?

One can consider making a trademark application in the following ways:

• a fresh trademark application through a local agent or attorney;
• application under the Paris Convention: India being a signatory to the Paris Convention for the Protection of Industrial Property, a convention application can be filed by claiming priority of a previously filed international application. For claiming such priority, the applicant must file a certified copy of the priority document, i.e., the earlier filed international application that forms the basis of claim for priority in India;
• application through the Madrid Protocol: India acceded to the Madrid Protocol in 2013 and it is possible to designate India in an international application.

Objection by the Office – Grounds of Refusal

Within 2-4 months from the date of filing of the trademark application (4-6 months in the case of Madrid Protocol applications), the Registry conducts an examination and sometimes issues an office action/examination report raising objections. The applicant must respond to the Registry within one month. If the applicant fails to respond, the trademark application will be deemed abandoned.

A trademark registration in India can be refused by the Registry for absolute grounds such as (i) the trademark being devoid of any distinctive character (ii) trademark consists of marks that designate the kind, quality, quantity values, geographic origins or time or production of the goods or services (iii) the trademark causes confusion or deceives public. A relative ground for refusal is generally when a trademark is similar or deceptively similar to an earlier trademark.

Objection Hearing

When the Registry is not satisfied with the response, a hearing is scheduled within 8-12 months. During the hearing, the Registry either accepts or rejects the registration.

Publication in TM journal

After acceptance for registration, the trademark will be published in the Trade Marks Journal.

Third Party Opposition

Any person can oppose the trademark within four months of the date of publication in the journal. If there is no opposition within 4-months, the mark would be granted protection by the Registry. An opposition would lead to prosecution proceedings that take around 12-18 months for completion.

Validity of Trademark Registration

The registration dates back to the date of the application and is renewable every 10 years.

“Use of Mark” an important condition for trademark registration

• “First to Use” Rule over “First-to-File” Rule: An application in India can be filed on an “intent to use” basis or by claiming “prior use” of the trademark in India. Unlike other jurisdictions, India follows “first to use” rule over the “first-to-file” rule. This means that the first person who can prove significant use of a trade mark in India will generally have superior rights over a person who files a trade mark application prior but with a later user date or acquires registration prior but with a later user date.
• Spill-over Reputation considered as Use: Given the territorial protection granted for trademarks, the Indian Trademark Law protects the spill-over reputation of overseas trademark even where the trademark has not been used and/or registered in India. This is possible because knowledge of the trademark in India and the reputation acquired through advertisements on television, Internet and publications can be considered as valid proof of use.

Descriptive Marks to acquire distinctiveness to be eligible for registration

Unlike in the US, Indian trademark law does not generally permit registration of a descriptive trademark. A descriptive trademark is a word that identifies the characteristics of the product or service to which the trademark pertains. It is similar to an adjective. An example of descriptive marks is KOLD AND KREAMY for ice cream and CHOCO TREAT in respect of chocolates. However, several courts in India have interpreted that descriptive trademark can be afforded registration if due to its prolonged use in trade it has lost its primary descriptive meaning and has become distinctive in relation to the goods it deals with. Descriptive marks always have to be supported with evidence (preferably from before the date of application for registration) to show that the trademark has acquired a distinctive character as a result of the use made of it or that it was a well-known trademark.

Acquired distinctiveness a criterion for trademark protection

Even if a trademark lacks inherent distinctiveness, it can still be registered if it has acquired distinctiveness through continuous and extensive use. All one has to prove is that before the date of application for registration:

• the trademark has acquired a distinctive character as a result of use;
• established a strong reputation and goodwill in the market; and
• the consumers relate only to the trademark for the respective product or services due to its continuous use.

How can one stop someone from misusing or copying the trademark in India?

An action of passing off or infringement can be taken against someone copying or misusing a trademark.

For unregistered trademarks, a common law action of passing off can be initiated. The passing off of trademarks is a tort actionable under common law and is mainly used to protect the goodwill attached to unregistered trademarks. The owner of the unregistered trademark has to establish its trademark rights by substantiating the trademark’s prior use in India or trans-border reputation in India and prove that the two marks are either identical or similar and there is likelihood of confusion.

For Registered trademarks, a statutory action of infringement can be initiated. The registered proprietor only needs to prove the similarity between the marks and the likelihood of confusion is presumed.

In both the cases, a court may grant relief of injunction and /or monetary compensation for damages for loss of business and /or confiscation or destruction of infringing labels etc. Although registration of trademark is prima facie evidence of validity, registration cannot upstage a prior consistent user of trademark for the rule is ‘priority in adoption prevails over priority in registration’.

Appeals

Any decision of the Registrar of Trademarks can be appealed before the high courts within three months of the Registrar’s order.

It’s thus preferable to have a strategy for protecting trademarks before entering the Indian market. This includes advertising in publications and online media that have circulation and accessibility in India, collating all relevant records evidencing the first use of the mark in India, taking offensive action against the infringing local entity, or considering negotiations depending upon the strength of the foreign mark and the transborder reputation it carries.