Filing of Certification Marks in India

Certification marks

A certification mark is a trademark used by a registered user to certify that his goods or services comply with the prescribed standards of the certifying agency. The best examples we see every day are the HALMARK for jewellery, FSSAI for food products, etc.

Certification marks are generally owned by trade associations or other centralized commercial groups.  The owner of the mark sets standards for accreditation such that goods bearing the mark are certified to conform to particular standards of quality. The owner of the mark is not permitted to use the mark. The owner of a certification mark is compelled to license the use of the mark to anyone whose goods or services meet the standards established for certification.

Registration of a person as the proprietor of a certification mark gives that person rights which are subject to certain conditions and limitations, to use the mark to certify the goods and services that he has obtained the license for.

India has both Statutory and Non-statutory certification marks. Statutory marks are mandatory marks that certify a particular type of good, like the green dot on vegetarian food, the brown dot on non-vegetarian food, toxicity label on pesticides, etc.

Non-statutory marks are the marks which are encouraged by the government to certify certain goods. Example, Silk mark, the Ayush mark on herbal products, etc.

Section 2(1) (e) of the Trademarks Act defines a certification mark as a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services not so certified.

It can be any mark, a word, phrase, symbol or design, or a combination of various marks owned by a party who certifies the goods and services of others when they meet certain standards. The owner of the mark regulates the use of the mark by the others. Certification marks function as an indication of certain standards being met by the product.

Application for a certification trademark

  • An application for registering a trademark should be made to the Registrar by the person who proposes to be registered as the proprietor for such mark.
  • The application should be accompanied with a draft of regulations for governing and authorizing the use of the certification trademark.
  • The application shall be then examined for competency of the applicant to certify, credibility of the draft submitted, advantage of the general public, etc.
  • The Registrar will then publish the application inviting oppositions for the same after which the registration of the certification trademark will be decided after hearing both the parties.

 

These draft regulations shall contain a description of the applicant, nature of the applicant’s business, particulars of the infrastructure and its financial arrangement. Additionally, it shall also mention its competence to administer the scheme, the characteristic indicated by the trademark with respect to the certification provided, submit an undertaking that no discrimination would take place and the manner in which it would monitor the use of the trademark in India.

A statement of case will also be submitted along with the application which sets out the grounds supporting the application. Thereafter, the rules of opposition, hearing, registration and renewal are similar to that followed for other trademarks. Regulations governing the use of the mark must be submitted to the Trade Marks Registry which should include provisions as to the cases in which the proprietor certifies goods or services. These may be altered by the Registrar on an application by the proprietor.

 

Infringement of Certification Trademarks

According to Section 76 of the Trade Marks Act 1999, acts that do not constitute an infringement of certification trade mark are acts that are in accordance with the terms and conditions specified by the proprietor; use of the mark on goods and services as certified by the proprietor, or; on goods and services adapted to form part of or to be an accessory to the other goods and services for which the mark is registered, are not considered as infringement.

Cancellation of Certification Trademarks-

Cancellation can be sought before the Registrar, through an application in the prescribed manner by an aggrieved person, who shall give the proprietor a chance to oppose the application. The application can be on the grounds that the proprietor is no longer competent to certify the goods and services to which the registration was granted, or that the proprietor is not following the provisions provided in the register, or that the mark is no longer of public advantage.

Miscellaneous:

If the proprietor wishes to cancel or make any variations to the registration of the certification trademark or does so on the order of the Registrar, he must file an application under Form TM-O and set forth the grounds on which the application is made.

Any alteration to the regulations can be made through Form TM-M. These alterations are then advertised by the Registrar in the Journal. If the proprietor intends on the assignment or transmission of the certification trademark, an application under Form TM-P shall be made to obtain his consent.

Fees and Forms:

The fees prescribed for the forms mentioned above are stated below:

Form

Particulars

Fees (Amount in INR.)

Physical filing

E-filing

TM-A

Application for registration of a Certification trademark

 

 

1)Where the applicant is an individual / start-up / small enterprise

5,000

4,500

2) In all other cases

10,000

9,000

TM-M

Alteration of regulation of Certification trademark

2,000

1,800

TM-O

Application for cancellation or variation of registration of Certification trademarks

3,000

2,700

TM-P

Application for the Consent of Registrar to the assignment or transmission of a Certification trademark

2,000

1,800

We hope this article was a useful read. 

Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

This work is licensed under a Creative Commons Attribution-Non Commercial 3.0 Unported License

Registering a mark that has been In-Use

Illustration of circle stamp banner vector

Can I register a trademark that I have been using for a long time?

Yes, but the requirements for registration will differ. The proprietor will have to submit an affidavit attaching evidence of use of the mark. Business names are just a name to be recognized, but Trademarks are property. If you choose to get your trademark registered at a later stage, a search is better to be conducted so as to be sure about the distinctive usage of your trademark.

One should not have any problem if one is a Well-Known mark in the area in which one is seeking registration. Otherwise, you can expect objections and even refusal of registration. In case of an infringement, you can claim rights of passing off or on valid grounds of objection like very long usage and popularity. If the situation arises that both parties have established valid and concurrent use, they could either be made joint owners of the trademark, or allowed to continue business simultaneously but distinct of each other. On the basis of the ‘date of first use in commerce’, and recognition of the mark, one may be granted registration. There is also a chance that one may be granted a trademark similar to that of another on the grounds of ‘use in good faith’.

The date of first use in commerce is the date when the goods were first sold or transported under the mark in any type of commerce. This use should be good enough for customers to differentiate the mark from that of the other marks in the market. It need not only be use of the mark in connection with selling the goods or services but can also be a mark used for the purpose of advertising, marketing, whatever it might be.  And then the second element is if it was followed by activities providing a continuous effort or intent to use the mark. One cannot start using a mark, stop using it and then claim rights over a mark based on the ‘date of first use’. It should be continuously used at least for a period of five years and three months before a person makes an application for the trademark.

For every applicant, whether foreign or domestic, the date of first use of a mark is the date of the first use anywhere, in India or elsewhere, regardless of whether the nature of the use was local or national, intrastate or interstate, or of any other type, as far it is made for use in commerce and continuously.

Section 34 of the Trademarks Act, 1999 deals with prior users and their rights. An exclusive right obtained by registration cannot be used to interfere or restrain a person from using a mark which he is using from a prior date. On rare accounts, two or more persons can register same or similar trademarks with limitations prescribed by the registrar. The prior users get the right to be protected only on the fulfillment of following conditions:

  • The mark should have been used from a date prior to the use of the registered trademark, or prior to the date of registration, whichever is earlier.
  • The prior use claimed must be by the proprietor himself or his predecessor in title.
  • The use claimed must be in continuous use.

The Registrar cannot refuse registration of the prior mark because of the existence of the registered trademark on the register. It is not sufficient to plead use prior to registration. The prior user must show that they were substantial users prior in use to the application for registration.

Section 34 can be taken as a defense against infringement. This Section cannot be applied to obtain an injunction restraining the registered proprietor from interfering with the right of the prior user to use the trademark. The importance of “prior user” is reflected in Titan Industries Ltd. v. Registrar of Trademarks, where an application was filed for registering trademark ‘Classic’ in respect of clocks, watches, time pieces and other parts included in Class 14 claiming usage since 1987. But when the application was advertised in the Trademark Journal, Appellants filed their notice of opposition on the grounds that they are manufactures and dealers of wrist watches and they are the proprietors of ‘Titan’ word per se. They further claimed that they were the registered proprietors of the trademark Titan “Classique” and that they are popularly known as ‘classique’ or ‘classic’. Titan Industries contented that they had registered the trademark “Titan Classique” as early as 25/08/1986 and it is also pointed out that the second respondent company was incorporated in the year 1988 only. This contention by ‘Titan’ was considered by the IPAB and the case was decided accordingly, emphasizing on the importance of prior date of use.

Evidences of prior use:

  • Advertisements and sales campaigns,
  • Proofs of inherited business using the mark,
  • Invoices and Bills,
  • Website pages,
  • Survey reports

We hope this article was a useful read. 

Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree

This work is licensed under a Creative Commons Attribution-Non Commercial 3.0 Unported License

Associated Trademarks

Vector image of trademark icon

Associated Trademarks refer to those marks which are owned by the same proprietor in respect of identical or similar goods and services, which would otherwise be likely to deceive or cause confusion if used by a person other than the proprietor. These marks are entered on the register as associated with the earlier registered trademarks in order to prevent the existence of multiple rights in the market.

Associated trademarks are generally used by businesses that expand their operations to newer goods and services. For instance, the proprietor of AMUL, which continuously expands its range of products, would associate all marks pertaining to their various products under the original registered mark to prevent any confusion and so that consumers may associate all new products with their brand.

Let’s take another example of ‘APPLE’ which started its business by selling computers and later expanded its business to other consumer electronics like iPhones, iPods, iPads, Apple Watch and other such goods. These goods might belong to the same class while filing for a trademark registration, but association with its primary mark that has acquired reputation, goodwill and brand value, would help consumers identify these products with the brand and prevent any likelihood of confusion.

The Registrar, while examining an application for a trademark registration will check if the subject of the application is identical with:

1) Another trademark which is registered,

2) Another mark which is applied for registration,

3) The same proprietor,

4) A similar or identical description of goods and services.

If the Registrar finds that the application is identical to another mark as given above, he shall require them to be registered as associated trademarks.

An applicant/agent can indicate in the application for trademark registration (Form TM-A) if they are associated with any earlier trademarks.

 If they fail to do so, the Registrar may suggest their association in the examination report. The applicant will then have to amend the application by filing Form TM-M stating their intent to associate with another trademark.

In case the applicant wants to dissociate a mark from the associated trademarks, Form TM-P must be filed for dissolution of association between trademarks, if he is satisfied that there is no likelihood of confusion or deception.

The fees for the above forms are mentioned below:

Form

Particulars

Fees (Amount in INR.)

Physical filing

E-filing

TM-A

Application for registration of a trademark

 

 

1)Where the applicant is an individual/startup/small enterprise

5,000

4,500

2) In all other cases

10,000

9,000

TM-M

Amendment of Application

1,000

900

TM-P

Dissolution of Association between trademark

1,000

900

The primary object of associated trademarks is to establish a relation between the brands falling under the same ambit of goods and services in order that an identity and brand value is created in the minds of the consumer. This will prevent the creation of multiple rights in the market by associating all marks with one primary mark. But, if they become distinct in the market, then the proprietor can file for dissolution of association. Thus, associated trademarks can be beneficial to those entities who wish to expand their range of goods and services in the market.

We hope this article was a useful read. 

Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

This work is licensed under a Creative Commons Attribution-Non Commercial 3.0 Unported License

Nitty gritty of Assignment of Trademarks in India

Vector image of trademark icon

Assignment of trademark refers to the power of the proprietor of a trademark to transfer the trademark to another person for consideration. Both registered and unregistered trademarks can be the subject of an assignment. It is important to keep in mind that when such an assignment takes place, the person transferring the trademark should present effectual receipts for any consideration of such assignment.

Similar or identical trademarks cannot be assigned to vest exclusive rights in more than one person if such trademarks are in relation to the same goods and services or same description of goods and services. If such an assignment is made, it is invalid. The proprietor of a registered trademark who proposes to assign such a trademark has to submit to the Registrar a statement of case, setting out the circumstances of the assignment. The Registrar, having regard to the similarity of goods and services, will issue a certificate stating whether such an assignment is valid or not. If the Registrar grants a Certificate validly accepting the assignment, an application for registration of the title to the trademark should be made by the assignee within six months from the date of the issue of the certificate.

Let us consider the example of a proprietor of the mark ‘SLURPZZ’ who is engaged in the business of selling sweets. If the proprietor intends to assign the trademark to ‘A’ to sell sweets and thereafter to ‘B’ to sell sweets and savories, the proprietor will have to obtain a certificate from the Registrar permitting the assignment of the mark over the same goods to two separate entities.

Assignment of a trademark can be made with or without goodwill. An assignment for trademark is made with goodwill when the assignor transfers the rights and value of the trademark and allows the assignee to use it for the products associated with it.

For example, if ‘P’, the owner of the trademark ‘NEEW’ dealing in footwear assigns it to ‘Q’ and also lets ‘Q’ use it for selling footwear then such a trademark is assigned with goodwill.

An assignment for trademark is made without goodwill when the assignor assigns the trademark to the assignee only with regards to dissimilar products. The assignee can only use the trademark for dissimilar products and is restricted from using it for the same products as used by the assignor. For example, if ‘P’, the owner of the trademark ‘NEEW’ dealing in footwear, assigns it to ‘Q’ where ‘Q’ can use it for any product except footwear then that is an assignment without goodwill.

When an assignment of a trademark takes place other than in connection with the goodwill of a business, the assignment shall not be effective unless the assignee applies to the Registrar for directions with respect to the advertisement of assignment within a period of six months. This time of six months can be extended for another period of three months if necessary. The assignee shall then make the advertisement as directed by the Registrar.

When a person becomes entitled to a trademark by assignment, he shall apply to the Registrar to register his title and the Registrar shall, on receipt of such application, register him as the proprietor of that trademark. The Registrar can ask the assignee for evidence for proof of title or any further evidence when there is reasonable doubt about veracity of any statement. The Registrar can also refuse to register an assignment until the rights of parties have been settled by a competent Court, where validity of an assignment is in dispute between the parties.

Cost for assignment of Trademark

Cost payable for

Physical filing cost

E-filing Cost

Application for registration of assignment

10,000

9000

Application for Certificate of Registrar in case of trademarks for same goods and services

3000

2700

 

Application for extension of time for direction of Registrar regarding investment

2000

1800

We hope this article was a useful read. 

Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

This work is licensed under a Creative Commons Attribution-Non Commercial 3.0 Unported License

Assignment and Licensing of Trademarks in India

MOU

The Trade Marks Act 1999 was amended to suit advancing trade practices and to abolish unfair competition among brands. The Act is enacted with an intention to protect the rights of a proprietor who invests money, time and work into his trademark and building its reputation in the market, and the consumer should get equal protection from being cheated into buying a product of a sub-standard quality, just because it was displayed with either the same mark by a person who is not the proprietor or authorized user of the mark, or a mark that is deceptively similar to the proprietor’s mark.

The Act allows a registered proprietor to assign or license out the use of his trademark. The assignment and licensing can be made with or without the goodwill of the business concerned. A trademark need not be registered to be assigned or licensed.

Assignment of a trademark

Section 2(b) of the Trade Marks Act 1999 describes “assignment” as an assignment in writing by an act of the parties concerned. Assignment is the transfer of proprietary rights. Proprietary rights over a few goods or services, or over all the goods or services registered by the proprietor may be assigned, unless it is an associated trade mark. It can also be in favour of more than one person if they operate in different countries.

An assignment thus should be made in writing, where rights are transferred legally, but a trademark cannot be assigned or transmitted if such an assignment creates multiple rights in more than one person as it could deceive or create confusion in the general public.

The assignment of a trademark has to be registered with the Registrar of Trademarks within a period of six (6) months from the date of assignment (or with a permitted extension of three more months). The Registrar will then advertise the assignment so as to inform the public of such assignment. Though the registration of an assignment is not mandatory, it is better to get it registered since an assignment that is not registered will not be a valid proof of the assignment.

Licensing:

Licensing occurs where the owner or authorized user of a trademark, allows a licensee to use his trademark for a royalty paid to him for a particular term.

Licensing is done by a licensing agreement containing the terms and conditions of use of the trademark by the licensee. The terms must include – names of the parties, terms of sub-licensing, duration of the license, territory for usage of the trademark, specification of the goods and services to be manufactured under the mark, royalty to be paid and term for such payments, terms for quality control, security terms, and termination of the license among others.

Licensing can be done through-

  • Merchandising: This is a type of licensing where a simple product is enhanced with the attachment of a famous brand name. This is also the most popular way of advertising used by many famous trademarks. For example, we see famous trademarks on mugs, bags, phone covers, etc.
  • Franchising: Here, a licensee pays a royalty for the rights to exactly implement the licensor’s business model and use the licensor’s trademark on the permitted goods and services. A famous example is that of the ‘Café Coffee Day’ outlets.
  • Co-branding: Here, proprietors of two trademarks coordinate with each other to derive mutual benefits from the goodwill enjoyed by both marks. A very popular brand like ‘Dell’ co-brands with ‘Intel’ processors.
  • Brand enhancement: Here, a licensor may team up with another to use his brand name on a different product.

Assignment and Licensing of trademarks help the proprietor to generate more revenue, enact broader and easier territorial expansion, enjoy protection from illegal use of one’s marks, develop easy advertisement across different places, increase consumer recognition and popularity among other benefits.

We hope this article was a useful read. 

Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

This work is licensed under a Creative Commons Attribution-Non Commercial 3.0 Unported License

Removal, Cancellation, Variation Or Rectification Of Registered Trademarks in India

opposition

Trademarks are not ‘revoked’ as such in India. Under the Act, the registered marks may be removed from the register, cancelled, or rectified in the Register.  They can be done at the instance of the registered proprietor himself, the Registrar, or by a third party.

Who can file?

The recourse available to any aggrieved party, after the registration of trademark, in India is the rectification or cancellation of the trademark.  Persons aggrieved here means persons who have an interest in the mark being removed, or whose interests will be damaged if the impugned mark is allowed to persist in the Register. Therefore, the person filing for such rectification or cancellation must have a substantial interest in seeking the cancellation of the trademark.

Authority:

The aggrieved person may file for rectification or cancellation before either the Registrar or the Appellate Board.

Grounds:

The grounds for seeking cancellation or rectification as given under the Act are as follows-

  1. Failure to observe a condition laid down as a pre-requisite to the registration of the mark
  2. The absence or omission of any entry from the Register
  3. The entry in the Register was made without sufficient cause
  4. There is an error or defect in any entry made in the Register
  5. The entry is wrongly remaining  in the Register
  6. The trademark is registered as a result of fraud or misrepresentation
  7. The renewal fee has not been paid
  8. The trademark has not been used for more than 5 years
  9. The trademark is not in conformation with the grounds under Section 9 or 11 of the Trademarks Act,1999.
  10. The mark was not registered or used in good faith.

There are a few specific grounds mentioned in the Act for both certificate marks and collective marks. Certification marks are those which are capable of distinguishing them from other similar goods and services in aspects such as quality, place of manufacture, etc. In the case of certification marks, the grounds are as follows-

1.The proprietor is no longer in the position to certify those goods and services.

2. The proprietor did not observe the provisions meant to be observed by him.

3.  It is in public interest to either cancel the mark, or vary it to meet certain conditions.

Collective marks are the trademarks which identify the goods as originating from an association of persons, such association not being a partnership firm. In the case of collective marks, they are as follows-

  1. The manner in which the mark was used misled the public
  2. The proprietor has failed to observe the regulations in using the mark.

Procedure:

Application: The application must be made in Form TM-O, and this application must contain the extent of interest of the applicant, the facts upon which his case rests, and the relief which he seeks. The application and statement are usually left at the Trademark Registry, and it becomes the duty of the Registrar to ensure that the registered proprietor gets a copy of both, within a period of one month. The application must be verified by the applicant or his duly authorized agent.

Counterstatement: Within three months of receiving the application and statement, the registered proprietor must file a counterstatement. If such a counterstatement is filed, then the Registrar must serve a copy of the same to the applicant. If no counterstatement is filed by the registered proprietor, within the three month time period, then the applicant may proceed to file evidence in support of his application, in the form of an affidavit. A copy of this will be given to the registered proprietor.

Evidence: If the evidence is filed by the applicant, then the registered proprietor will have two months from the date he receives a copy of the affidavit to file evidence in his favor. He may choose not to do so. The applicant is then given another opportunity to file more evidence in his favor, within a month of receiving the copy of the registered proprietor’s affidavits, and no more evidence may be allowed to be filed by either side after this.

Hearing: The matter then goes for hearing. Before this, if any documents are in any language other than Hindi or English, an attested translation of those documents in either of the mentioned languages must be present. A notice is sent out by the Registrar and the hearing will be at least a month away from the date of issue of notice. A party may request for adjournment by way of a Form TM-M, with the prescribed fee, and no party can be granted more than two adjournments, each not exceeding 30 days. The Registrar considers the written submissions in addition to all the evidence he is presented with. His order as to cancellation, rectification or denial of the application for the same is then communicated to both the parties.

Any third-party alleging interest may file an application under Form TM-O to intervene.We hope this article was a useful read. 

Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

This work is licensed under a Creative Commons Attribution-Non Commercial 3.0 Unported License

ADVANTAGES OF A REGISTERED TRADEMARK

Vector image of trademark icon

In India, it is not essential that a mark needs to be registered. Unregistered trademarks enjoy a certain degree of protection as well. However, registering a trademark allows the proprietor of the trademark to enjoy certain benefits. They are listed below:

  1. Exclusive Right:

The successful registration of a trademark gives the proprietor the exclusive right to use the trademark, in relation to the goods and services for which the mark is registered. So if ‘A’ registers the word ‘LEX’ for wallets, the same cannot be used by ‘B’ for wallets, but may be used for pens. This ensures that the consumers will be able to distinguish and identify the proprietor’s mark with respect to that particular good or service, thereby enhancing his reputation in the market.

  1. Proof of validity:

In the event that there is any litigation with relation to the trademark, then the registration of the trademark would become evidence, at face value, of the validity of the mark.

  1. Lower Burden of Proof:

A registered trademark is afforded a higher degree of protection. A proprietor for a registered trademark may sue for infringement of the trademark. In the case of an unregistered trademark, there is recourse for unjust use of the mark, under passing off.

Infringement is more stringent than passing off. In other words, the level of proof required to establish infringement is lower than that of passing off. For proving infringement, one only needs to establish that there is deceptive similarity between the two marks. However, for proving passing off, there needs to be proof of deceptive similarity and confusion caused among the public, as well as damage to the reputation of the proprietor of the unregistered mark. For instance, if ‘A’ needs to prove that his mark ‘LAKME’ for cosmetics, has been infringed by the mark ’LIKEME’, then he must prove that the elements of deceptive similarity are met. If ‘A’ does not have a registered trademark, he must first prove that ‘LAKME’ has accrued certain goodwill, that it has a reputation. Second, he must prove that there is deceptive similarity. Thereafter, he must establish that there is confusion caused among the public, which causes them to assume ‘LAKME’ products, when they are actually buying ‘LIKEME’ products. Finally, A must show that there has been actual or reasonable loss suffered by the deceptive similarity of the infringing trademark.

Also, in a suit for passing off, the proprietor will need to prove continued, uninterrupted use of the trademark. However, by virtue of the second point discussed here, the proprietor of a registered trademark will not need to do so.

  1. International recognition:

Registering the trademark in India would grant some international benefits for the proprietor. First, as India is a signatory to the Paris Convention for the Protection of Industrial Property, registering a trademark in India would give certain priority and privilege when the proprietor would want to register the trademark in any other country which is a signatory to the Convention.  Secondly, by virtue of the Trademark Amendment Act of 2010, the proprietor may register the trademark in any country under the Madrid Protocol.

Therefore, registering a trademark is beneficial in many ways, and ensures the monopoly over the use of the mark, for related goods and services, in a less cumbersome manner than the system in place for unregistered trademarks.

We hope this article was a useful read. 

Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

This work is licensed under a Creative Commons Attribution-Non Commercial 3.0 Unported License

10 THINGS TO CONSIDER WHILE SELECTING A TRADEMARK

Choosing a good trademark

Choosing a good trademark is very important for any business. We have to consider many points in choosing a good trademark. 

1.    It should be easy to speak, spell, read and remember. 
Eg. Tata, Puma, Adidas

2.    Avoid selecting a trademark that is identical to other trademarks in the same line of business. However, you may select a trademark that is similar, but not confusingly similar. 
            Eg. You cannot select “InventiveTree”, to sell IP services under that      trademark, while an earlier trademark, “InvnTree” exists, and covers IP services. However, you can select “InnovationTree”, to sell IP services under that trademark, while an earlier trademark, “InvnTree” exists, and covers IP services.

3.    Do not select trademarks that are similar to well-known trademarks. 
Eg.Tata, Sony, Honda, Google,etc.

4.    Avoid selecting descriptive marks that merely describe the goods or services.
Eg. “Coffee shop” for a coffee bar, “Fragrances” for a store selling perfumes, “Running shoes” to sell shoes

5.    Avoid using popular family names.
Eg. ‘Aggarwals’, ‘Shetty’s’, ‘Kapoor’

6.    Make the mark fanciful and arbitrary. It is always preferred to make up or invent new words or phrases or use ordinary words that are not directly associated with the product. 
Eg. “Amul” for dairy products, “Myntra” for clothing.

7.    Avoid selecting adjectives which have a direct reference to the character or the quality of a product. 
Eg. “Perfect Apparel” for clothes, “Fast cars” for automobiles

8.     Avoid selecting a trademark that is being used by someone else in a foreign country. 
Eg. ”Banana Republic”, “Target”, “John Deere”

9.    Avoid selection of Geographical names, as nobody can have a monopoly right over it.
Eg. “Darjeeling tea” to sell tea, “Banaras Silk” to sell sarees

10.    Avoid adopting marks that contain scandalous or obscene matter or that are likely to hurt religious sentiments.
Eg. Use of holy books as trademarks are prohibited like “Ramayana” for incense sticks. 

We hope this article was a useful read. 

Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

This work is licensed under a Creative Commons Attribution-Non Commercial 3.0 Unported License

Indian States, Karnataka and Delhi top the India Innovation Index 2020 ranking

NITI Aayog released the second edition of India Innovation Index on January 20, 2021. The report provides a comprehensive overview of the innovation infrastructure and performance of the states and the union territories. It is also an objective of the report to instill a healthy competitiveness among the states and the union territories thereby promoting competitive federalism.

 The states and union territories were categorized into three categories, viz., Major states, Union Territories / City States and North-East and Hill States.

Among Major states, Karnataka topped the group followed by Maharashtra and Tamil Nadu. Among Union Territories / City States, Delhi took the pole position followed by Chandigarh and Daman & Diu. Finally, among NE and Hill states, Himachal Pradesh ranked first followed by Uttarakhand and Manipur.

Complete rankings:

Rank

Major States

Score

1

KARNATAKA

42.50

2

MAHARASHTRA

38.03

3

TAMIL NADU

37.91

4

TELANGANA

33.23

5

KERALA

30.58

6

HARYANA

25.81

7

ANDHRA PRADESH

24.19

8

GUJARAT

23.63

9

UTTAR PRADESH

22.85

10

PUNJAB

22.54

11

WEST BENGAL

21.69

12

RAJASTHAN

20.83

13

MADHYA PRADESH

20.82

14

ODISHA

18.94

15

JHARKHAND

17.12

16

CHHATTISGARH

15.77

17

BIHAR

14.48

 

 

Rank

UT/ City States

Score

1

DELHI

46.60

2

CHANDIGARH

38.57

3

DAMAN & DIU

26.76

4

PUDUCHERRY

25.23

5

GOA

24.92

6

DADRA & NAGAR HAVELI

22.74

7

ANDAMAN &
NICOBAR ISLANDS

18.89

8

JAMMU & KASHMIR

18.62

9

LAKSHADWEEP

11.71

 

 

Rank

NE/ Hill States

Score

1

HIMACHAL PRADESH 

25.06

2

UTTARAKHAND 

23.50

3

MANIPUR 

22.78

4

SIKKIM 

20.28

5

MIZORAM 

16.93

6

ASSAM 

16.38

7

ARUNACHAL
PRADESH

14.90

8

NAGALAND 

14.11

9

TRIPURA 

12.84

10

MEGHALAYA 

12.15

The report attributed the performance of Karnataka to its substantive number of venture capital deals, registered Geographical Indicators and ICT exports. Further, the report also added that Karnataka’s high inflow of FDI also enhanced the innovation capabilities of the state.

The report is a useful indicator for the states and union territories to retrospect their policies and prevailing innovation ecosystem and come up with more aggressive intellectual property policies and schemes to improve the innovation capabilities of their state.

We hope this article was a useful read. 

Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

This work is licensed under a Creative Commons Attribution-Non Commercial 3.0 Unported License

 

A Blown Fuse for Edison’s bulb? Lights out at the IPAB (Intellectual Property appellate board in India)

Hands hold and protect scales of justice and law concept vector illustration

In what is a cause for concern for inventors, proprietors and IP agents alike, a series of events from two branches of government has muddied the future for Intellectual Property registration in India. The first impact came via a decision passed by J. Ravindra Bhat of the Supreme Court, in a three-judge bench case in The International Association for Protection of Intellectual Property (India Group) v. Union of India and Ors., wherein the Court refused to extend the term of the incumbent Chairperson of the IPAB, J. (retd.) Manmohan Singh of the Delhi High Court.

The case ultimately involved interpretation of two prior cases alongside the Finance Act of 2017. The first issue before the court was whether the term of the incumbent Chairperson had been extended to 5 years by virtue of the decision of the Supreme Court in Madras Bar Association v. Union of India. This issue arose due to the fact that an Order by the Central Government had stated the end date of the term of J. (retd.) Manmohan Singh as 21.09.2019, i.e. the end of his tenure in a prior post held by him.

The Court therefore resorted to the fact that the incumbent Chairperson’s appointment had been made under the erstwhile 2017 Rules pertaining to the appointment of members to tribunals and relied on the decision passed in Rojer Mathew v. South Indian Bank Ltd., wherein all appointments were to be determined according to their parent act. Therefore, the term of the Chairperson of the IPAB was determined as per Section 86, i.e. upon reaching the age of 65 years. J. (retd.) Manmohan Singh turned 65 on September 22, 2019. Additionally, the Court held that the Finance Act 2017 only specified the outer limit for tenure of the Chairperson and noted that since the Central Government order had already specified that September 21, 2019 was to be the end of the term of the Chairperson of the IPAB, the outer limit would not be applicable.

An additional point of contention was with respect to the requirements under Section 84, and the effect of Section 87 on the same. The Applicant had contended that under Section 84 of the Trademark Act, the Board could not function without a judicial member, and since J. (retd.) Manmohan Singh was the only judicial member, his appointment had to be extended. The Court however noted that as per Section 84(3), the Chairperson can perform the duties of a Judicial member or a Technical member, as the case may be. The Court also pointed out that as per Section 87 of the Act, the Vice-Chairperson or any other senior-most member can carry out the functions of the Chairperson in his/her absence. In support of this point, the Court made note of the fact that the other technical members all possessed legal qualifications, and had significant experience in their field, such that they could perform the functions of the Chairperson with ease. Thus, the Court ruled out the final contention of the Applicant.

The next chapter in this story comes with the introduction of a draft bill in the Lok Sabha titled “The Tribunals Reforms (Rationalisation and Conditions of Service) Bill, 2021”. Of specific note is Chapters III, V, VII, VIII and IX, which pertain to the gambit of Intellectual Property Laws in force. In all these Chapters, amendments have been brought to substitute the use of the term ‘Appellate Board’ with that of the term ‘High Court’, wherever power has not been granted to the courts to hear the matter. In places where the courts are a permissible forum to approach, mention of the term ‘Appellate Board’ has been omitted. The needle in the haystack is that in the Copyright Act, mention is made of ‘Commercial Courts’, which has been defined to mean the Commercial Courts established under Section 3 of the Commercial Courts Act, 2015, or the commercial division of the High Court under Section 4 of the same Act.

The Statement of Object and Reasons provided in the Bill points to that fact that in spite of the existence of these tribunals, there has been a lack of speedy delivery of justice, and the Tribunals that are proposed to be shut down are ones where the public at large is not a litigant. Furthermore, such cases do not end at the tribunal level, and are litigated up till the Supreme Court. Thus, given the burden on the exchequer and the administrative costs involved in maintaining the specified tribunals, the Bill proposes to shut them down and transfer their functions to existing establishments.

What this means for the IP community is that existing as well as future cases that were originally dealt with by the IPAB will now have to be litigated at the High Courts. The high technicality of this field would pose a burden on respective High Courts in having to deal with appeals from the Intellectual Property offices, for the present judges may not possess the requisite abilities to deal with such technicalities. This would only frustrate the process and prolong the period for prosecuting an appeal from the decision of the Controller, which would hamper the innovative temper of the country.

Another possible oversight that the Bill poses is with regards to Section 64 of the Patents Act 1970. Section 64 reads thus:

“Subject to the provisions contained in this Act, a patent whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say…”

The Bill aims to delete the phrase “by the Appellate Board or”, which leaves the Section reading thus –

“Subject to the provisions contained in this Act, a patent whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say…”

A straightforward and simple reading of the amended Section leads to the interpretation that petitions seeking to revoke a patent may only be filed in a case of infringement filed by the original patent holder. The only other mechanism to revoke a patent would be under the provisions of Section 25 of the Patent Act, specifically sub-section (2), pertaining to the Post-Grant Opposition proceedings instituted before the Controller. Thus, parties would not be able to seek the revocation of a patent after the statutory period of 1 year, until and unless the patent holder institutes a case of patent infringement.

Given the numerous timelines that exist in both the national patent system as well as the international patent system, and the fact that it is humanly impossible to account for all possible prior art at the time of examination, it is detrimental to the objective of building a strong patent system to remove a mechanism that allows for the invalidation of a patent at any given point in time.

We hope this article was a useful read. 

Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

This work is licensed under a Creative Commons Attribution-Non Commercial 3.0 Unported License