IP Rights Guide: Trademarks, Patents, Designs in India

Intellectual Property Rights in India
Welcome
IP Rights in India
H K ACHARYA & COMPANY
Advocates, Patent & Trademark Attorneys
September 10, 2014 © HK Acharya & Company . All Rights Reserved

TRADE MARK
WHAT 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.
2

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
3

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.
4

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.
5

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.
6

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
7

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.
8

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…
9

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)
10

SUGGESTIONS:
1) Accurate and correct details in application
No Substantial amendment is allowed
1) To take immediate action against the
infringer (Delay/Acquisition) Section 33
2) Prior user Section 34
3) Well known mark is protected
4) Special Board for IP Matters
IPAB (For Rectification / Appeal Matters)
1) Quick Disposal of IP Matters
Direction given by Apex Court of India
7) Rectification application can be filed on
the basis of non user
11

INDUSTRIAL DESIGN
MEANING:
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.
12

WHAT CAN BE REGISTERED?
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)
13

Sec 4
If 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?
14

WHAT CAN NOT BE REGISTERED?
Sec 4
(c) Is not significantly distinguishable from known designs or
combination of known designs; or
(d) Comprises or contains scandalous or obscene matter
Shall not be registered
15

CONVENTION APPLICATION UNDER PARIS CONVENTION
 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.
16

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…
17

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
18

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
2) 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
19

PATENT
20

Where to file?
Type of Filing
Manually
Electronically
21

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
22

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
23

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/Revocation
24

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
25

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
26

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
27

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
28

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
29

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
30

Thank You
H K ACHARYA & COMPANY
HK Avenue, 19, Swastik Society, Navrangpura, Ahmedabad 380 009 INDIA
Phone : +91 79 26425258/ 5259 Fax : +91 79 26425262 / 5263
E-mail : info@hkindia.com Web : www.hkindia.com

IP Rights Guide: Trademarks, Patents, Designs in India

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IP Rights Guide: Trademarks, Patents, Designs in India