Articles, Brand Valuation, India, Intellectual Property, IP industry, IP Litigation, Trademark, Trademark Litigation

Trademark Opposition System in India: Grounds, Provisions and Procedure at Indian Patent Office (IPO)

Written by adminApril 29, 2020

Introduction

Once a trademark application is filed at Trademark Registry, it is examined by the Trademark Registrar with respect to distinctiveness of an applied mark. If the Trademark Registrar gets satisfied about the distinct nature of the applied mark and feels that there are no existing similar mark(s) in the register of Trademarks, then the applied mark is published into the Trademark Journal.

The published Trademark is opened for public inspection/opposition by third parties for a period of 04 months. In matters where no opposition is filed during this period, the mark gets registered. In another situation, where oppositions are filed, then the opposition proceedings are initiated and decision of the applied mark depends upon on the outcome of the opposition proceedings at the Trademark Registry.

Time duration for Filing Notice of Trademark Opposition

The notice of opposition may be filed within 03 months from the date of publication of a trademark in the Trademark Journal which is further extendable by 01 month (3+1). The time duration is not extendable under any circumstance. In matters where the notice of opposition gets filed after 03 months but before the expiry of 4th month, then it should be accompanied by a request for an extension by 01 month along with one or more suitable reasons for such delay in filing the opposition.

Who can file a Trademark Opposition?

Under Section 21 of Trade Mark Act, “Any person” who is having thinking that his/ her brand name/logo or reputation of a company could be damaged if the trademark application gets registered. He / She could opt to oppose such registration by filing a Notice of Opposition by prescribed form along with requisite fee.

There is no restriction on who may file an opposition. Anyone who is having an opinion that the published trademark application may create confusion among the public as having similar goods, may file for the opposition and wait for further trademark proceedings.

The opponent does not mandatorily have to be a registered proprietor of a trademark. He / She could be either a purchaser, customer or a member of the public likely to use the similar goods. The logic behind this opposition provision is that the opponent is not only representing himself / herself but also represents public because having two similar marks in the market dealing with same goods may result unnecessary confusion amongst the public. 

Grounds of trademark opposition

There are various grounds of Trademark Opposition on the basis of which one can file trademark opposition:

  • In case the trademark found similar or identical to an earlier or existing registered trademark;
  • In case the trademark is devoid of any distinctive character or descriptive in nature;
  • The trademark gets likely to deceive the public or cause confusion among the public;
  • In case the trade mark is of customary in the current language, or it comes under the established practices of business;
  • In case, the trademark mark becomes contrary to the trademark law or gets prohibited under the Emblem and Names Act, 1950;
  • The trademark mark that may contain subject matter which is likely to hurt religious sentiments of any class or section of people 

Advantages of Trademark Opposition

  1. Beneficial Remedy for TM proprietor: Trademark opposition becomes an efficient tool in stopping other trademark owners to continue similar marks as it may hinder/dilute their brand/logo image or may cause confusion in the market dealing with same kinds of goods.
  2. Public Consultation: As the trademark brands are created on the basis of public popularity and demand, it is mandatory to first consult the public before trademark approval regarding trademark applied and seeking for registration. 

Documents required to file a Trademark Opposition

The documents which are required at the time of filing Trademark Opposition are as under:

  • Applicant’s details: Full name, Address, Nationality etc. details of the applicant.
  • Power of Authorization (POA): POA allows the attorney or a trademark agent to file the trademark opposition on the behalf of the applicant.
  • Affidavit: Affidavit with the basic required information related with the trademark and its first usage date and proof of use/evidences.
  • Details regarding the opposed mark along with all possible grounds of oppositions: Detailed information related to the trademark against which the trademark opposition needs to be filed, e. all possible grounds for filing the opposition.

Different Stages in Trademark Opposition Proceedings

Stage 1 – Filing a Notice of Opposition/Filing a Counter-Statement

Any person may submit Notice of Opposition within 04 months of publication in TM Journal along with prescribed fees and forms. Once notice of opposition is submitted at the TM Registry, it is reviewed by the Registrar for formality requirements and the registrar accordingly issues the opposition notice to the applicant.

Stage 2 – Filing of counter statement

A counter-statement or reply to the notice of opposition is required to be filed within two (02) months. There is no extension to file a counter-statement provided by the TM Registry which clearly states that in case the Trademark applicant fails to submit a counter-statement within two (02) months of issuance of the Notice of opposition, the mark will be then deemed to be abandoned.

Stage 3 – Filing of Evidence in support of Opposition

Within two (02) months which may be further extendable by one (01) month of getting the counter-statement, the opponent is required to provide evidences in support of the Notice of Opposition in Affidavit form in order to strengthen the case. Opponent may also opt to waive filing an Affidavit if he / she wishes to rely on the facts which are stated in the Notice of Opposition. Whatever maybe the option selected by the opponent, the opponent need to inform the TM Registry and the applicant within the prescribed time. In case he / she does not inform the same, the opposition proceedings would be treated as abandoned.

Stage 4 – Filing of Evidence in support of Counter- Statement

Within two (02) months of getting evidence or information regarding waiver by the opponent, the Applicant need to file evidence in support of his / her submitted counter-statement/application. The Applicant here is also having an option to waive his right to submit any evidence. 

Stage 5 – Filing of Evidence in Reply

Within one (1) month of issuance of evidence or getting waiver, the Opponent again gets the option to submit additional evidence(s) in support of his / her opposition. This option is to acquire some sort of clarity in the proceedings, for proving rebut the evidence(s) produced by Applicant.

Stage 6 – Hearing

Within three (03) months of the finishing of the evidences, a hearing gets appointed and both the parties i.e. opponent and applicant are informed. After hearing both the parties and considering the evidences in detail, the TM Registrar takes a decision whether the trademark need to be accepted or not. However, in cases where either party i.e.  Opponent or Applicant aggrieved by the Registrar’s decision could challenge the Registrar’s decision and may file an appeal before the Intellectual Property Appellate Board (IPAB).

Notice of Opposition based on Trans-Border Reputation

Section 35 of the Indian Trade Marks Act, 1999 reveals a provision for protection of foreign trademarks on the basis of their international reputation under the term “Trans-border Reputation”. Indian Trade Marks Law acknowledges internationally renowned foreign brands and their goods and such brands/marks are given protection against identical and similar marks and owners of marks of these foreign brands are granted legal protection in India, irrespective of use of goods/services or registration of marks in India. The goodwill acquired by the manufacturer is not necessarily limited to the country where the goods are freely available because the goods, though not available, are widely advertised in newspapers periodical, magazines, and in other Media. The result is that though the goods are not available in the country, the goods and the mark under which they are sold acquires wide reputation. Some legal precedents from key decisions in India are as under: N.R. Dongre And Ors vs Whirlpool Corporation And Anr 1996; Indian Shaving Products Ltd. & Anr. vs Gift Pack & Anr. 1998; Milmet Oftho Industries & Ors. v. Allergan Inc. 2004.

Conclusion

India’s Trademark law provides provisions for trademark opposition – An efficient and effective method for preventing or revoking the grant of non-eligible marks. However, this provision of opposition proceedings leads to backlog of trademark prosecutions at the Indian Trademark Registry. The oppositions also delay in the process of grant of the marks.

Trademark opposition helps opponents in securing their logos/marks. The Indian Trademark law has provisions to oppose such unfair use, e.g. to oppose the deceptively similar marks. The owner/applicant of the deceptively similar mark could try to encash the immense goodwill and reputation earned by the opponent. If allowed, the mark would be registered as a registered mark in India, and the applicant of deceptive similar trademarks may not be able to protect their brand in India after registration. Therefore, in order to protect the reputation and goodwill earned by applicant’s mark, our recommendation is to file a: NOTICE OF OPPOSITION. 

Authors

Dr. Amit Goel (Director) can be reached at amit.goel@effectualservices.com and Jyoti Chauhan (Manager). For any query related to trademark opposition system in India, please feel free to contact at info@effectualservices.com.

Effectual Services is one of the fastest growing Intellectual Property Management Advisory firms offering IPR services (trademark, copyright, design and patent) and knowledge research services to Fortune 500 companies, law firms, start-ups, research institutes, universities, and venture capital/PE firms.

 

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Blog, Brand Valuation, India, Intellectual Property, Trademark, Trademark Litigation

INDIAN PERSPECTIVE ON TRADE MARK REGISTRATION FOR START-UPS

Written by adminJanuary 15, 2020

Introduction

Over the past few years, the term ‘Start-up’ is doing the rounds around us. With ‘Start-up India Scheme’ being introduced by the Government of India in the year 2016, many young entrepreneurs have been encouraged to set off their businesses. However, in order to gain market presence and flourish in the commerce, protection of Intellectual Property becomes crucial for start-ups and at the same time plays a very significant role to make their presence felt in the market and also to sustain in the competition.

The Government of India has introduced a number of benefits to start-ups with an objective of providing support to protect their Trade Marks, Ideas, Designs or any other Intellectual Property. Some of the benefits being offered by the Government to Start-ups in protecting their trade marks are enumerated herein below:

REBATE ON OFFICIAL FEES

The Government offers a rebate of fifty percent on official fees for filing trade marks for Start-ups or small scale industries. Further, a rebate on filing request for expedited processing of application is also being offered by the Government thus reducing their overall expenses in the initial years and at the same time providing aid in speedy processing of their application.

REBATE ON E-FILLING OF APPLICATIONS

In addition to rebate on statutory filing fees for Start-ups and small scale enterprises, the Government offers a further discount of ten percent on the official fee for filing applications online when compared to the physical filing of applications.

SCHEME FOR FACILITATING START-UPS

A Scheme for facilitating ‘Start-ups Intellectual Property Protection’, popularly known as the “SIPP Scheme”, has been introduced by the Government in order to help young entrepreneurs to have their trademarks or other Intellectual Property protected. The Government has empanelled Trade Mark Practitioners and Registered Trade Mark Agents as Facilitators under this Scheme who not only facilitate Start-ups in obtaining registration for their brands but also provide support in protecting and enforcing their trade mark rights. Under this scheme, the Start-ups are required to pay only the statutory fees while the entire facilitation costs are borne by the Government.

EXPEDITED REGISTRATION

The Government has also been endeavoring to reduce the total turn-around time to obtain trademark registration. The Government offers the facility of filing a request for an expeditious processing of application up to the grant of trade mark registration. Further, a rebate of fifty percent on the official fees is also offered to Start-ups and small scale enterprises for filing such request.

Conclusion

Start-ups have a limited number of resources, and therefore, it sometimes becomes an impediment for them to protect their business identity, to position their product and / or services and to gain reputation in the market. Thus, by offering benefits to the young entrepreneurs, the Government has taken significant steps in promoting the establishment and growth of Start-ups as well as facilitating registration and protection of their Intellectual Property in a speedy manner and at significantly reduced costs.

 

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Blog, Brand Valuation, Design, Digital Right Management, Hi Tech Patent Litigation, India, Intellectual Property, IP Licensing, IP Litigation, Trademark, Trademark Litigation

Trademark Filing in India- Importance and Analysis of the Market

Written by adminDecember 27, 2019

The Government of India has been taking significant steps to develop favorable arena for Trademark filing. With registered trademark, one can stop others from using the trademarked business name/logo/word with respect to goods or services. Trademarks serve as a mark for identification of good or services and provide a better way to reach out to the huge audience. Trademarks influence the customers’ purchasing decision, reputation and acceptability such brands represent. Trademarks function as a valuable asset as they serve as a life-long support for business expansion. Even the giant companies like Apple protect their important assets for the business by means of trademark.

Recent amendments in Trademark Rules 1999, notified in March 2017, not only simplified the trademark registration process but also removed a number of redundant provisions thus making the overall process extremely user-friendly. Major changes that were brought in by Trademark Amendment Rules 2017 include –

1) reduction of number of Forms needed to be filled from 74 existing forms to 8 consolidated forms.

2) Single application form isrequired to file all type of trademark applications.

3) inclusion of online mode of service.

4) concession in fees to start-ups, individuals and small enterprises.

Trademark Filling in India- Importance and Analysis of the Market By Amit Aggarwal
Co-Founder and Director, Effectual Services

http://www.licensingcorner.com/know-how/trademark-filling-in-india-importance-and-analysis-of-the-market/

Article was 1st published On Licensing Corner

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Trademark, Trademark Litigation

COMMON LAW RIGHTS: FIRST TO USE A TRADEMARK CAN PREVAIL OVER FIRST TO REGISTER

Written by adminDecember 10, 2018

Introduction

The well-settled doctrine of the trademarks law enumerates that the right of prior user of a mark prevails over the subsequent user in relation to same or similar goods or services, even though the subsequent user is the registered proprietor of the trademark. One can establish the ownership of a mark by using it in the course of trade and by substantiating prior use of the mark. Prior use of a trademark by its owner may build common law rights if he can prove continuous use of the mark in commerce. It may be however be noted that common law rights are limited to the geographical area in which the trademark is used.

 

Statutory provision governing the prior use right

The law provides a provision which enumerates that a registered proprietor of a mark is not entitled to restrain use of an identical or similar mark by a person vis-à-vis similar goods or services, who is continuously using the mark from an earlier date. Section 34 of the Trade Marks Act, 1999, mandates that the proprietor of a trade mark cannot interfere with the use of an identical trade mark by a person who has been continuously using the mark from a date prior-

  1. to the use of the first-mentioned trade mark in respect of the same or similar goods or services; or
  2. to the date of registration of the first-mentioned trade mark in respect of the same or similar goods or services.

‘Use’ refers to the continuous use of a trademark in relation to the goods or services for which it is applied and mere adoption (of the mark) is not sufficient to claim right over the mark. For an owner to prevail on the requirement of having the trademark rights, the date of first use must pre-date the date of registration by the other person. The key requirements under this provision are listed below:

  • The trademark must be used by its owner;
  • The trademark must be in continuous use within the geographical boundaries of India by its owner;
  • The use of the trademark must be in relation to the goods or services covered by the registered proprietor; and
  • The trademark must be in use from an earlier date as compared to the date of use of the mark by the registered proprietor.

Passing off

‘Passing off’ refers to an unauthorized use of a trademark which is considered to be of similar nature in relation to same goods and/or services and takes place in case of an unregistered trade mark. Thus, passing off happens when an identical trademark is used by a person other than the prior user, in relation to similar goods or services and is intended to deceive the members of trade and to tarnish the goodwill of the prior user. Here, prior user of the mark secures preferred rights as a result of continuous use of his trademark. In case of passing-off, an action may be initiated by the owner (or prior user) of a trade mark against the person or entity, who in the course of trade, misrepresents about its goods or services in a manner which makes the purchasers believe that they are emanating from the source of original owner. The essential features of a passing off action may include:

  • Misrepresentation of a trademark by other person in the course of trade;
  • Use of the mark must have resulted in the customers to believe that the goods or services are manufactured or provided by the original owner;
  • The trademark is used to tarnish the goodwill and reputation of the original owner and has caused irreparable cause and injury;
  • Use of the mark has caused confusion and deception among the members of trade and public

Common law remedy

As enumerated under Section 27 of the Act, common law rights mandate the trademark owner to take an action against any person for passing off their goods or services as the goods or services of another person. In general, the tort of passing off comprises the following elements:

  • Misrepresentation – The most significant principal behind the tort of passing off is an act of misrepresenting own goods and/or services as the goods and/or services emanating from another source;

  • Goodwill – Another element of passing off action is misrepresentation of goods and/or services which has resulted in confusion and deception in the market or is likely to cause confusion and deception in the market. Misrepresentation of goods or services by a person is intended to harm the business and goodwill of the actual owner; and

  • Damage – Due to misrepresentation of goods and/or services by a person other than the owner, severe loss and damage to the business and goodwill of the actual owner has been occurred.

The prior user may institute a passing off action against the opposite party if the aforementioned elements are satisfied. The rationale behind the law of passing off is to defend the rights of the owner and to protect him against any misuse of his trademark which results into the loss of goodwill and reputation. The onus lies upon the prior user to prove that the goods and/or services offered by him under his trademark have acquired substantial reputation in the market, which is calculated to be violated by the other person. However, before adjudicating a case, it is seen if the rival marks are identical and are being used in respect of identical goods or services. Further, the prior user must prove that use of the mark by the opposite party is likely to deceive and/or cause confusion in the course of trade. Upon reaching the conclusion that there has been a misrepresentation, no further proof or evidence is required to establish the tort of passing off.

Some recent judgements

Shambhu Nath & Brothers & Ors vs Imran Khan

The petitioners claimed to have adopted the trade mark TOOFAN (Device) in 1987. The petitioners filed an application for registration of the mark TOOFAN (Device) which was granted registration in April 2012. The respondent applied for registration of the trade mark SNJ TOOFAN claiming use since August 1, 2016. The Hon’ble High Court of Calcutta observed that upon comparing the rival marks and nature of goods the trademark SNJ TOOFAN of the defendant appears deceptively similar to the registered trademark TOOFAN of the petitioners. It was further established that the respondent is seeking to pass off his goods as that of the petitioners and resultantly, an order of injunction was passed in favour of the petitioners.

 

Turning Point Institute Private Limited vs M/s Turning Point

 

The plaintiffs, Turning Point Institute Private Limited claimed to have used the mark TP TURNING POINT (Device) in relation to their services since March 1994, whereas the defendants M/s Turning Point claimed to have used the mark TP TURNING POINT (Device) since 1998. The defendants’ mark got registered in November 2005. The plaintiffs have established their use since 1994 by adducing documentary evidencing corroborating their claims. Thus, rights to use the mark are conferred upon the plaintiffs owing to the prior use of the mark TP TURNING POINT (Device) by them.

 

It was observed by the Hon’ble Court on the basis of documentary evidence adduced by plaintiffs that use of the mark TP TURNING POINT (Device) by them in respect of their services may be considered distinctive and deserves to be protected as use of the same has been prior in point of time when compared to use of the mark by the defendants. The Hon’ble Court injuncted the defendants from using the mark TP TURNING POINT (Device), or any other similar word mark or device mark or as a part of their corporate name qua their services.

 

Conclusion

Our country acknowledges the common law rights according to which unregistered trademarks with prior use are protected against passing off. In such cases, to reach to a conclusion, it is seen whether the rival marks are similar to each other by assessing the essential features of the two marks. However, as per the well-established legal proposition, in order to assess the marks they should not be placed side by side, rather the marks should be viewed as a whole. Further, it should also be seen if there exists overall similarity between the marks and if use of the mark by the other person is likely to cause confusion or deception in the market and would result in serious loss and injury to the prior user. If the prior user of the mark is able to prove that there has been a misrepresentation of its mark which has created a dent on the reputation and goodwill earned by him through the incessant use of its mark, the common law rights will come to his aid and he may obtain relief by instituting a passing off action.

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Blog, Trademark, Trademark Litigation

The Importance of Registering Your Trademark

Written by adminApril 6, 2018

Whether people realize it or not, they deal with trademarks on an everyday basis. A “Trademark” is referred to as a different way of identifying with the brand. A trademark is better defined as a design, an explanation or anything that features the organization or the product that is assisted by the firm. Somewhere, these trademarks are also called “Service Marks”. For a better understanding, the term means any mark that recognizes its organization or its owner. Therefore, if you are running any business, then you must come up with unique and attractive trademarks that get registered in people’s minds. Let’s take a look at the importance of trademark registration in India:

Trademarks Establish your Brand to Stand Apart from Other Brands: A trademark should always be unique to your brand. We can take an example of assuming your logo as your trademark, however if your logo is very basic and simple, then your brand needs to be given a separate identity to distinguish it from anyone else. By having your distinct logo, anyone can easily identify which brand your product belongs to. For example, when you see a silver colour half bitten apple on any device, be it a laptop or a phone, you can easily identify that it’s an Apple product.

It Makes your Brand Unique: Let’s consider that you register your brand’s logo as your trademark. As per the assumption, every business needs a logo that stands out and is easy to recall or understand rather than having a logo that is difficult to remember and does not even explain your brand. Hence, every business would opt for the former. The reason for this is self- explanatory.

A Trademark is Forever: The Trademark registered by any firm remains with them forever. It can be explained better through this example. It’s like purchasing an ice-cream once and eating it forever. However, the ice-cream won’t last long so don’t even try to do it.

It Safeguards your Product’s Name: If you have any registered trademark, you can quickly show your ownership of the product. Having a registered trademark also allows you to utilize all the products registered under your ownership. It proves that the product belongs to that particular brand and you have the rights to sell, modify or use the commodity in whichever way you want.

A trademark Helps in Business Growth: So, let’s say your organization deals in computers but after putting in some lucrative hard work you might be thinking to expand your business and venture into the video or audio hardware business as well. If you are new to this business, then there are higher chances of failure, but if you have your registered trademark, people would trust your brand no matter which field you are expanding in.

Trademarks can be valuable: What if it is declared that trademarks can be valuable? Well, as your business grows over time, the value of the trademarks gets scaled up automatically. So, if your business grows, your trademark also grows in value.

Having a certified trademark can take you places, don’t believe it? Literally speaking, it does! When you keep the above points in mind and work accordingly, you will definitely see a drastic change in your business and also receive positive recognition in the market. You will enjoy the open ownership on several products and you can easily own it. Literally, you can stamp your trademark on every product of yours. Yes, that’s allowed! So, what’s stopping you? Keep yourself updated and file your trademark application today!

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