Top tips for trademark registration in India

By Ranjan Narula and Rajiv Suri

India: RNA, Technology and IP Attorneys

The Trademarks Registry has implemented various changes to enhance the trademark filing system in India. An efficient registration strategy should help rights holders to reap the benefits of these updates.

Until recently, the Indian Trademarks Registry often featured in the news for the wrong reasons, coming under fire for the slow progress of cases, loss of files and mass abandonment of trademark applications. However, this has begun to change. In the past two years the Trademarks Registry has taken effective measures to streamline the prosecution process. One change has been to digitise data records, making way for a new e-filing facility. To encourage online applications, the registry has reduced the filing fees for electronic documents by 10%. This has led to fewer errors in the records and has made life simpler for trademark practitioners and owners as any public information concerning a mark is now readily available at the click of a button.

The registry has also reduced the number of forms for trademark-related activities from 75 to only eight. This has simplified the filing process for applicants – a single form can now be used to cover multiple tasks.

Examination

Over the past six months, examinations of applications have considerably sped up. In fact, the registry has regularly examined and approved applications within one month of filing, reducing the average timeframe that it takes for a mark to be registered to under one year. The number of applications that meet preliminary refusal has also dropped, indicating that a robust examination procedure is expediting the registration process and reducing backlogs.

Table 1 demonstrates that in 2016 the number of filings had increased by approximately 35% since 2011. More impressive, the registry examined 59% more trademarks, with a 58% increase in the number of registrations and 39% increase in the number of disposed applications in the space of one year (from 2015 to 2016).

Madrid Protocol

In 2013 India became a signatory to the Madrid Protocol, which has become a favourable route for multinational corporations seeking to file trademarks in India. According to a report issued by the World Intellectual Property Organisation (WIPO), in 2014 India received 62.8% of its non-resident filings via the Madrid route, an increase on the 39% recorded in 2013. In 2015 India was ranked one of the top 10 designated countries in the world, following the United States (2,026), Germany (1,332) and China (865). In addition, the Trademarks Registry has been conducting timely examinations in order to comply with the Madrid Protocol’s 18-month deadline. According to the WIPO report, only 6% of applications in India received provisional refusals in 2015. The Madrid route is therefore successful in India and can form part of a wider registration strategy for rights holders seeking to protect trademarks worldwide. The refusal rate also shows that applicants wishing to designate India should first conduct searches to assess the availability of their mark.

Well-known marks

In 2003 India introduced a provision for the protection of well-known marks; however, it did not lay out a formal procedure for recording marks as well known. Recent amendments to the Trademark Rules provide for the declaration of a mark to be categorised as well known, which rights holders can apply for from the registrar. The application must be filed with:

  • a statement of case which builds on the rights enjoyed by the trademark owner;
  • evidence of the applicant’s rights and claims, including registrations in other jurisdictions; and
  • details of successful enforcement actions (if any) taken to protect interest in the mark (eg, if the mark has been declared as well known by an Indian court or the registrar of trademarks).

Once a mark has been granted well-known status by the registry, the rights holder can better safeguard its interests in cases of misuse against both similar and different goods.

The courts appear to look favourably on this new procedure. In a case concerning the SAMSUNG mark, the court observed that “Samsung cannot circumvent the procedure prescribed under Rule 124 of the Trade Mark Rules, 2017 with respect to determination of a trade mark as a well-known mark. Had the Defendants formally contested Samsung’s contention, this court could have passed a reasoned and well-weighed order regarding the maintainability of Samsung’s claim that the mark SAMSUNG is well-known”.

Specification

India follows the Nice Classification with regard to goods and services, and multi-class applications are permitted. However, the registrar generally prohibits class headings as specifications in applications. Therefore, applicants should list all of the goods and services that are of specific interest to them. For example, if the goods are to be covered in Class 25, they must be specifically covered under the class heading to include clothing, headgear and footwear. Applicants should thus specify every item that would fall within these three categories as classified under the sub-class (ie, 2501 onwards) as this provides for wider coverage.

Tips for brand owners

Although India is a member of the Madrid System and its legislation complies with the Agreement on Trade-Related Aspects of Intellectual Property Rights, there are a few peculiarities in the registration procedure. Rights holders should consider the following tips when selecting and prosecuting a mark:

  • Trademarks can be filed and registered on the basis of intent to use. Therefore, rights holders need not show actual use of a mark before registering it. However, if a rights holder claims use before filing an application, then under the new guidelines it must adduce an affidavit of use and provide documentary evidence of use within one month of filing. Non-submission of the affidavit may result in the application failing to meet the formalities check, which would delay further prosecution.
  • With regard to renewals, rights holders need not provide an affidavit with evidence of use of the mark in India. Trademarks can be renewed on the basis of a renewal request accompanied by official fees. In cases of multi-class applications, the official fees must be paid per class. Provided that the records are up to date, renewals can be effected within one week.
  • Although registering class headings as provided in the Nice Classification is prohibited, a wide specification of goods can be applied at registration. For this purpose, applicants can refer to the sub-class as provided under the Nice Classification.
  • Rights holders can check the availability of a mark and assess the risk of use and registration via the Trademark Office’s online database.
  • The online sale of goods is sufficient to claim use of a mark in India, even if the online store is located outside India, provided that the goods in question are available for sale to customers in India.
  • Recording a licence with the Trademark Office is not mandatory. Rights holders can enter into a licence agreement in writing and use will accrue to their benefit, even if the licence is not registered with the authorities.
  • There are no restrictions on the amount of royalties that can be paid to a licensor or a joint venture partner for the use of trademarks by an Indian partner or company.
  • With regard to the assignment of marks in India, the following must be specified in the assignment deed:
    • whether the assignment is with the business’s goodwill;
    • the actual monetary consideration (the expression ‘for valuable consideration’ is not acceptable); and
    • the date on which the assignment is effective.
  • Registered marks can be cancelled on the grounds of non-use if they have not been used in India for a continuous period of five years up to the date three months immediately preceding the filing of the cancellation application. The relevant date for the calculation of five years is the date on which the mark was entered in the register (ie, the date which appears as the sealing date on the registration certificate).

India has significantly improved the functioning of its IP office by taking digital initiatives to reduce the backlog of applications that has been a cause of concern for rights holders. Despite this, a large number of old applications and those that have received preliminary refusal remain. The shortage of hearing officers is also affecting opposition cases, while the pendency of opposition matters has increased at an alarming rate. Tackling these issues should be next on the agenda for the authorities.

Ranjan Narula

Managing partner

rnarula@rnaip.com

Ranjan Narula founded specialist IP law firm RNA in 2004 and is now managing partner. He has 25 years’ post-qualification experience working on contentious and non-contentious IP issues. Mr Narula has been practising as an advocate and patent attorney since 1991, handling a wide range of IP matters including patent contentious and non-contentious matters, and revocation actions before the Intellectual Property Appellate Board. He has a degree in industrial chemistry and is a registered patent agent. Mr Narula advises clients in various industries, including pharmaceuticals, information technology, telecoms, apparel, fast-moving consumer goods, confectionery, alcoholic and non-alcoholic beverages, and finance.

Rajiv Suri

Partner

rsuri@rnaip.com

Rajiv Suri is a partner with RNA, Technology and IP Attorneys. Mr Suri has a degree in science, specialising in chemistry. He obtained a law degree in 1994 and has since worked in the legal profession, gaining over 23 years of experience. Mr Suri has handled contentious and non-contentious issues and has particular expertise in handling commercial agreements relating to foreign collaborations and joint ventures, as well as related royalty payment and licensing issues. He has also authored articles for leading legal publications and has been a speaker at both international and national events.

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Issue 73