TRADEMARK LAW

India's obligations under the TRIPS Agreement for protection of trademarks, inter alia, include
protection to distinguishing marks, recognition of service marks, indefinite periodical renewal of
registration, abolition of compulsory licensing of trademarks, etc.

With the globalization of trade, brand names, trade names, marks, etc. have attained an immense value
that require uniform minimum standards of protection and efficient procedures for enforcement as
were recognised under the TRIPS. In view of the same, extensive review and consequential amendment
of the old Indian Trade and Merchandise Marks Act, 1958 was carried out and the new Trade Marks Act,
1999 was enacted. The said Act of 1999, with subsequent amendments, conforms to the TRIPS and is in
accordance with the international systems and practices.

The Trade Marks Act provides, inter alia, for registration of service marks, filing of multiclass
applications, increasing the term of registration of a trademark to ten years as well as recognition of the
concept of well-known marks, etc. The Indian judiciary has been proactive in the protection of
trademarks, and it has extended the protection under the trademarks law to Domain Names as
demonstrated in landmark cases of Tata Sons Ltd. v. Manu Kosuri & Ors, [90 (2001) DLT 659] and Yahoo
Inc. v. Akash Arora [1999 PTC 201].

India, being a common law country, follows not only the codified law, but also common law principles,
and as such provides for infringement as well as passing off actions against violation of trademarks.
Section 135 of the Trade Marks Act recognises both infringement as well as passing off actions.

Well-known Trademark and Trans Border Reputation

India recognises the concept of the "Well-known Trademark" and the "Principle of Trans Border
Reputation". A well-known Trademark in relation to any goods or services means a mark that has
become so to the substantial segment of the public, which uses such goods or receives such services
such that the use of such a mark in relation to other goods and services is likely to be taken as indicating
a connection between the two marks.

Trans Border Reputation concept was recognised and discussed by the Apex Indian Court in the
landmark case of N. R. Dongre v. Whirlpool (1996) 5SCC 714. The Trademark "WHIRLPOOL" was held to
have acquired reputation and goodwill in India. The Mark "WHIRLPOOL" was also held to have become
associated in the minds of the public with Whirlpool Corporation on account of circulation of the
advertisements in the magazines despite no evidence of actual sale. Hence, the trademark WHIRLPOOL
was held to have acquired trans-border reputation which enjoys protection in India, irrespective of its
actual user or registration in India.

Legal Remedies against Infringement and/or Passing off

Under the Trade Marks Act, both civil and criminal remedies are simultaneously available against
infringement and passing off.

Infringement of trademark is violation of the exclusive rights granted to the registered proprietor of the
trademark to use the same. A trademark is said to be infringed by a person, who, not being a permitted
user, uses an identical/ similar/ deceptively similar mark to the registered trademark without the
authorization of the registered proprietor of the trademark. However, it is pertinent to note that the
Indian trademark law protects the vested rights of a prior user against a registered proprietor which is
based on common law principles.

Passing off is a common law tort used to enforce unregistered trademark rights. Passing off essentially
occurs where the reputation in the trademark of party A is misappropriated by party B, such that party B
misrepresents as being the owner of the trademark or having some affiliation/nexus with party A,
thereby damaging the goodwill of party A. For an action of passing off, registration of a trademark is
irrelevant.

Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action against
violation of trademarks in India. In India, a combined civil action for infringement of trademark and
passing off can be initiated.

Significantly, infringement of a trademark is a cognizable offence and criminal proceedings can be

Relief granted by Courts in Suits for Infringement and Passing off

The relief which a court may usually grant in a suit for infringement or passing off includes permanent
and interim injunction, damages or account of profits, delivery of the infringing goods for destruction
and cost of the legal proceedings.
The order of interim injunction may be passed ex parte or after notice. The Interim reliefs in the suit may
also include order for:

Appointment of a local commissioner, which is akin to an "Anton Pillar Order", for search, seizure and
preservation of infringing goods, account books and preparation of inventory, etc.

Restraining the infringer from disposing of or dealing with the assets in a manner which may adversely
affect plaintiff's ability to recover damages, costs or other pecuniary remedies which may be finally
awarded to the plaintiff.

Offences and Penalties

In case of a criminal action for infringement or passing off, the offence is punishable with imprisonment
for a term which shall not be less than six months but which may extend to three years and fine which
shall not be less than INR 50,000 but may extend to INR 200,000.

Procedure of Registration of Trademark in India

The procedure for registration of a trademark in India is given below:

In order to fulfill the obligations of any treaty, convention or arrangement with a country or countries
that are members of inter-governmental organizations, which accord to Indian citizens similar privileges
as granted to their own citizens, the Central Government notifies such countries to be Convention
Countries. In case of an application for registration of a trademark made in any of the Convention
countries, a priority date can be claimed with regard to the application in India, provided that the
application is made within six months of the application having been filed in the Convention country.
The Government has notified and extended this privilege of priority to the members who have ratified
the Paris Convention on Protection of Industrial Property.

Madrid Protocol

India Parliament has passed the Trade Marks (Amendment) Bill, 2009 for enacting special provisions
relating to protection of trademarks through international registration under the Madrid Protocol. As
per the Amendment Bill, from the date of the international registration of a trademark where India has
been designated or the date of the recording in the register of the International Bureau about the
extension of the protection resulting from an international registration of a trademark to India, the
protection of the trademark in India shall be the same as if the trademark had been registered in India.
The Amendment Bill is yet to be notified.

Classification of goods and services

For the purpose of classification of goods and services for registration of trademarks, India follows the
International Classification of Goods and Services (Nice Classification) published by World Intellectual
Property Organization (WIPO). For the purpose of classification of the figurative elements of marks, India
follows the Vienna Agreement.

Opposition proceedings

After advertisement of a trademark in the Trade Marks Journal, (which is available online at the website
of Office of Registrar of Trademarks) an opposition challenging the application for registration can be
filed by any person within a period of 3 months (which may be extended by a period not exceeding 1
month).

Renewal of registration
The trademark is initially registered for a period of 10 years, which is calculated from the date of filing of
the application and in case of convention application, from the date of priority. The registration is
required to be renewed within 6 months before the date of expiry of the registration, i.e., 10 years from
the date of the application or subsequent renewals.

The failure in renewing the trademark within the stipulated period of time and a grace period of
maximum 1 year granted for restoration of the trademark, automatically leads to removal of the
trademark from the Register of Trademarks.

Rectification of Trademark

An aggrieved person may file an application before the Registrar of Trademarks or to the Intellectual
Property Appellate Board (IPAB) for cancellation or varying the registration of the trademark on the
ground of any contravention or failure to observe a condition entered on the Register in relation
thereto.

The application for rectification can also be filed for removal of an entry made in Register, without
sufficient cause or wrongly remaining on the Register and for correction of any error or defect in any
entry in the Register.

Assignment, Transmission and Licensing of Trademarks in India

"Assignment" means an assignment in writing by an act of the parties concerned. While in case of
licensing, the right in the trademark continues to vest with the proprietor, the assignment of the
trademark leads to a change in the ownership of the mark. A registered trademark is assignable with or
without the goodwill in respect of all or only some of the goods/services for which the mark is
registered. India is a member to TRIPS and Article 21 of the TRIPS dealing with Licensing and Assignment
mandates that "... the owner of a registered trademark shall have the right to assign the trademark with
or without the transfer of the business to which the trademark belongs." Section 39 of the (Indian)
Trade Marks Act, 1999 allows for the assignment of an unregistered trademark with or without the
goodwill of the business concerned.

Indian law contains embargo on the assignments of trademark, whether registered or unregistered,
whereby multiple exclusive rights would be created in more than one person which would result in
deception/confusion. However, the assignment with limitations imposed, such as goods to be sold in
different markets, i.e., within India or for exports are valid. The Registrar is authorized to issue a
certificate of validity of the proposed assignment on a statement of case by the proprietor of a
registered trademark who proposes to assign the mark. The said certificate as to validity is conclusive
unless vitiated by fraud.

Copyright
Indian copyright law is at parity with the international standards as contained in TRIPS. The (Indian)
Copyright Act, 1957, pursuant to the amendments in 1999, 2002 and 2012, fully reflects the Berne
Convention for Protection of Literary and Artistic Works, 1886 and the Universal Copyrights Convention,
to which India is a party. India is also a party to the Geneva Convention for the Protection of Rights of
Producers of Phonograms and is an active member of the World Intellectual Property Organization
(WIPO) and United Nations Educational, Scientific and Cultural Organization (UNESCO).

"Work" protected in India

Under the Copyright Act, 1957 the term "work" includes an artistic work comprising of a painting, a
sculpture, a drawing (including a diagram, a map, a chart or plan), an engraving, a photograph, a work of
architecture or artistic craftsmanship, dramatic work, literary work (including computer programmes,
tables, compilations and computer databases), musical work (including music as well as graphical
notations), sound recording and cinematographic film.

In order to keep pace with the global requirement of harmonization, the Copyright Act, 1957 has
brought the copyright law in India in line with the developments in the information technology industry,
whether it is in the field of satellite broadcasting or computer software or digital technology. The
amended law has also made provisions to protect performer's rights as envisaged in the Rome
Convention.

Registration of Copyright

In India, the registration of copyright is not mandatory as the registration is treated as mere recordal of
a fact. The registration does not create or confer any new right and is not a prerequisite for initiating
action against infringement. The view has been upheld by the Indian courts in a catena of judgments.

Need for Registration of Copyright

The awareness of Intellectual Property (IP) Laws is considerably low among the enforcement authorities
in India, and most of the IP litigation is confined to metropolitan cities. Despite the fact that the
registration of copyright is not mandatory in India and is protectable through the International Copyright
Order, 1999, it is advisable to register the copyright as the copyright registration certificate is accepted
as a "proof of ownership" in courts and by police authorities, and acted upon smoothly by them.
Enforcement of Copyright in India

The law of copyright in India not only provides for civil remedies in the form of permanent injunction,
damages or accounts of profits, delivery of the infringing material for destruction and cost of the legal
proceedings. etc. but also makes instances of infringement of copyright, a cognizable offence punishable
with imprisonment for a term which shall not be less than six months but which may extend to three
years with a fine which shall not be less than Rs 50,000 (approx. US$ 800) but may extend to Rs 2,00,000
(approx. US$ 3,000). For the second and subsequent offences, there are provisions for enhanced fine
and punishment under the Copyright Act. The (Indian) Copyright Act, 1957 gives power to the police
authorities to register the Complaint (First Information Report, ie, FIR) and act on its own to arrest the
accused, search the premises of the accused and seize the infringing material without any intervention
of the court.

Protection to Foreign Works in India

Copyright of "works" of foreign nationals, whose countries are member of Convention Countries to
which India is a signatory, are protected against any infringement of their "works" in India through the
International Copyright Order, 1999. The Indian courts have also been pro-active for the protection of
copyright of foreign authors/owners, which includes software, motion pictures including screen play of
motion pictures and database.

The Government of India is also taking initiative to combat piracy in the software industry, motion
pictures and the music industry along with players in the industry through their associations and
organizations like NASSCOM (National Association of Software and Service Companies), NIAPC (National
Initiative Against Piracy and Counterfeiting) etc.

Licensing and Assignment of Copyright

Copyright in any work, present or future, can only be assigned or licensed in writing by the copyright
owner or his duly authorised agent.

Duration/Term of Copyright

In the case of original literary, dramatic, musical and artistic works, the duration of copyright is the
lifetime of the author or artist, and 60 years counted from the year following the death of the author.

In the case of cinematograph films, sound recordings, posthumous publications, anonymous and
pseudonymous publications, works of government and works of international organisations are
protected for a period of 60 years which is counted from the year following the date of publication.

PATENT LAW

The history of Patent law in India starts from 1911 when the Indian Patents and Designs Act, 1911 was
enacted. The present Patents Act, 1970 came into force in the year 1972, amending and consolidating
the existing law relating to Patents in India. The Patents Act, 1970 was again amended by the Patents
(Amendment) Act, 2005, wherein product patent was extended to all fields of technology including food,
drugs, chemicals and micro organisms. After the amendment, the provisions relating to Exclusive
Marketing Rights (EMRs) have been repealed, and a provision for enabling grant of compulsory license
has been introduced. The provisions relating to pre-grant and post-grant opposition have been also
introduced.

An invention relating to a product or a process that is new, involving inventive step and capable of
industrial application can be patented in India. However, it must not fall into the category of inventions
that are non-patentable as provided under Section 3 and 4 of the (Indian) Patents Act, 1970. In India, a
patent application can be filed, either alone or jointly, by true and first inventor or his assignee.

Procedure for Grant of a Patent in India

After filing the application for the grant of patent, a request for examination is required to be made for
examination of the application by the Indian Patent Office. After the First Examination Report is issued,
the Applicant is given an opportunity to meet the objections raised in the report. The Applicant has to
comply with the requirements within 12 months from the issuance of the First Examination Report. If
the requirements of the first examination report are not complied with within the prescribed period of
12 months, then the application is treated to have been abandoned by the applicant. After the removal
of objections and compliance of requirements, the patent is granted and notified in the Patent Office
Journal. The process of the grant of patent in India can also be understood from the following flow
chart:
 d

Filing of Application for Grant of Patent in India by Foreigners

India being a signatory to the Paris Convention for the Protection of Industrial Property, 1883 and the
Patent Cooperation Treaty (PCT), 1970, a foreign entity can adopt any of the aforesaid routes for filing of
application for grant of patent in India.

Where an application for grant of patent in respect of an invention in a Convention Country has been
filed, then similar application can also be filed in India for grant of patent by such applicant or the legal
representative or assignee of such person within twelve months from the date on which the basic
application was made in the Convention Country i.e. the home country. The priority date in such a case
is considered as the date of making of the basic application.

Pre-Grant Opposition

A representation for pre-grant opposition can be filed by any person under Section 11A of the Patents
Act, 1970 within six months from the date of publication of the application, as amended (the "Patents
Act") or before the grant of patent. The grounds on which the representation can be filed are provided
under Section 25(1) of the Patents Act. There is no fee for filing representation for pre-grant opposition.
Representation for pre-grant opposition can be filed even though no request for examination has been
filed. However, the representation will be considered only when a request for examination is received
within the prescribed period.

Post-Grant Opposition

Any interested person can file post-grant opposition within twelve months from the date of publication
of the grant of patent in the official journal of the patent office.

Grounds for Opposition

Some of the grounds for filing pre-and post-grant opposition are as under:

Patent wrongfully obtained;

Prior publication;

The invention was publicly known or publicly used in India before the priority date of that claim;

The invention is obvious and does not involve any inventive step;

That the subject of any claim is not an invention within the meaning of this Act, or is not patentable
under this Act;

Insufficient disclosure of the invention or the method by which it is to be performed;

That in the case of a patent granted on convention application, the application for patent was not made
within twelve months from the date of the first application for protection for the invention made in a
convention country or in India;

That the complete specification does not disclose or wrongly mentions the source and geographical
origin of biological material used for the invention; and

That the invention was anticipated having regard to the knowledge, oral or otherwise, available within
any local or indigenous community in India or elsewhere.

Term of Patent

The term of every patent in India is twenty years from the date of filing the patent application,
irrespective of whether it is filed with provisional or complete specification. However, in case of
applications filed under the Patent Cooperative Treaty (PCT), the term of twenty years begins from the
priority date.

Payment of Renewal Fee

It is important to note that a patentee has to renew the patent every year by paying the renewal fee,
which can be paid every year or in lump sum.
Restoration of Patent

A request for restoration of patent can be filed within eighteen months from the date of cessation of
patent along with the prescribed fee. After the receipt of the request, the matter is notified in the
official journal for further processing of the request.

Patent of Biological Material

If the invention uses a biological material which is new, it is essential to deposit the same in the
International Depository Authority ("IDA") prior to the filing of the application in India in order to
supplement the description. If such biological materials are already known, in such a case it is not
essential to deposit the same. The IDA in India located at Chandigarh is known as Institute of Microbial
Technology (IMTECH).

What are the Rights granted by Patent?

If the grant of the patent is for a product, then the patentee has a right to prevent others from making,
using, offering for sale, selling or importing the patented product in India. If the patent is for a process,
then the patentee has the right to prevent others from using the process, using the product directly
obtained by the process, offering for sale, selling or importing the product in India directly obtained by
the process.

Before filing an application for grant of patent in India, it is important to note "What is not Patentable in
India?" Following i.e. an invention which is (a) frivolous, (b) obvious, (c) contrary to well established
natural laws, (d) contrary to law, (e) morality, (f) injurious to public health, (g) a mere discovery of a
scientific principle, (h) the formulation of an abstract theory, (i) a mere discovery of any new property or
new use for a known substance or process, machine or apparatus, (j) a substance obtained by a mere
admixture resulting only in the aggregation of the properties of the components thereof or a process for
producing such substance, (k) a mere arrangement or rearrangement or duplication of known devices,
(l) a method of agriculture or horticulture and (m) inventions relating to atomic energy, are not
patentable in India.

Maintainability of Secrecy by the Indian Patent Office (IPO)

All patent applications are kept secret up to eighteen months from the date of filing or priority date,
whichever is earlier, and thereafter they are published in the Official Journal of the Patent Office
published every week. After such publication of the patent application, public can inspect the
documents and may take the photocopy thereof on the payment of the prescribed fee.

Compulsory Licensing

One of the most important aspects of Indian Patents Act, 1970, is compulsory licensing of the patent
subject to the fulfillment of certain conditions. At any time after the expiration of three years from the
date of the sealing of a patent, any person interested may make an application to the Controller of
Patents for grant of compulsory license of the patent, subject to the fulfillment of following conditions,
i.e.

the reasonable requirements of the public with respect to the patented invention have not been
satisfied; or

that the patented invention is not available to the public at a reasonable price; or

that the patented invention is not worked in the territory of India.

It is further important to note that an application for compulsory licensing may be made by any person
notwithstanding that he is already the holder of a license under the patent.

For the purpose of compulsory licensing, no person can be stopped from alleging that the reasonable
requirements of the public with respect to the patented invention are not satisfied or that the patented
invention is not available to the public at a reasonable price by reason of any admission made by him,
whether in such a licence or by reason of his having accepted such a licence.

The Controller, if satisfied that the reasonable requirements of the public with respect to the patented
invention have not been satisfied or that the patented invention is not available to the public at a
reasonable price, may order the patentee to grant a licence upon such terms as he may deem fit.
However, before the grant of a compulsory license, the Controller of Patents shall take into account
following factors:

The nature of invention;

The time elapsed, since the sealing of the patent;

The measures already taken by the patentee or the licensee to make full use of the invention;

The ability of the applicant to work the invention to the public advantage;

The capacity of the applicant to undertake the risk in providing capital and working the invention, if the
application for compulsory license is granted;

As to the fact whether the applicant has made efforts to obtain a license from the patentee on
reasonable terms and conditions;

National emergency or other circumstances of extreme urgency;

Public non commercial use;

Establishment of a ground of anti competitive practices adopted by the patentee.

Infringement of Patent

Patent infringement proceedings can only be initiated after grant of patent in India but may include a
claim retrospectively from the date of publication of the application for grant of the patent.
Infringement of a patent consists of the unauthorized making, importing, using, offering for sale or
selling any patented invention within the India. Under the (Indian) Patents Act, 1970 only a civil action
can be initiated in a Court of Law. Further, a suit for infringement can be defended on various grounds
including the grounds on which a patent cannot be granted in India and based on such defence,
revocation of Patent can also be claimed.