India: Progressing Strides in Indian Trade Marks Law

The Indian trade marks law and practice underwent radical transformation in the recent past. The Trade Marks Act, 1999 notified on September 15, 2003 brought in a variety of progressive changes. This note summarizes some of the important amendments introduced by the new law.

Prior to the Trade Marks Act, 1999 service marks were not registrable in India. In the absence of service marks registration, a practice of filing service marks applications in Class 16 had evolved.

"Collective Marks" are recognized in the new law. A Collective Mark is defined as the one distinguishing the goods, or services of members of an association of persons from those of others.

Well-known marks find place in the new law. Well-known marks were recognized by the Indian Courts even prior to the amendment. To consider a mark as Well-Known the Registrar is no longer mandated to consider whether the Mark has been used in India, whether it has been registered or whether the application has been filed in India. It is neither necessary that the Mark be well known to the public at large in India.

Shape of goods is included in the definition of ‘mark’ under the new law. The inclusion of ‘packaging’ in the definition of mark has expanded the scope of registrable marks.

Combinations of colours find specific mention under the new law. This is yet another step forward in expanding the registrability criteria for trade marks.

A Company name, which violates the trademark rights of another is recognised as a ground for infringement under the new Act. Accordingly, Sections 20 and 22 of the Companies Act have been amended to the effect that registration of a company, whose name is identical with or too nearly resembles a registered trade mark or a mark pending registration, would not be allowed. Further, if inadvertently a company has been incorporated with a name, which resembles a trade mark then on an application made by the proprietor of the Mark, the name of the Company can be changed. This makes it imperative to conduct a company name search to secure the brand name against any unauthorised usage.

The term of Trade Mark registration has been increased from 7 years to 10 years under the new Act and the mark can be renewed from time to time by making the requisite application.

As a landmark change, the 1999 Act permits a Trade Mark, whether registered or unregistered, to be assigned "in gross" – with or without goodwill.

In a significant move, which is very material to overseas corporate entities having their offices in the metropolitan cities in India, the 1999 Act permits the plaintiff to file a suit in the District Court within the local limits of which it has its offices for gain or profit. This is a major deviation from the earlier position where a suit could be instituted only where the defendant had its principal place of business or offices for gain or profits or where the infringing activities had taken place.

The backlog of approximately 5 lakhs unexamined applications has been brought down in a phased manner. The Registries have been modernized and search facility has been made available online at all the five Trade Mark Registries. In most cases the first office action is issued within 3-6 months’ time. The time to reply to the office action is 1 month. Typically the Trade Marks Registry fixes a hearing concurrently with the issuance of the office action. Renewal of Trademarks is being done instantaneously in straightforward cases. Overall these changes are indeed progressive

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