Tag Archives: Trade Mark

Amendment in Trade Mark Fees

Recently, Controller General of Patents Design and Trade Marks, Mr. Chaitanya Prasad,has issued a Public Notice on August 7, 2014, wherein it has been put forth that, from August 1, 2014,Official Fees for filing a new Trade Mark application in one class has been increased from Rs. 3500/- to Rs. 4000/-. It was also mentioned that the fee for expedited examination has also been increased upto Rs. 20,000/-. The notification can be seen here.

All the Applicants/ Agents who have filed a new Trade Mark application or have requested for expedited examination are required to submit the deficiency of Rs. 500/- or Rs. 2,500/- before September 30, 2014.

It was further clarified that until and unless the deficiency is not cleared, the Registrar would not act on the application. And in case the deficiency is paid after September 30, 2014 the filing date would shift to the date on which balance fee has been paid.

It is to be noted that The Trade Mark Rules of 2002 have been amended twice i.e. 2010 and 2013.

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The Madrid System for the International Registration of Marks (Madrid System)

The “Madrid System” is a centrally administered system of obtaining a bundle of trademark registrations in different jurisdictions. It is governed by two treaties, the Madrid Agreement and the Madrid Protocol, and is administered by the International Bureau of WIPO in Geneva, Switzerland.  Madrid System permits the filing, registration and maintenance of trade mark rights in more than one jurisdiction provided that the target jurisdiction is a party to the system. It is a primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world. However the scope of Madrid system is different viz a viz  “European Community Trade Mark System” so far as creating an international registration is concerned because it provides a mechanism for obtaining trademark protection in many countries around the world rather than seeking protection separately in each individual country. It creates a bundle of national rights capable being administered centrally as opposed to the “European Community Trade Mark System” which creates International Registration.

More on WIPO: http://wipo.int/portal/index.html.en

INDIA as a Member:

Under the WIPO-administered Madrid system, a trademark owner may protect a mark in up to 88 territories known as Contracting Parties plus the European Union with its Community Trade Mark (CTM) by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs).  India also became a signatory to Madrid Protocol on April 8th, 2013 and subsequently acceded on July 8th, 2013, bringing the total number of members to 90.

For list of Members of Madrid System:

http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf

India as a member of Madrid System:

http://www.wipo.int/pressroom/en/articles/2013/article_0008.html

Working of the Madrid System:

The Madrid System has a mechanism under which a trademark owner having made an application for registration or having an existing registration in a member jurisdiction, which is called as ‘Basic Application / Registration’, may obtain “International Registration” for their trademark through World Intellectual Property Organisation (WIPO). Thereafter the owner of the mark may opt for securing the protection in any one or more member jurisdictions by virtue of the “International Registration”, which process is called as ‘Designation’. Further by virtue of Madrid protocol, it has become possible for a trademark owner to obtain ‘International Registration’ at the time of making an application for registration in any member jurisdiction, concurrently. A trademark owner can obtain trademark protection in any or all member states by filing one application in one jurisdiction with one set of fees and make any alterations in information (Name, Address etc.) and renew registration across all applicable jurisdictions through a single administrative process.

However as a corollary, the natural flipside of the aforementioned characteristic of Madrid System / Protocol is that in case a ‘Basic Registration / Application’ is refused / cancelled or withdrawn, the International registration would also get refused / cancelled or withdrawn to the same extent. For instance an application for registration of a mark for herbal products like soaps, face wash and shampoo is pending but the ‘Basic Application’ for shampoo is cancelled then the ‘International Registration’ of the same mark for shampoo will also get cancelled. Similarly if ‘Basic Application’ is refused the ‘International Registration’ will also get refused. This system whereby a ‘Basic Application’ is attacked for registerability is called ‘Central Attack’. In order to mitigate the effects a successful central attack, an ‘International Registration’ is transformed into a series of applications in each jurisdiction, a process known as ‘Transformation’, though this process is an expensive proposition but makes good sense apparently not only because of this advantage but also because the resulting applications will receive registration date of international registration as their filing date.

For Reference: http://www.wipo.int/madrid/en

FAQs

1. What is Madrid System?

Madrid System is a centrally administered system of obtaining a bundle of trademark registrations in different jurisdictions managed by the International Bureau of World Intellectual Property Organisation (WIPO) in Geneva, Switzerland. Under the WIPO-administered Madrid system, a trademark owner may protect a mark in over 80 countries plus the European Union with its Community Trade Mark (CTM) by filing one application, in one language.

2. What are the advantages of Madrid System / Protocol?

The Madrid Protocol is useful to obtain an international registration on a pending TM application, so that the owner can apply for the International Registration’ concurrently or immediately after filing an application in a member jurisdiction. In addition, it provides to the applicant, the following advantages:

  • One application in one place going through national Trade Mark Office to WIPO
  • One set of documents in one language, English, French or Spanish
  • One fee in one currency
  • One registration number, one renewal date covering more than one country
  • No need for legalisation of documents
  • Cost Effective
  • Only one request for change of name or address of the holder of the registration

3. When did Madrid System become effective in India?

India became a signatory to Madrid Protocol on April 8th, 2013 and subsequently acceded on July 8th, 2013, bringing the total number of members to 90.  With effect from 8th July 2013, registered and pending trade mark proprietors in India have become eligible to apply for International Registration of their mark in the designated member territories. Similarly, as of that date, foreign trademark owners can seek extension of protection of an international registration of a mark to India.

4. Who can file application under Madrid Protocol from India?

Any trademark who is a national of, has a domicile in, or has a real and effective industrial or commercial establishment in India can submit an international application under Madrid Protocol from India. Applicants wishing to use the Madrid system must either hold registration or pending application for trademark protection in Indian trademark registry before seeking international protection.

5. Can India be designated as a Contracting Party in International Registrations existing prior to India acceding to Madrid Protocol?

No. Protection of a mark under International registration, can only be extended to India in cases where an application for International Registration under Madrid Protocol is made after India acceding to Madrid Protocol i.e. 08th July 2013.

6. What is the duration of an international registration?

An international registration lasts for ten years from the date of registration and may be renewed for additional 10-year periods by paying a renewal fee to the International Bureau.

7. What is the cost for filing an international application under Madrid Protocol from India?

An international applicant must pay an amount of Rs.2000/- as Handling Fee to Indian TM Registry. This fee is charged for certifying international applications and transmitting them to the International Bureau. The basic fee for international registration is Swiss Francs(SFR) 653 for non color marks for upto 3 classes payable in Swiss Francs.  A supplementary fee of SFR 100 is payable for each extra class. In addition to the basic application fee, an additional supplementary fee of approximately SFR 100 for each designated country is charged. Though in certain cases the fee may vary as some of the member countries like Japan and India have fixed individual Fee.  There is also a provision of expanding the geographical scope of protection of your mark by adding more countries at later stages.

8. After the mark in an international application registers, can the holder of the international registration request an extension of protection in additional countries?

Yes. The holder of an international registration may designate additional Contracting Parties in a subsequent designation. A subsequent designation is a request by the holder of an international registration for an extension of protection of its international registration to additional Contracting Parties.

9. In what way is Community Trade Mark Registration different from International Registration under Madrid System?

CTM: A single registration creates a single unified right throughout the European Union. The trademark that is the subject of a CTM application must be registrable in all EU Member States; if a ground for rejection applies in just one of the EU Member States, the mark cannot be registered as a CTM, although conversion to national applications is possible in some cases.

MP: Under the Protocol, an application creates rights in those member countries that grant protection through registration. Even if the IR application is refused protection in some designated countries, the application can proceed to registration in the remaining designated countries.

CTM: CTM applications are only examined on absolute grounds. For example, likelihood of confusion due to a prior-filed registration is not a ground for refusal of CTM applications.

MP: An application can be refused registration in the examination process by any of the designated countries under their national laws. Grounds for refusal in member countries may be more extensive than for a CTM application and may include, among other things, refusal based on likelihood of confusion.

CTM: A CTM registration is issued by the Office for Harmonization in the Internal Market (OHIM).

MP: The World Intellectual Property Organization (WIPO) maintains the International Register of marks and administers the Madrid Protocol System.

CTM: There are no restrictions on applicants that can apply for a CTM.  A CTM applicant is not required to have a commercial establishment in the EU.

MP: An applicant for an IR must be a national of, or domiciled in, one of the member countries of the Protocol or have an industrial or commercial establishment in one of the member countries (its “home country”).

CTM: The filing fee for a CTM application covers all 27 countries; no choice of countries is allowed.

MP: Fees for an application filed under the Madrid Protocol are dependent on the number of countries designated by the applicant.

CTM: The initial CTM registration period is ten years from the date of filing the application and is independent of any other application or registration.

MP: The initial IR period is ten years from filing; however, it is dependent upon a valid home application or registration for the first five years.

CTM: A CTM applicant is free to file for whatever goods and services it wishes. Priority under the Paris Convention based on a previously filed application may be claimed, but additional goods and services may also be covered (without priority).

MP: In an application filed under the Madrid Protocol, the description of goods and services must be no broader than those in the home application regardless of whether priority is claimed.

CTM: It is possible to obtain an injunction against infringement that covers the entire EU.

MP: Action for infringement is taken through the courts of the country concerned and generally any injunction extends to that country only.

About the Author: Mr. Sharad Saini, Trade Mark Attorney at Khurana & Khurana and can be reached at: sharad@khuranaandkhurana.com

Follow us on Twitter: @KnKIPLaw.

Removal from Trademarks Register Due to Non-Use

Is using and/or commercializing a registered Trade Mark really necessary in India or is simply sitting over it and renewing the same periodically enough to maintain the mark and gain from the protection it accords. Poorva Khandekar, an intern at Khurana & Khurana and 4’th year law student from KIIT Law School, Bhubaneswar explores the nuances of use of a registered mark in view of Section 47 of the Indian Trademarks Act, 1999.

We presently live in an era where time is money and therefore loss of time is equal to loss of money. I begin this piece of writing with this mundane phrase as it might turn out to be of specific interest to persons (artificial and natural) who lose money on unnecessary trademark litigations which could have been avoided, to a certain extent.

Section 47 of the Trademarks Act of 1999 puts forth two interesting scenarios regarding removal of a registered trademark from the trademark register. Under 47(1)(a), if it is proved that the trademark was not registered with a bona fide interest and was not put into use three months prior to the date of application then the trademark may be removed from the register.

Clause 2 of the same section discusses about removal of trademark in case it is left unused for a period of at least five years. This period is calculated from the date of registration upto three months before the filing of application for removal.

The problem area that we have identified today is significant but avoidable. While filing the form TM-1 (the details about the trademark), the status of use of the trademark is to be mentioned. Many of the trademarks are registered as “proposed to be used” as allowed by section 46 of the Act. This information is available to everybody and is generally relied upon by people. As mentioned above, if the mark is not put to use within five years then it can be removed from the register.

Looking through a few recent (or, fairly recent) cases on these points will help us get a clearer picture of the scenario. To begin with, it is essential to understand the meaning awarded to the word “use” in section 47. In a case of Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd.[1], the Supreme Court laid down that the word ‘use’ may encompass actions other than actual sale of goods or services. The intention to abandon the trademark has to be established by the party who approaches the court for removal of the mark from register. In some other cases[2] the Apex Court has observed that the mere presence of a mark in the register does not by itself prove its use at all. Also, the court has categorized promotional activity in India as a pre-cursor of the market reputation without having effected sales of the products in this country. These endorsements were given the status of validity for proving the knowledge of reputation to the other party and the dishonest intention thereof.

In a Delhi High Court judgment of Pfizer Products Inc. vs Rajesh Chopra[3], the plaintiffs filed a suit for infringement and passing off action on the defendants. In the instant case the propriety rights of a drug sold under the name of “Geodon” were challenged. The plaintiff registered the same in India on 18th July, 1996. The defendant, on the other hand, claimed proprietorship of ‘Geodon’ and use of the mark since 1st of June, 2003. One of the major contentions of the defendants was that the plaintiffs have failed to show use of the trademark since the registration and hence the mark is liable to be struck off from the register so as to leave a room for the defendant to market his product under the trademark. The balance of convenience favoured the plaintiff as it is a global player, selling the drugs by this name in more than 40 countries. Though, sale of those drugs in India could not be established, the importance of copying the trademark of such a global product in the field of medicine was established. Hence the trademark was not removed from the register.

In Vishnudas Trading as Vishnadas Kishendas Vs. Vazir Sultan Tobacco Co. Limited[4], the Supreme court laid down that “a trader or manufacturer who is trading in or manufacturing only one or some of the articles or goods under a trade mark and has no bona fide intention to trade in or manufacture the other articles or goods falling under that class but has obtained registration of its trade mark under that class which covers several other articles or goods, held, registration liable to be rectified by confining it to the specific articles or goods which are actually intended to be traded in or manufactured.” In the instant case, the application was filed to limit the use of trademark “Charminar” to the manufactured class of cigarettes. The registration was obtained in zarda and quiwam too, in which the applicant wished to use the trademark. The court applied the provisions of non-use and ordered rectification in the register.

In another case decided on 6th January 2012[5], a trademark of a company “Kellogg Company” possessing global recognition was directed to be removed by IPAB for non-use for 22 years. The appellants claimed that their products were basically chewing gum, bubble gum and dairy products which were not likely to cause confusion in the minds of consumer for the products of breakfast global giant “Kellogg”.

After scrutiny of these cases, we have a few suggestions to make. If you are a trademark owner, then the time to change the status of your trademark from “proposed to be used” to used shall depend on these few factor:

  • You have started popularizing your products/services, though the manufacturing has not yet started.
  • You have started proceeds relating to establish a market, like- hiring an authorized agent for marketing, etc.

For the purpose of initiating this change in the register, Form TM-16 has to be submitted along with a fee of Rs. 500 to the Trademark Registry. If you wish to initiate this change in someone else’s trademark then resort to Form-26 which has to be submitted with a fee of Rs.3000.

Thus, filing of this change (by Form-16) may result in enabling information to other parties who wish to take you to the court of law for “non-use” of the registered trademark even though it is already being used. Hence, saving your time and the time of court which spent on litigations pertaining to non-use.


[1] AIR 2003 SC 3377

[2] Corn Products Refining Co. v. Shangrila Food Products Ltd and Consolidated Foods Corporation vs Brandon And Company Private Ltd. [AIR 1965 Bom 35]

[3] 2007 (35) PTC 59 Del

[4] 1997 4 SCC 201

[5] M/s Pops Foods Products (P) Ltd. v. M/s Kellogg Co.

E-Filing of Trade Mark Application and Related Documents with Indian Trade Marks Registry to be made mandatory

Indian Trade Marks Registry has on 03rd November 2011, published on their website Gazette Notification dated October 13,2011 which states that after expiry of forty five days from the date (which falls on 18 Dec 2011) on which this notification is published, the e-filing of trade marks applications and related documents will be made mandatory after considerations of objections and suggestions received from public in this regard. As an impact of this, if one files a Trade Mark application online, he/she will:

• Receive a trade mark application number immediately

• Receive an On-line verification to assure error-free filing and obtain the filing date

• Speed up the registration process

• Print the completed application data and receive fee acknowledgement

• Save the data locally onto the PC

• Be able to recall the contact details for subsequent applications

 

About the Author: Mr. Sagar Gupta, a Trade Mark Associate at Khurana & Khurana, IP Attorneys and can be reached: Sagar@khuranaandkhurana.com.

No Exclusive Trademark Rights to Lord Krishna’s name: Delhi High Court

Delhi High Court’s Division Bench recently upheld the Single Judge Bench Judgment declining the claim of the Appellant, Bhole Baba Milk Food Industries Ltd. (a diary products manufacturer) of exclusive right over the use of word ‘Krishna’ for dairy products.

The Appellant has obtained registration of the mark “KRISHNA” having pictorial reflection of Lord Krishna standing on a lotus flower for dairy products falling in Class-29 of the Trade Mark Act vide Trade Mark No. 597519 and has been manufacturing ghee, milk products and dairy products since 1992. The Appellant has also obtained registration of the label mark “KRISHNA” in the same class vide Trade Mark Nos 783679 and 599070. Following is the representation of the mark 597519 and 599070 respectively

The Appellant accused Parul Food Specialties Ltd (Respondent, also a diary products manufacturer), of infringing on its trademark “Krishna” The Respondent were selling ghee under the mark “PARUL’S LORD KRISHNA”, “Parul’s” and “Lord” having a font so small that only the word “KRISHNA” catches the eye due to its prominence. The Appellant further asserted that the word “KRISHNA” has become a “well known” within the meaning of Section 2(zg) of Trade Marks Act and has acquired secondary distinctiveness (as evidenced from their sales figures).

On January 19, 2011, the Single Judge, Justice Rajiv Shakhdar refused to give exclusive trademark rights of the word “Krishna” and declined to grant injunctive relief to stop the Respondent from using mark “Krishna”, but directed the Respondent to change the font size and to print the words “PARUL’S LORD” with the same prominence as the word “KRISHNA” so that it would not be confused with the products of the appellants.

The Appellant thereon appealed to the Division Bench, consisting of Justice Pradeep Nandrajog and Justice Sunil Gaur. The division bench upheld  the single-judge bench’s order against Bhola Baba’s plea and said: “We are in agreement with the view taken by the learned single judge not only for the reasons given by the learned single judge but the additional reason, as in the instant case, a deity may be associated with a particular kind of goods.  It is common knowledge that Lord Krishna, as a child, was known for his love of milk and butter and thus Lord Krishna is closely linked with milk and butter and this would certainly dilute a proprietary claim projected by any person, in relation to Krishna with dairy products”.

The Division bench further highlighted that the registration obtained by the Appellant is not per-se to the word “KRISHNA” but is to the word “KRISHNA” written in a distinctive form. The Division bench concluded that “The distinctiveness to which the appellant can lay a claim is to what it has got registered as a whole and such registration cannot possibly give an exclusive statutory right to the appellant qua a particular word of common origin”.

Judgment of the Division Bench is tentative and the Final decision post trial would be with respect to the evidence led.

The Complete judgment of the Division Bench can be read from here and the complete Single-Judge Bench’s Order is available here.

The Indian Trade Marks Registry has recently uploaded on their website a list of 86 marks which have been prohibited from grant of registration and the list can be viewed by clicking here.

About the Author: Mr. Vinayak Aher, Trade Mark Attorney in Khurana & Khurana and can be reached: Trademark@khuranaandkhurana.com.