Trademarks Comparative Guide for India Chapter Selector

1

Legal framework

1.1

What is the statutory or other source of trademark rights?

1.2

How do trademark rights arise (ie, through use or registration)?

1.3

What is the statutory or other source of the trademark registration scheme?

2

What constitutes a trademark?

2.1

What types of designations or other identifiers may serve as trademarks under the law?

2.2

What are the requirements for a designation or other identifier to function as a trademark?

2.3

What types of designations or other identifiers are ineligible to function as trademarks?

3

Registration procedure

3.1

Which governing body (ie, trademark office) controls the registration process?

3.2

What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?

3.3

Does the trademark office use the Nice Classification scheme?

3.4

Are ‘class-wide’ applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?

3.5

Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?

3.6

Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?

3.7

What types of examinations does the trademark office perform other than relative examination?

3.8

Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?

3.9

Is there a separate or supplemental register on which descriptive marks may be registered?

3.10

Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?

3.11

Must the applicant use the trademark commercially in order to obtain a registration?

3.12

How much time does it typically take from filing an application to the first office action?

3.13

How much time does it typically take from filing an application to publication?

4

Appeals

4.1

If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?

4.2

What is the procedure for appealing a trademark office refusal?

4.3

Can the reviewing body’s decision be appealed? If so, to what body and by what procedure?

5

Oppositions

5.1

Can a third party oppose a trademark application?

5.2

Who has standing to oppose a trademark application?

5.3

What is the timeframe for opposing a trademark application?

5.4

Which body hears oppositions?

5.5

What is the process by which an opposition proceeds?

5.6

Can the decision on the opposition be appealed? If so, to what body and by what procedure?

6

Rights of registered and unregistered marks

6.1

What, if any, protection is afforded to unregistered trademarks?

6.2

What legal rights are conferred by a trademark registration?

6.3

If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?

7

Enforcement and remedies for trademark infringement

7.1

What remedies are available against trademark infringement?

7.2

What remedies are available against trademark dilution?

7.3

Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?

7.4

What is the procedure for pursuing claims for trademark infringement?

7.5

What typical defences are available to a defendant in trademark litigation?

7.6

What is the procedure for appealing a decision in trademark litigation?

8

Maintenance and removal of registrations

8.1

What is the length of the initial term of registration and what is the length of renewal terms?

8.2

What, if anything, must be submitted to the trademark office to maintain or renew a registration?

8.3

What are the grounds for cancelling a trademark registration?

8.4

Under what circumstances may the trademark office cancel a registration on its own initiative?

8.5

What is the procedure by which a third party may seek cancellation of a trademark registration?

8.6

What is the procedure for appealing a decision cancelling a registration?

9

Licensing

9.1

Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?

9.2

Must trademark licences be recorded with the trademark office or other governing body?

9.3

Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?

10

Protection of foreign trademarks

10.1

Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?

10.2

Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?

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