1 Legal framework
1.1 What is the statutory or other source of trademark rights?
The primary source of law governing trademarks in India is the Trade Marks Act, 1999. This statute and the Trade Marks Rules, 2017 form the basis of the regulatory regime in India.
In addition to the statute, official guidelines issued by the Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM), such as the Trade Marks Manual, govern several aspects of trademark law.
Besides these, other sources of trademark rights in India include:
- international multilateral conventions, such as the Paris Convention;
- national bilateral treaties;
- regional treaties;
- court decisions;
- decisions of the registrar of trademarks, as well as the Intellectual Property Appellate Board (IPAB); and
- commentaries on the subject written by academicians and experts.
1.2 How do trademark rights arise (ie, through use or registration)?
A person may acquire rights in a trademark either by its use in the course of trade in relation to certain goods and/ or service or by registration under the Trade Marks Act, 1999. The rights in a trademark may also be acquired by assignment or by inheritance. Judicial precedent in India has recognised the right of a prior user of a trademark as a superior right, which also prevails over the registered owner of a similar or identical trademark. If two or more similar or identical trademarks have been filed on the basis of future use (also referred to as ‘proposed to be used'), the trademark with the earlier application date is given priority.
1.3 What is the statutory or other source of the trademark registration scheme?
The statutory source of the trademark registration scheme in India is the Trade Marks Act, 1999 along with the Trade Marks Rules, 2017. Statutory protection of trademarks is administered by the CGPDTM, a government agency which reports to the Department of Industrial Policy and Promotion, under the Ministry of Commerce and Industry.
2 What constitutes a trademark?
2.1 What types of designations or other identifiers may serve as trademarks under the law?
According to Section 2(1) (zb) of the Trade Marks Act, 1999, a ‘trademark' means a mark which is capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others, and may include the shape of goods or their packaging and combinations of colours.
The types of trademarks that may be registered in India include the following:
- any name (including the personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark;
- an invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service;
- letters or numerals or any combination thereof;
- devices, including fancy devices or symbols;
- combinations of colours or even a single colour in combination with a word or device;
- the shape of goods or their packaging;
- marks constituting a three-dimensional sign; and
- sound marks when represented in conventional notation or described in words by being graphically represented.
2.2 What are the requirements for a designation or other identifier to function as a trademark?
The legal requirements to register a trademark under the Trade Marks Act, 1999 are as follows:
- The mark should be capable of being represented graphically (ie, in paper form);
- The mark should be capable of distinguishing the goods or services of one undertaking from those of others; and
- The mark should be used, or proposed to be used, in relation to goods or services for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods or services.
Anyone that claims rights in a trademark, as long as the trademark is pending registration, can use the symbol TM after the trademark (wherever applicable). Once the trademark is registered, the person may use the symbol ® after the trademark. The use of the TM and the ® symbol in connection with a trademark aims to inform potential infringers that the particular word/combination/logo is being claimed as a trademark.
2.3 What types of designations or other identifiers are ineligible to function as trademarks?
Any trademark which is devoid of distinctive character or which consists exclusively of signs or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, place of origin or time of production of the goods, or that have become customary in the current language or in the bona fide and established practices of the trade, may be considered ineligible to function as a trademark.
3 Registration procedure
3.1 Which governing body (ie, trademark office) controls the registration process?
Statutory protection of trademark rights in India is administered by the Office of the Controller General of Patents, Designs and Trade Marks, a government agency which reports to the Department of Industrial Policy and Promotion, under the Ministry of Commerce and Industry.
3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
Rules 10 and 11 of the Trade Marks Rules, 2017 govern the fees and forms for the purpose of trademark application, prosecution and registration in India. The relevant forms are to be accompanied by the prescribed fees and the requisite documents, as mentioned in the Trade Marks Act, 1999 and under the First Schedule of the Trade Marks Rules, 2017. The official fees are currently as follows:
|To file a new application on behalf of a company, trust or partnership||10,000||9,000|
|To file a new application on behalf of an individual or start-up or small enterprise||5,000||4,500|
|To file a renewal application for each class||10,000||9,000|
|To include a trademark in the list of well-known trademarks||Not allowed||100,000|
3.3 Does the trademark office use the Nice Classification scheme?
As stated under the Trade Marks Act, 1999, the registrar shall classify the goods and services in accordance with the Nice Classification.
3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
The registration of an application with class headings, as provided in the Nice Classification, is prohibited. Although a ‘class-wide' specification of goods may be applied for, it is advisable that an applicant limit the specifications of the goods and services that are of specific interest to its business, to avoid any objections on the broad nature of the specifications.
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?
A trademark may be filed on a ‘proposed to be used' basis. However, once the trademark proceeds to registration, the trademark is liable to be cancelled on the grounds of non-use. A third party may file for a cancellation action on the grounds that a trademark has not been used in India for a continuous period of five years up to the date three months immediately preceding filing of the cancellation application. (For instance, a trademark is registered on 1 January 2018 on a proposed to be used basis. but is not used until 31 December 2023. By March 2024, the trademark is liable to be cancelled on the grounds of non-use by a third party.)
3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
Once a trademark reaches the examination stage, objections may be raised on two grounds: absolute and relative. Under Section 11 of the Trade Marks Act, 1999, a trademark application is examined on relative grounds. A trademark may be refused registration if it is:
- similar or identical to an earlier trademark for the same or similar goods or services; or
- similar or identical to an earlier trademark in respect of different goods or services.
3.7 What types of examinations does the trademark office perform other than relative examination?
Besides relative grounds, a trademark application may be refused on absolute grounds for refusal, as follows:
- The mark is devoid of any distinctive character;
- The mark consists exclusively of marks or indications which may serve in trade to designate the kind, quantity, intended purpose, values, geographical origins or the time of productions of the foods or rendering of the service or other characteristics of the goods or services; or
- The mark consists exclusively of the shape of goods which results from the nature of the goods, or which is necessary to obtain a technical result or gives substantial value to the goods.
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?
Apart from absolute and relative grounds for refusal, including confusion with an earlier trademark, descriptiveness or genericness, a trademark may not be registered under Section 9(2) of the Trade Marks Act, 1999, in the following circumstances:
- The mark is of such a nature as to deceive the public or cause confusion;
- The mark contains or comprises any matter which is likely to hurt the religious susceptibilities of any class or section of the citizens of India;
- The mark comprises or contains scandalous or obscene matter; or
- The mark's use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
3.9 Is there a separate or supplemental register on which descriptive marks may be registered?
Judicial precedent has held that a descriptive word that lacks inherent distinctiveness may be refused registration under the Trade Marks Act, 1999.
However, considering that a descriptive trademark proceeds to registration on the basis of acquired distinctiveness, there is no separate or supplemental register for descriptive marks. According to Section 6 of the Trade Marks Act, 1999, only a single record - the Trademarks Register - is to be kept at the head office of the Trade Marks Registry, containing details of all registered trademarks, including:
- the names, addresses and description of the owner;
- notifications of assignment and transmissions;
- the names, addresses and descriptions of registered users; and
- conditions, limitations and such other matters as may be prescribed.
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)?
The Trade Marks Act, 1999 provides that a third party may object to the registration of a trademark once the trademark has been advertised in the Trademarks Journal.
3.11 Must the applicant use the trademark commercially in order to obtain a registration?
Trademarks may be filed and registered on the basis of intent to use (i.e., ‘proposed to be used' basis). Therefore, a trademark need not be used commercially prior to registration. However, registered trademarks may be cancelled by third parties if they have not been put to commercial use in India for a continuous period of five (5) years up to the date three (3) months immediately preceding filing of the cancellation application.
3.12 How much time does it typically take from filing an application to the first office action?
The first office action in a trademark application is usually issued in the first two (2) months from the date of filing of the application.
3.13 How much time does it typically take from filing an application to publication?
It takes approximately four (4) to six (6) months for a trademark application to proceed from filing to publication, if no serious objections are raised. The time may vary if a ‘show cause' hearing is scheduled for an application after the examination stage and prior to the publication stage.
4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
The Intellectual Property Appellate Board (IPAB) hears appeals against orders and decisions of the registrar of trademarks.
4.2 What is the procedure for appealing a trademark office refusal?
Under Section 91 of the Trade Marks Act, 1999, any person aggrieved by an order or decision of the registrar of trademarks may file an appeal with IPAB within three (3) months of receipt of the decision.
The procedure to file an appeal is described in the IPAB (Procedure) Rules, 2003. The format must be followed clearly, stating the grounds for filing, and the appeal must be verified in the prescribed manner. It must be accompanied by a copy of the order appealed against and the requisite fees.
An extension is also available for filing an appeal by way of a condonation of delay petition, along with the prescribed official fees. However, a condonation of appeal petition must contain genuine reasons for delay - for instance, delay on account of the appellant being based out of India or on account of retrieving relevant documentation to be annexed to the appeal.
Once an application has been filed, the deputy registrar of IPAB will scrutinise the application and serve a copy on the respondent. After receipt of the application, the respondent may file a counterstatement in duplicate.
The matter is heard by IPAB on the date assigned. If one of the parties does not appear, the case may be decided on the merits, decided ex parte or dismissed. If a decision is made ex parte or the application is dismissed, IPAB may restore or set aside the decision based on a petition filed within thirty (30) days of the date of the order (or on such terms that IPAB sees fit).
4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?
The order passed by IPAB can be appealed in the following manner:
- A review petition of the IPAB order may be filed via a petition to the IPAB Registry (within two (2) months of the date of the IPAB order); or
- A writ petition may be filed before the High Court with appropriate jurisdiction.
5.1 Can a third party oppose a trademark application?
The Trade Marks Act, 1999 prescribes that any third party can oppose the registration of a trademark, as long as it has sufficient cause to believe that the existence of the trademark application would lead to confusion or deception among the relevant trade public.
5.2 Who has standing to oppose a trademark application?
Section 21 of the Trade Marks Act, 1999 states that any third party may oppose the registration of a trademark in the prescribed manner and on payment of the prescribed fee as laid down under law. The third party need not necessarily be the registered owner of a trademark. Such a party can be a purchaser, customer or a member of the public likely to use the goods and/or services. As long as the third party has sufficient cause to believe that the existence of the trademark in question would lead to confusion among the relevant trade public, it may proceed to oppose the trademark.
5.3 What is the timeframe for opposing a trademark application?
A third party may oppose a trademark application via a notice of opposition, which must be filed within four months of the date of publication of the trademark in the Trademarks Journal. This period is not extendable under any circumstance.
5.4 Which body hears oppositions?
An opposition hearing board, comprised of hearing officers, is constituted by the Office of the Controller General of Patents, Designs and Trade Marks. A hearing officer conducts the opposition hearings at the respective office of the Trademarks Registry.
5.5 What is the process by which an opposition proceeds?
The trademark opposition procedure involves the following steps:
- Filing of notice of opposition/counterstatement: Any party wishing to oppose a trademark can do so by filing a notice of opposition on the prescribed form along with the prescribed fee within four months of publication of the trademark. A reply to the opposition, via a counterstatement, must be filed within two months of receipt of the notice of opposition. If the trademark applicant fails to file a counterstatement within the stipulated timeframe, the trademark shall be deemed abandoned. An extension to file a counterstatement is not available.
- Filing of evidence in support of opposition: Within two months of receiving the counterstatement, the opponent may provide evidence in support of the opposition in the form of an affidavit. The opponent may also write to the registrar and to the applicant, stating that no evidence will be adduced, but that the facts stated in the notice of opposition will be relied upon. If the opponent takes neither of the aforementioned steps, the opposition is deemed to have been abandoned.
- Filing of evidence in support of application: Within two months of receiving the evidence/intimation of waiver by the opponent, the applicant must file evidence in support of its application. The applicant also has the option to waive the right to submit any evidence by submitting a letter to the registrar and the opponent.
- Filing of evidence in reply: Within one month of receiving evidence/waiver, the opponent again has the option to file additional evidence in support of the opposition, in order to rebut the evidence produced by the applicant.
- Hearing: Based on the notice of opposition, counterstatement and evidence filed in support of the same, the registrar shall call for a hearing. The parties must notify the registrar of their intention to appear at the hearing. The matter is then heard by the registrar and decided on the merits. If the registrar decides in favour of the applicant, the trademark will be registered, and the registration certificate will be issued. If the registrar decides in favour of the opponent, then the trademark application will be rejected.
5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?
The decision of the registrar in the opposition proceedings can be challenged by filing an appeal before IPAB within three months of the date of receipt of the decision.
6 Rights of registered and unregistered marks
6.1 What, if any, protection is afforded to unregistered trademarks?
The Trade Marks Act, 1999 provides common law benefits to unregistered trademarks.
Even though Section 27 of the Trade Marks Act, 1999 provides no action for infringement of unregistered trademarks, it can still be protected by means of the common law tort of ‘passing off'. Section 27(2) of the Trade Marks Act, 1999 provides a remedy for the unauthorised use of an unregistered trademark. Passing off is a common law tort which is most commonly used to protect goodwill and reputation that is attached to unregistered trademarks. Passing off is based on the principle that a person may not pass off its goods or services as those of another person. In order for a passing off action to succeed, the owner of an unregistered trademark must be able to establish that its unregistered trademark has accrued goodwill or reputation in connection with the products, services or business with which it is used. The owner should also be able to establish that there is deceptive similarity between its unregistered trademark and the trademark in question, which is bound to lead to confusion among the general public.
6.2 What legal rights are conferred by a trademark registration?
A registered trademark confers a bundle of exclusive rights upon the registered owner under Section 28 of the Trade Marks Act, 1999. The owner of a registered trademark can prevent unauthorised use of the trademark in relation to the products or services for which it is registered.
Section 31 allows registration to be treated as prima facie evidence of validity. Section 28 also confers certain benefits on registration, including the following:
- Right to exclusive use: Registration of a trademark shall, if valid, grant the registered owner the exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered.
- Right to seek statutory remedy against infringement: The registered owner of a trademark can seek legal remedy in case of infringement of the trademark in the manner provided by the Trade Marks Act, 1999. The owner may obtain an injunction and, at its option, either damages or an account of profits by instituting a suit against the alleged infringer.
6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
Various precedents have held that a descriptive word which lacks inherent distinctiveness may be refused registration under the Trade Marks Act, 1999.
In order to trademark a descriptive mark, the owner of the trademark must show that the mark has acquired a ‘secondary meaning' in the marketplace. Accordingly, considering that a descriptive mark proceeds to registration based on acquired distinctiveness, there is no separate register for descriptive marks. According to Section 6 of the Trade Marks Act, 1999, only a single record – the Trademarks Register – shall be kept at the head office of the Trade Marks Registry, in which the details of all registered trademarks are recorded, including:
- the names, addresses and descriptions of the owners;
- notifications of assignment and transmissions;
- the names, addresses and descriptions of registered users; and
- conditions, limitations and such other matters as may be prescribed.
7 Enforcement and remedies for trademark infringement
7.1 What remedies are available against trademark infringement?
Trademark infringement is a violation of the exclusive rights attached to a registered trademark without the authorisation of the trademark owner or any licensees. Infringement may occur when one party, the infringer, uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to those which the registration covers. The owner of a trademark may commence civil legal proceedings against a party which infringes its registered trademark.
Sections 29 and 30 of the Trade Marks Act, 1999 deal with the infringement action as a remedy against unlawful and unauthorised use of a registered trademark.
The following remedies are available against trademark infringement:
- Civil remedies: Civil remedies can be sought by filing suit for infringement before the competent court. The following forms of civil reliefs are available:
- Interlocutory/temporary/ad interim injunction: Discretionary relief offered to the plaintiff that prohibits an action by a party to a lawsuit until disposal of the suit;
- Mareva injunction: a right to protect the interests of the plaintiff while the suit is pending, which restrains the defendant from disposing of its assets until the trial ends or the judgment is passed;
- Anton Piller order: an order passed to ensure that relevant documents and infringing articles are not removed or destroyed by the defendant, thus allowing the plaintiff to enter the premises of the defendant and take inspection of relevant documents and articles and make copies thereof or remove the same for safe custody;
- John Doe order: an order issued by the court to search and seize against unnamed/ unknown defendants;
- Permanent/perpetual injunction: a final order of a court that a person refrain from activities permanently or take actions in perpetuity;
- Damages or account of profits: damages are granted to the plaintiff to compensate for the losses suffered on account of the defendant's acts. Account of profits is an equitable remedy which requires the defendant to hand over to the plaintiff the actual profits made due to the infringing activities; and
- Delivery up and destruction: the handing over or destruction of the infringing goods by the defendant.
- Criminal remedies: The Trade Marks Act 1999 enumerates numerous offences in relation to falsifying and falsely applying a trademark, making or possessing instruments for falsifying trademarks, applying false trade descriptions and so on. The punishments for these offences vary, but the maximum punishment can be as severe as imprisonment for up to three (3) years, with or without a fine.
- Administrative remedies: The following administrative remedies are available against trademark infringement:
- opposition against a similar mark;
- rectification of a registered mark; and
- recordal with Customs to prevent the import or export of goods bearing the infringed trademark.
7.2 What remedies are available against trademark dilution?
As per Section 29(4) of the Trade Marks Act, 1999, trademark infringement in the form of dilution will occur only when a person uses a trademark that:
- is identical or similar to the registered trademark;
- is used in relation to goods or services other than those covered by the registered trademark; and
- takes unfair advantage of a registered trademark that has a reputation in India.
The doctrine of dilution gives further powers to the owner of a well-known trademark. Section 29(4) offers a remedy independent of the infringement action, allowing the owner of a well-known registered trademark to claim for civil, criminal and administrative remedies. The doctrine of dilution works at the discretion of the courts and according to the tests set by the courts. For instance, the court will consider the overall structure and the visual, phonetic and conceptual similarity of the marks, the nature of the community, the class of purchasers, the mode of purchase and other relevant circumstances. If the court finds a risk of dilution, the mark will not be allowed in the market, so as to avoid confusion.
7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
Besides infringement and dilution, courts in India also recognise passing off as a remedy under common law. Passing off is a tort actionable under common law and is mainly used to protect the goodwill attached to unregistered trademarks. Section 27 of the Trade Marks Act, 1999 provides that no infringement action will lie in respect of an unregistered trademark but recognises the common law rights of a trademark owner to take action against any person for passing off/misrepresenting its goods or services as those of another person, causing actual loss and damage to the business or goodwill of the trademark owner.
7.4 What is the procedure for pursuing claims for trademark infringement?
Violation of the exclusive rights granted to a registered owner, under the Trade Marks Act, 1999, to use its trademark in relation to the goods or services for which the mark is registered constitutes trademark infringement.
The procedure for trademark infringement follows the same stages as any other civil commercial litigation, which broadly includes the following:
- filing and ex parte orders;
- completion of pleadings (written statement, replication, replies to applications and so on) by both parties;
- arguments on interim applications (including application for injunctions);
- framing of issues to be proven by parties during trial;
- trial; and
- final arguments.
7.5 What typical defences are available to a defendant in trademark litigation?
The following defences are available to a defendant in trademark litigation:
- honest and good-faith adoption and use;
- prior use or adoption of the mark
- difference in goods and services;
- unrelated target audience who are the customers
- the nature of the product and its pricing;
- the absence of confusion, deception or similarity of the mark;
- delay by the plaintiff in initiating action due to prejudice against the defendant; and
- acquiescence by the plaintiff for not contesting the validity of the mark for a continuous period of five or more years.
7.6 What is the procedure for appealing a decision in trademark litigation?
Any party which is aggrieved by the decision of the court can challenge that decision before a higher appellate court. The determination of the appellate court will depend upon the subject matter and the monetary value of the case. Appeals are heard as follows:
- A judgment/order or decree passed by a district court can be challenged before the high court with jurisdiction over that district court;
- An appeal against an original judgment/order of a single bench of a high court can be challenged before the division bench of that high court as a ‘regular first appeal' and
- An appeal against a judgment or decree in a regular first appeal can be challenged before the Supreme Court, which is the highest appellate body.
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?
A trademark is a right in perpetuity, subject to renewal from time to time and to ‘use', to avoid cancellation for non-use. The length of the initial term of registration is 10 years, with renewals valid for subsequent 10-year periods. A registered trademark in India can be renewed an unlimited number of times, on payment of the renewal fees, failing which the trademark becomes liable to removal from the Trademarks Register.
8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?
In order to renew a registration, an application for renewal must be filed in the prescribed form along with the requisite fee. The procedure for filing an application for renewal of a trademark is as follows:
- A request to renew a trademark in India should be filed six months before the registration is due for renewal, accompanied by the requisite renewal fees in the prescribed form.
- A request to renew a trademark in India can also be filed six months after the actual date of expiration of the registration, if accompanied by the requisite renewal fees along with a surcharge fee, in the prescribed form.
- If a trademark has been removed from the Trademarks Register on the grounds of non-renewal, the trademark may be restored by filing an application within between six months and one year of the date of expiration of the registration, accompanied by the prescribed fee.
8.3 What are the grounds for cancelling a trademark registration?
A registered trademark is open to cancellation on the application of an aggrieved party if it was wrongly registered or if it wrongly remains on the Trademarks Register. The aggrieved party must show that the trademark was registered in contravention of, or has failed to observe a condition of, the Trade Marks Act, 1999. A cancellation application can be filed on the following grounds:
- The mark was not distinctive at the time of registration;
- The mark conflicts with a previously existing mark;
- Use of the mark is likely to cause confusion and deception among the trade and public;
- There is no bona fide intention to use the mark; or
- There has been no commercial use of the mark for a period of five years and three months from the date of issuance of the registration certificate.
8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?
The registrar of trademarks will not cancel a registration on his own initiative. However, the registrar may, subject to Rule 60 of the Trade Marks Rules, 2017, proceed to remove a trademark from the Trademarks Register for failure to file a renewal request within the prescribed timeframe.
8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?
Section 57 of the Trade Marks Act, 1999 states that any aggrieved party may file a cancellation petition before the registrar of trademarks or before the Intellectual Property Appellate Board (IPAB). After giving notice and the opportunity to be heard to both parties, the registrar or IPAB may cancel, vary, make or remove the trademark. The application must be filed in the prescribed manner and should be accompanied by a statement of case, in triplicate, setting out the nature of the applicant's interest, the facts upon which the case is based, and the relief sought.
8.6 What is the procedure for appealing a decision cancelling a registration?
A decision of the registrar of trademarks may be appealed before IPAB. A review petition can be filed at the Registry of IPAB against an order of IPAB. The Trade Marks Act, 1999 does not allow for an appeal against an order of IPAB. However, a writ petition may be brought before the high court with jurisdiction.
9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
In order to avoid ambiguity, a licence agreement must be well drafted so as to provide details of the exact rights being granted to, and the restrictions being imposed on the licensee.
A trademark licensing agreement has certain integral parts, including:
- the main clause, which includes the nature of the property, the trademarks licensed, the geographical territory, the term of the agreement and so on;
- consideration in the form of royalties and the percentage to be paid;
- a quality control clause, which includes established standards of use of the trademark;
- the grounds on which the licence can be revoked and the licensor can terminate the agreement; and
- provisions on dispute resolution.
9.2 Must trademark licences be recorded with the trademark office or other governing body?
It is not compulsory for a licence to be recorded at the Trademarks Registry. However, it is advisable to do so as, registration of the license affords statutory rights of action to the licensee in cases of infringement.
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?
The licensor must exercise proper quality control as per the contract over the use of the licensed trademark. However, under Section 50(1)(d) of the Trade Marks Act, 1999, if the licensor fails to do so, the registrar, either on his own or on an application by any person, may cancel the registration of the licence. Thus, the registrar may cancel the registration of a licence if the licensor has not exercised quality control accordingly.
Further, Section 50 of the Trade Marks Act, 1999 sets out various other factors for variation or cancellation of the registration of a licence, as follows:
- The licensee has used the trademark in a manner that does not accord with the agreement;
- The circumstances have changed since the date of registration;
- The licence applies to goods or services in relation to which the trademark is no longer registered; or
- The licensor or licensee has misrepresented or failed to disclose some material fact whose disclosure would not have justified the registration of the licence.
Accordingly, based on the aforementioned factors, the proprietary rights of the trademark will continue to be vested in the licensor, while registration of the licence may be cancelled. However, the registrar will give each party notice and an opportunity to be heard, before taking any adverse action.
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)?
As trademarks rights are jurisdictional in nature, Indian trademark law offers protection to trademarks used or registered in India. However, Indian courts have taken into consideration factors such as transborder reputation and goodwill in protecting a trademark that is used or registered in foreign countries.
Indian courts have consistently objected to the unlawful gain or profit from the reputation built by third parties around the world. Further, Indian courts have also objected to passing off, which is a tort actionable under common law and is mainly used to protect the goodwill attached to unregistered trademarks, including foreign trademarks.
10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
India is a signatory to the Madrid Protocol, which is a system administered by the World Intellectual Property Organization that allows an applicant to obtain a bundle of single jurisdiction trademark registrations based on an international registration.
In addition to the Madrid Protocol, a trademark applicant may file an application under the Paris Convention. The Paris Convention provides rights to member countries for the purpose of grant and protection of industrial property in a given member country. Through a convention trademark application, a party can seek to register a trademark claiming priority from a convention member country. If the trademark is registered, it shall be registered as of the date on which the application was made in the convention country.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.