Highlights

TRADE MARKS

The Trade Marks Act, 1999 was brought into force on September 15, 2003. Its salient features are:

• Filing of multiclass applications
• Registration of service marks
• Registration of collective marks
• Widening the definition of trade mark by including shape of goods, packaging and combination of colours
• Protection of well-known trade marks and tests for determination of such marks
• Single Register of trade marks instead of parts A and B
• Assignment of unregistered trade marks without goodwill of business
• Recognition of use of a registered trade mark by an unregistered licensee
• Enlargement of term of registration to ten years
• Widening of scope of infringement of registered trade marks to cover dissimilar goods / services, provided the registered mark has a reputation in India
• Creation of Intellectual Property Appellate Board to hear appeals from the decisions of the Registrar

A few additional points of note pertaining to Trade Mark Searches, Prosecution, Opposition, Cancellation and Litigation are:

Trade Mark Search

Common law searches are not possible and the Registry has no facility to conduct device mark and proprietor-wise searches. However, Remfry’s with their in-house database and specialized software can carry out device mark and proprietor searches limited to published records. On a standard turnaround basis, at least seven to eight working days are required for providing search results. On an expedited basis, five working days are required.

Prosecution

India being a ‘first to use’ country, date of first use of a mark assumes great significance. Continuous and extensive use of a mark adds to its distinctiveness and helps in overcoming distinctiveness / conflict objections effectively. Given the current trend, one can expect a registration certificate to be issued within two years from the date of filing of application.

Opposition

The time period for filing an opposition is three months from the date of publication of a mark in the Trade Marks Journal. On request, this period can be extended by one month. In the absence of use and prior registration of a trade mark in India, an opposition can be based on prior use and registration of the mark in other countries.

Cancellation

A cancellation action can be filed by person aggrieved by the existence of a trade mark on the Register on either of the following grounds –

1. If a trade mark is registered without any bona fide intention of use and there has been no bona fide use in relation to the goods or services covered by the mark up to a period of three months before the date of the cancellation action.
2. If a continuous period of five years or more from the date of registration has elapsed during which there has been no bona fide use of a registered trade mark.

Litigation

Civil Remedies

Under civil remedies, a suit for infringement can be filed on the basis of statutory rights. In the absence of registration, an action for passing off at common law can be brought against a misuser based upon the reputation and goodwill vesting in the unregistered mark. Transborder or spillover reputation can be relied upon especially if a mark has not been used in India. The period of limitation for filing a suit for infringement / passing off is three years from the date of the impugned act. As passing off is an act of deceit and tort and, every time such act or deceit is committed, a fresh cause of action accrues in favour of the aggrieved . In a significant departure from the old law, a suit for infringement can be instituted even at the place where the plaintiff resides or carries on his business.

Criminal Remedies

Under criminal remedies, a complaint can be filed either with the
(i) Court of a Magistrate against unknown persons with a view to obtain and provide directions to the Police to register a case, investigate and carry out search and seizure operation/s; or
(ii) local Police directly. Upon being satisfied that the named entity is committing any of the offences complained of, the Police may, without the order of the Court, carry out a ‘Search & Seizure’ operation. The local Police may insist on an opinion from the Registrar of Trade Marks (as provided under the Trade Marks Act, 1999) before proceeding in the matter. The proceedings, after the ‘Search and Seizure’ progress to their logical conclusion. Further prosecution entails framing of charges, examination of witnesses and arguments..

PATENTS

Amendments to the Patent Rules by the Patent (Amendment) Rules, 2006 were made effective on May 5, 2006. A brief note on Patent Filing, Prosecution, Opposition, Grant and Litigation in light of the Patent Act and Rules is as follows:

Filing

• Product patents in all fields of technology are allowable. Accordingly, inventions in areas such as chemicals, food and pharmaceuticals hitherto entitled to process patents have now become eligible for product patent protection. However, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations, and other derivatives of a known substance have been excluded from patentability unless they differ significantly in properties with regard to efficacy.
• A national phase application under Patent Cooperation Treaty (PCT) can be filed within 31 months of the priority date or filing date whichever is earlier. No extension of time is possible.
• An additional official fee is levied in all cases where the pages of specification exceed 30 and the number of claims exceeds 10.
• Official fee may be payable through ‘electronic means’.
• An application shall ordinarily be published within one month from the date of expiry of 18 months from the date of filing of the application or the date of the priority of the application, whichever is earlier or one month from the date of request for early publication.
• The timeframe for filing a request for Examination of an application filed on or after January 1, 2005 has been changed from 36 to 48 months from the date of the priority of the application or date of filing of the application, whichever is earlier. While the request for Examination may be filed any time before such timeframe, the application shall be examined only after publication.
• Timeframe for furnishing proof of right has been increased from three months to six months after filing of the application.
• Timeframe for filing details of corresponding foreign applications is six months as opposed to three months from the date of filing of the application.
• Timeframe for filing prosecution details such as information relating to objections, if any, in respect of novelty and patentability of the invention or any other particulars on corresponding foreign applications increased to six months as opposed to three months from the date of communication from the Controller.
• No Indian resident can make an application outside India for the grant of a Patent for an invention unless an application for a patent for the same invention has been made first in India. Alternatively, a written permission may be sought from the Patent Office by filing a formal request. The Controller of Patents shall dispose of such application ordinarily within 21 days. If the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permission without the prior consent of the Central Government.

Prosecution

• The first examination report is issued within six months from the date of the request for examination or six months from the date of publication, whichever is later.
• Timeframe for placing an application in order for grant has been increased to 12 months (non-extendable) as opposed to 6 months (extendable by 3 months) from the issuance of the First Examination Report.
• A ‘new invention’ means “any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or does not form part of the state of the art”.
• An ‘inventive step’ is defined as a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.
• A ‘pharmaceutical substance” is defined as “any new entity involving one or more inventive steps”.

Opposition

• A post-grant opposition can be filed within 1 year from the date of publication of grant of the patent. However, at the pre-grant stage, there is a provision for making a representation against the grant of a patent on a patent application anytime after the publication of the application and prior to the grant of the application. The Controller upon consideration of representation of the opponents shall give notice to the applicant along with copy of such representation. The period for filing the statement and evidence, if any, by the applicant has been increased from one month to three months from the date of such notice.

Grant

• Requirement of payment of sealing fee has been dispensed with.
• The patent certificate is ordinarily issued within 7 days from the date of grant of patent.
• Term of a patent is twenty years from the date of filing of the application. In case of International Applications filed under PCT designating India, the term of a patent is twenty years from the International filing date accorded under PCT.
• Compulsory licenses can be granted (in line with the Doha Declaration) for export of medicines to countries which have insufficient or lack of manufacturing capacity for meeting public health emergencies.
• It is necessary to file statement of working every year after grant of a patent. While failure to file it does not result in lapse thereof, failure to furnish it – or to furnish information on a periodical statement regarding commercial working of a patent required by the patent office – is punishable with fine which may extend to Rupees one million. A patent needs to be worked if interim injunction is desired in infringement proceedings.

Litigation

• Common law rights are not available for patents. A patent is a territorial right and has to be formally granted in India before any action for infringement can be initiated.
• The damages in an infringement action can be claimed retrospectively from the date of publication and in the case of Black Box applications, damages can be claimed only from the date of grant.
• A patent holder in respect of a Black Box application is prohibited from instituting an infringement suit against enterprises which have made a significant investment and were producing and marketing the concerned product prior to January 1, 2005 and which continue to manufacture the product covered by the patent on the date of grant of the patent. The patent holder shall only be entitled to receive reasonable royalty from such enterprises.
• The following are useful to establish the factum of infringement:

1. Product inserts
2. Expert analysis (tests) along with affidavit/s of technical person(s) (Plaintiff’s or third party)
3. Conduct of Defendant (such as opposing grant of the patent, filing writ against Controller’s decision etc.)

• Reliefs granted by Courts in infringement proceedings include Injunction, Damages and Delivery-up/ Destruction of goods.
• With effect from April 02, 2007, an appeal shall lie to the Appellate Board instead of High Court from the decision, order or direction of the Controller of Patents.

DESIGNS

The Designs Act, 2000 was brought into force on May 11, 2001. Its key features are:

• Amplification of scope of a design to include composition of lines or colours applied to any article whether in two or three dimensional form.
• Introduction of concept of “absolute novelty” in place of “local novelty” for assessing the registrability of a design.
• Claiming of priority from a design application filed in the UK or any of the other convention countries or group of countries or countries which are members of inter-governmental organisations. This provision operates prospectively.
• Adoption of International Classification of Industrial Designs based on the Locarno Classification.
• Publication of all registered designs along with the representation of the article.
• Inspection of a registered design and obtaining its certified copy.
• Restoration of a lapsed design within one year.
• Validation of a registered design for 10 years extendible by 5 years.

GEOGRAPHICAL INDICATIONS

The Geographical Indication of Goods (Registration and Protection) Act, 1999 was brought into force on September 15, 2003. It provides for, inter alia:

• Establishment of a Geographical Indications Registry.
• Registration of geographical indications of goods in specified classes.
• Registration of authorised users of registered geographical indications and right to initiate infringement action either by a registered proprietor or an authorised user.
• Prohibition of registration of geographical indications as trade marks.
• Prohibition of assignment of geographical indications.
• Maintenance of the Register of geographical indications in two parts – Part A containing all registered geographical indications and Part B containing particulars of registered users.

PLANT VARIETIES AND FARMERS’ RIGHTS

The Protection of Plant Varieties and Farmers’ Rights Act, 2001 was launched on February 20, 2007 and came into force with effect from October 19, 2006. It provides for, inter alia,

• Filing of applications for registration of any plant variety, which is an extant variety or a farmers’ variety of such genera and species as may be notified by the Indian government.
• Filing of applications by any person or any farmer or community of farmers or any university or publicly funded agricultural institution claiming to be the breeder of the variety or an assignee thereof.
• Term of registration shall be 9 years for trees and vines and 6 years for other crops.
• Renewal subject to the condition that the total period of validity shall not exceed:

• Exclusive right on the breeder or his successor, his agent or licensee, to produce, sell, market, distribute, import or export the variety.
• Restriction of registration of a plant variety involving technology such as ‘genetic use restriction technology’ and ‘terminator technology’, which are injurious to the life or health of human beings, animals or plants.
• Priority for a period of 12 months to citizens of convention countries

SEMICONDUCTOR IC LAYOUT-DESIGN

A new Semiconductor Integrated Circuits Layout Design Act was enacted in 2000 but is still awaiting notification of the date of enforcement. It provides for, inter alia:

• Establishment of a Semiconductor Integrated Circuits Layout-Design Registry.
• Exclusive right to the registered proprietor to use the layout design and to obtain relief in respect of infringement.
• Duration of registration of ten years from the date of filing or from the date of first commercial exploitation whichever is earlier.
• Assignment of a registered layout-design with or without the goodwill of the business.
• Registration of a person other than the registered proprietor as a registered user.
• Creation of Layout-Design Appellate Board to hear and decide appeals from the decision of Registrar.

DOMAIN NAMES

A new Domain Name Policy was introduced in India on January 1, 2005. It provides for, inter alia:

• Availability of top-level domain name ‘.IN’ (previously available only to Internal Service Providers) to all companies/individuals both in and outside India without any restrictions. This is an addition to the other appellations which continues to remain on offer:

• “co.in” : for registered companies and banks; and trade marks
• “firm.in”: for proprietary concerns, partnership firms, shops, liaison offices
• “ac.in” : for the academic community
• “res.in”: for research institutes
• “gov.in”: for government organisations
• “mil.in”: for military establishments
• “net.in”: for Internet Service Providers
• “org.in”: for non-profit organisations
• “ind.in”: for individuals
• “gen.in”: for general/miscellaneous purposes
• Enlargement of term of initial registration to five years as opposed to two years in the previous regime.
• Processing time of applications reduced considerably.
• Virtual absence of any formal requirements for registering a domain including the requirement of having a presence in India and configuration of active name servers. Now, the registered domain can merely be ‘parked’ with the Domain Registrar and the web-site can be activated any time thereafter.
• Substantial reduction of application fee for registering domain names.
• Introduction of .IN Dispute Resolution Policy (INDRP) in line with the Uniform Dispute Resolution Policy (UDRP) of WIPO (World Intellectual Property Organization).

Note: The .IN Registry is confronted with the registration of a large number of undesirable/immoral domain names. Numerous complaints are being filed with the National Internet Exchange of India (NIXI) seeking cancellation/transfer of such Domain Names through Arbitration. As per INDRP Rules of Procedure, the Arbitrator is bound to pronounce the Arbitral Award within 60 calendar days of commencement of the Arbitration Proceedings.