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National Institute of Science Communication And Information Resources, New Delhi

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Intellectual Propertyfor Business Series Number: 1

Disclaimer: This publication has been adapted and reproduced with the prior express permission of the World Intellectual Property Organization (WIPO), the copyright owner of the original English language version, which is available at www.wipo.int/sme/en/documents/guides/. As such, WIPO is not liable or responsible for the accuracy or correctness of the adapted version of the publication, as that liability or responsibility rests solely with the National Institute of Science Communication and Information Resources, New Delhi, India. This guide is not meant as an authoritative statement of the laws on trademarks. Its broad aim is to educate those concerned with trademark by providing a general understanding of issues related to trademarks.

NISCAIR 2008. WIPO owns copyright in the original English language version (2003).No part of this publication may be reproduced or transmitted in any from or by any means electronically or mechanically, except as permitted by law, without written permission from the owner of the copyright.

Ó

Customized by:

Rekha Mittal



Designed, published and Printed byNational Institute of Science Communication And Information ResourcesDr K S Krishnan Marg, New Delhi 110 012

CYANMAGENTAYELLOWBLACK

WIPO's guide on trademarks, "Making a Mark: An Introduction

to Trademarks for Small and Medium-sized Enterprises", was

the first in the "Intellectual Property for Business" Series. This

easy-to-read and well illustrated guide explains, in plain language,

the role of trademarks in the marketing and branding strategies

of enterprises. It provides a bird's eye view of business aspects

of trademarks from an international perspective, given the

increasing importance of international markets even for small

and medium-sized enterprises (SMEs).

WIPO actively encourages the development of nationally

customized versions of the guide. It is, therefore, particularly

glad that the National Institute of Science Communication And

Information Resources (NISCAIR), New Delhi has taken the

initiative to bring out an excellent Indian version. "Making a Mark:

An Introductory Guide to Trademarks Protection in India for

Small and Medium-sized Enterprises" reflects the Indian context,

both in terms of the law of trademarks and use of trademarks by

Indian enterprises. It is replete with examples and illustrations

from the Indian business scene.

WIPO believes that this guide will prove to be immensely useful

for Indian businesses, especially SMEs. It will also be very useful

Foreword.....


for anyone having an interest in trademarks and branding, be

they students, users/consumers, or policy makers in government

or business.

Dr. Guriqbal Singh Jaiya

Director

SMEs Division

World Intellectual Property Organization (WIPO)


Preface.....

In the knowledge-driven, private sector-oriented, highly

competitive and internationalizing economy of our times, the tools

of the intellectual property system, namely trademarks, industrial

designs, patents and copyright, among others, provide the means

to prevent free-riding by competitors on the value-adding

elements of new and improved products launched by innovative

and creative small and medium-sized enterprises (SMEs).

Value-added new and improved products not only meet the needs

of the users/consumers but also improve productivity of the

economy, which is crucial for continuously improving the living

standard of the people of a country. In a crowded market place,

trademarks play a crucial role in differentiating competing

products. Trademarks also play a major role in reducing

transaction costs by communicating the added value to

prospective customers, thereby nurturing a relationship of trust

between a business or its branded product and the user/customer.

Therefore, both the business enterprise and the users/consumers

of products must understand the role of trademarks in developing

brand value and brand equity that results in repeat purchases by

loyal users/customers, often at a premium price, compared with

generic or unbranded products.


Once this is understood then the savvy enterprises will do all

that needs to be done to get the best of their trademarks. To

know all that must be done, this guide will prove to be very

handy and beneficial.

By adapting the WIPO guide entitled as "Making a Mark: An

Introduction to Trademarks for Small and Medium-sized

Enterprises" to Indian law and by using Indian examples,

NISCAIR hopes to make a valuable contribution to raising

awareness amongst the Indian enterprises, especially SMEs, and

their customers to take all relevant measures, in a proactive

manner, to get the best of the trademark system for adding value

to a business so as to make it sustainable and more profitable.

This guide has been prepared with a view to create general

awareness about trademarks and should not be taken as an

authoritative statement of the law of trademarks in India. For

more detailed information on trademarks, the reader may visit

the website of the Indian Trademarks Registry or consult a

trademark agent/ trademark attorney.

Acting Director

NISCAIR


Acknowledgement.....

Thanks are due to WIPO, especially its SMEs Division, for having

permitted NISCAIR to customize this guide to Indian

circumstances. Technical advice and substantive inputs on

registered trademarks provided by Shri V. Ravi, Controller

General of Patents, Designs and Trade Marks & Geographical

Indication Registry, are gratefully acknowledged.

Special thanks are due to Shri V. K. Gupta, Ex-Director, NISCAIR

and Shri K C Kailasam, Rtd . Sr Joint Registrar, Trade Marks

Registry for imparting valuable advice and support in bringing

out this publication.

Special thanks are also due to Shri S.K Rastogi, Acting Director,

NISCAIR and collegues of NISCAIR for their continued support

to make this publication.


Table of Contents

Page

1. Trademarks 1

2. Protecting Trademarks 7

3. Types of Trademarks 23

4. Using Trademarks 26

5. Enforcing Trademarks 32

6. Annexes 35

1


1 Section 2(1) (zb),The Trade Marks Act, 1999

* All references pertain to Trademarks Act & Rules in India

1. Trademarks

What is a Trademark?

A trademark is a sign capable ofdistinguishing the goods orservices produced or provided byone enterprise from those of otherenterprises.

“Trademark”, under the Indian law, meansa mark capable of being representedgraphically and which is capable ofdistinguishing the goods or services ofone person from those of others and mayinclude shape of goods, packaging andcombination of colors...1

A mark may consist of a name (such asTata, Bajaj, Kirloskar, including trade nameor its abbreviation, such as Wimco, Glaxo,Alembic, etc.), device (such as the image ofan Elephant, Tiger, etc.), or combination ofdevice and word (such as the word“Wheel” and the drawing or picture of the“Wheel”), or an invented word (Kodak,Voltas), or any arbitrary dictionary word(such as word or device of an Apple forcomputers) not being directly descriptiveof the character or quality of the goods/service. It may consist of letters (S.K.F.,B.M.W, etc.), numerals (such as 501 forsoaps), monograms (which are constitutedby intertwining of letters), or anycombination of these (for example, BrookeBond 3 Roses, with words and device).Thus, any distinctive words, letters,numerals, drawings, pictures, shapes,colors, logotypes, labels or combinationsused to distinguish goods or services mayconstitute a trademark.

Word Mark

Reg. No. 895095Courtesy : Hindustan Lever Limited

Device Mark

Reg. No. 1278960Courtesy : Swastik Pipes Limited

Logotype

Reg. No. 838428Courtesy : Reliance Industries Limited

2


2 Section 9(1), The Trade Marks Act, 1999

Regd.No. 1253980Courtesy: European Foundation for QualityManagement

Regd.No. 996044Courtesy: Liway MarketingCorporation

Regd.No.13133317Courtesy: Cavinkare

Pvt.Ltd.

Regd.No. 591482Courtesy: Cartoon Sanitation

ExamplesNontraditional forms of marksNowadays, an increasing number ofcountries also allow registration ofnontradtional forms of trademarkssuch as single colors, three-dimensionalsigns (shape of a product or itspackaging), audible signs (sounds) orolfactory signs (smells). Many countrieshave set limits to what can be registeredas a trademark, generally onlyallowing for signs that are visuallyperceptible or can be graphicallyrepresented. Indian law expressly permitsregistration of marks comprising ‘shape ofgoods’, ‘shape of packaging’, that is,three-dimensional marks.It does notexpressly permit or forbid registration ofother types of nontraditional marks.However, it is flexible enough to permitregistration of a mark, if it is shown tohave ‘acquired a distinctive character as aresult of the use made of it or is a wellknown trademark’2 .

Smell or Sound marksRegarding smell marks or sound marks, thegeneral requirement of theIndian law is that the mark should be‘capable of being represented graphically’.This means that the mark should becapable of being put on the trademarkregister in a physical form and also beingpublished in the Trade Marks Journal.Obviously, it should be reasonablypracticable for persons inspecting theregister or reading the Trade MarksJournal, to understand it.

While a sound mark may be graphicallyrepresented in conventional notation, thesame is not the case with smell marks. Itmay be possible to describe a chemical bya formula, but it cannot describe its smell.It has been held that ‘it was not possible

3


3 Section 9(1), The Trade Marks Act, 1999

to register an odour by means of itschemical formula since such a formula wasnot representative of the odour but ratherof the chemical substance itself. Neitherthe requirement for graphicalrepresentation would be satisfied by awritten description nor bythe provision of an odour sample’.‘As a mere written description does notconvey a clear and a precise indication ofa smell or odour as a mark, therefore it willnot be considered to be an adequategraphical representation’ and, as such,under the Indian trademark law it isunlikely to be registered.

Advertising slogans

The registration of advertising sloganswould depend upon the nature of the markin India. Since a trademark gives anexclusive right to its proprietor to use it inconnection with certain goods or service,it is obvious that such statutoryprotection should not interfere withbona fide and legitimate rights of othertraders. At the same time, if the word(s)through use, have become clearlyassociated in the public’s mind with thegoods or service of a particular tradesource, another person in the same tradecould not legitimately use it as atrademark”

3. But slogans which are

deemed fanciful or imaginative can beaccepted for registration.

What are trademarks for?The main function of a trademark is toenable consumers to identify a product(whether goods or a service) of a particularcompany so as to distinguish it fromother identical or similar productsprovided by competitors. Consumers whoare satisfied with a given product are likelyto buy or use the product again in thefuture. For this, they need to be able todistinguish easily between identical orsimilar products.

By enabling companies to differentiatethemselves and their products from theircompetitors, trademarks play a pivotal rolein the branding and marketing strategiesof companies, contributing to thedefinition of the image, and reputation ofthe company’s products in the eyes ofconsumers. The image and reputation of acompany create trust, which is the basisfor establishing a loyal clientele andenhancing a company’s goodwill.Consumers often develop an emotionalattachment to certain trademarks, basedon a set of desired qualities or featuresembodied in the products bearing suchtrademarks. Trademarks also provide anincentive for companies to invest inmaintaining or improving the quality oftheir products in order to ensure thatproducts bearing their trademark have apositive reputation.

4


The Value of Trademarks

A carefully selected and nurtured

trademark is a valuable business

asset for most companies.

Estimates of the value of some of the

world’s most famous trademarks

such as Coca-Cola exceed more

than sixty billion dollars. This is

because consumers value

trademarks, their reputation, their

image and a set of desired qualities

they associate with the mark, and

are willing to pay more for a

product bearing a trademark that

they recognize and which meets

their expectations. Therefore, the

very ownership of a trademark with

a good image and reputation

provides a company with a

competitive edge.

Regd.No. 838442Courtesy: Tata Services Limited

A Well Known Indian Trademark:

Legal protection of trademark is thus notonly in the interest of a business but alsoin the interest of consumers and public atlarge. In India, a trademark is protectedunder the Trade Marks Act, 1999 and therules framed under it which came into forceon September, 2003. The Act isadministered by the Government of Indiathrough the Trade Marks Registry,Mumbai and its four branch offices atAhmedabad, Chennai, Delhi and Kolkota(see Annex V).

Why should your company protect itstrademark(s)?In India, the registration of a trademarkconfers on the registered proprietor of thetrademark the exclusive right to use thetrademark in relation to the goods orservices in respect of which the trademarkis registered and to obtain relief in respectof infringement of the trademark byothers.

Without trademark registration, yourinvestments in marketing a product maybecome wasteful as rival companies mayuse the same or a confusingly similartrademark for identical or similar products.If a competitor adopts a similar or identicaltrademark, customers could be misled intobuying the competitor’s product, thinkingit is your company’s product. This couldnot only decrease your company’s profitsand confuse your customers, but may also

5


4 Section 27 and 103, The Trade Marks Act, 1999

Trademarks

• ensure that consumers can

distinguish between competing

products;

• enable companies to differentiate

their products;

• are a marketing tool and the

basis for building a brand image

and reputation;

• are licensed and provide a direct

source of revenue through

royalties;

• are a crucial component of

franchising agreements;

• may be a valuable business

asset;

• encourage companies to invest

in maintaining or improving

product quality;

• may be useful for obtaining

financing.

damage the reputation and image of yourcompany, particularly if the rival product isof inferior quality. In such cases, in India,legal action can be taken for “passing off”only.4 For filing a suit in the court, youhave to first establish your title to the markand also show that the defendant’s act issuch that it is likely to result in “passingoff” the goods or services as those ofyours, which is a cumbersome procedure.

Given the value of trademarks and theimportance that a trademark may have indetermining the success of a product inthe market place, it is critical to make surethat it is registered in the relevantmarket(s).

In addition, a registered trademarkmay be licensed to othercompanies, thus, providing an additionalsource of revenue for your company, ormay be the basis for a franchisingagreement.

At times, a registered trademark with agood reputation among consumers mayalso be used to obtain funding fromfinancing institutions that are increasinglyaware of the importance of brands forbusiness success.

In a very large number of countries, rightsin a trademark arise only after it is duly

6


registered as a trademark under theapplicable trademark law. In India, rights ina trademark arise through:

• registration of a trademark under theTrade Marks Act, 1999;

• acquisition of a registered orunregistered trademark by way ofassignment;

• adoption and use of a distinctivetrademark in relation to certain goodsor services.

It is important, therefore, that whilerecognizing the importance of usingtrademarks to differentiate your productsfrom those of your competitors, youshould also realize the importance ofprotecting them through registration.

7


5 www.dca.nic.in

2. Protecting Trademarks

How can your company protect itstrademark(s)?Trademark protection can be obtainedthrough registration or also through use.Although registration of a trademark is nota requirement for protection, it has twodistinct advantages: registration impliesthat the trademark is distinctive of theproduct or service to which it pertains, andthat the trademark belongs to the personor legal entity in whose name it is regis-tered. In India, a trademark may beregistered either as one “proposed to beused” or at any time after commencement of“use in the course of trade.”

The registration of a trademark is aspecialized area of work. It may benecessary to employ the services of atrademark agent or attorney to ascertain,with a reasonable degree of certainity, theregistrability of the trademark requested tobe registered. However, this is notcompulsory and the applicant maycorrespond directly with the Trade MarksRegistry in India in this matter.

Is registration of Company namesufficient ?It is a common misconception that byregistering the business or trade namewith the Registrar of Firms or Registrar ofCompanies5, the name would be

automatically also protected as atrademark. It is important to understandthe difference between trade names andtrademarks. A trade name is the full nameof your business, such as “Tata SonsLtd.”, which identifies the company,whereas ‘TATA®’ is the trademark of thecompany.

A trademark, however, is a sign thatdistinguishes the products of yourcompany from those of others. A companymay use several trademarks in respect ofits products. Such practice is prevalent ina wide range of businesses, such as foodstuffs and pharmaceuticals .The companymay use them independently or along withtheir common house mark, whichrepresents essentially the image of thecompany. However, the goods are orderedonly by the product mark.

Similarly, some companies may also usetheir trade name or part of it as atrademark. In that case, they shouldregister it also as a trademark. Forinstance, “Tata Sons Ltd.” has registeredpart of their trade name “TATA” as atrademark in classes 1-17, 19, 22-24, 26-32,37-42 for a large variety of goods andservices.These are used by various Tatacompanies in relation to their products andservices for homes and individuals as wellas for industries and companies such asfor agrochemicals, fertilizers, automotive

8


services, vehicles, coffee, tea, salt, steel,watches, etc.

Who is authorized to apply for trademarkregistration?Any person who intends to use atrademark or to have it used by thirdparties can apply for registration in India.It can be either an individual or a legal entity.

Is it compulsory to register a company’strademarks?While registration of a trademark is not acompulsory legal requirement in India, it ishighly advisable to register a trademark, asit has distinct advantages as compared toan unregistered trademark. Registering atrademark provides better protection totrademarks as the owner of the trademark,in case of a dispute before a court, doesnot have to prove that the mark belongs tothe owner (in whose name it is registered).Further, there is a presumption in favour ofthe owner of the mark that the mark isdistinctive of the goods or services forwhich it is registered as a mark.

What are the main reasons for rejectingan application ?Applications for trademark registration areusually rejected in the following cases,which constitute absolute grounds forrefusal. Therefore, it is necessary to bearthese in mind at the initial stage ofselection of a mark to avoid any legalobjection in the process of registration.

• Generic terms: A word thatrepresents the name of a good orservice is not allowed to beappropriated as a trademark. Forexample, registration of the word“Modem” as a trademark for modemswill always be rejected, since the word“Modem” is a generic word for thegoods.

A generic term cannot be registeredfor goods or services to which itapplies. It may, however, beregistered for goods or services withwhich it has no connection. ThusAPPLE may be registered as a trademark for computers but not for applesand sword may be registered for bladebut not for swords. There are manyinstances where a word which wasoriginally a trade mark has nowbecome generic due to neglect orimproper protection. Some examplesare escalator, fridge, thermos,linoleum, zipper, etc.

• Descriptive terms: These are words(or devices) that are usually used intrade to describe the product inquestion and as such are notregisterable as trademarks. Forexample, the word “Creamy” for creamproducts or the word “Milky” for milkproducts, which are descriptive of thecharacteristics of the goods are notregisterable.

9


6 Section 17, The Trade Marks Act, 19997 1978, RPC 307

Similarly, qualitative or laudatoryterms such as “Perfect”, “Superfine”,“Mild”, etc., are likely to give rise tosimilar objections, unless they are justpart of an otherwise distinctive mark.There is no provision in the Indianlaw, as it is in some countries, toinclude a disclaimer to clarify that noexclusive right is claimed for thatparticular part of the mark. Instead thelaw lays down the general legalproposition that when a trademarkconsists of several matters, itsregistration confers exclusive rightonly to the use of the trademark takenas a whole and not to any matterforming only a part thereof.6

• Deceptive trademarks: These aretrademarks that are likely to deceive ormislead consumers as to the nature,quality or geographicalorigin of a product. For example,“Safemix” in respect ofthermostatically controlled valves formixing hot and cold water, was notonly held to be descriptive, but alsoto be deceptive as it would inducepurchasers to believe that the goodsare safe to use.7

An application is liable to berefused if it contains an unduly largenumber of goods or services. Also,marks containing Bio and Eco would

suggest biological or ecologicalcontent and would be deceptiveunless used for appropriate organicproducts.

• Marks considered to be contrary tomorality: Words and illustrations thatare considered to violate commonlyaccepted norms of morality, or whichconsist of scandalous or obscenematter, or are likely to hurt religiousfeelings are expressly prohibited to beregistered as trademarks in India. Forexample, the use of names or device of“Hindu Gods” for beef or meatproducts or those of “Muslim saints”as trademark for pork products wouldfall within this prohibition.

• Marks, the use of which areprohibited under the Emblems &Names (Prevention of Improper Use)Act, 1950: These would includenames and emblems of theGovernment, flags, armorial bearings,emblems of States and InternationalOrganizations.

Accordingly, the name, emblem andofficial seal of UNO, WHO, UNESCO,IOC or of the Central or StateGovernments or President of India,the Indian National flag, the name orpictorial representation of MahatmaGandhi, the Prime Minister of India,Shivaji Maharaj, Ashoka Chakra, name

10


8 Section 9, The Trade Marks Act, 19999 Section 12, The Trade Marks Act, 1999

Five Point Checklist for SelectingYour Trademark

• Check that your trademark ofchoice meets all the legalrequirements for registration.

• Do a trademark search to makesure that it is not identical orconfusingly similar to existingtrademarks.

• Make sure that the trademark iseasy to read, write, spell andremember and is suitable to alltypes of advertising media.

• Make sure that the mark does nothave any undesired connotationsin your own language or in any ofthe languages used in potentialexport markets.

• Check that the correspondingdomain name (i.e., Internetaddress) is available forregistration.

of Parliament, state legislature,supreme court, Sai Baba, Sikh Gurusetc are prohibited from registration asa trade mark.

In addition to “absolute grounds”, anapplication may be rejected on“relative grounds” when a trademarkconflicts with prior trademark rights.Having two identical (or very similar)trademarks for the same type ofproduct could cause confusionamong consumers. In India, thetrademark office checks for conflictwith existing marks, includingunregistered well-known marks, as aregular part of the registrationprocess. However, checking can alsobe done when the trademark ischallenged by a third party afterpublication of the trademark. A markwill also not be registered if it isliable to be prevented from use byvirtue of any law in particular the lawof “passing off” protecting anunregistered Trademark used in thecourse of trade.8 Whenever atrademark is considered to be identicalor confusingly similar to an existingone for identical or similar products, itwill be rejected or cancelled, as thecase may be. However, for the benefitof those who adopted honestlyidentical or similar trademark and usedit concurrently, the law permitsregistration by more than one

proprietor of identical or similartrademarks for the same goods/services in exceptional cases.9

What should be kept in mind whenselecting or creating a trademark ?Selecting or creating an appropriatetrademark is a critical step, as it is animportant element of the marketingstrategy of your business. So what is anappropriate trademark for yourproduct(s)? Evidently, there are no hardand fast rules. But the followingfive-point checklist may be useful.

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10 1964, RPC 4711 1976, RPC 69412 1990, IPLR 96 (TMR)

While selecting one or more wordsas your trademark you should also takeinto consideration the implications ofselecting certain types of words:

• Coined or “fanciful” words: Theseare invented words without anyintrinsic or real meaning. Coinedwords have the advantage of beingeasy to protect, as they are more likelyto be considered inherentlydistinctive. On the negative side,they may be more difficult toremember for consumers, requiringgreater effort to advertise theproducts.

Examples: Exxon, Kodak and Colgate:these invented or coined words havebecome well-known trademarks byreason of very wide or universal use.

• Arbitrary marks: These are wordsthat have a meaning, but it has norelation to the product they advertise.While these types of marks are alsoeasy to protect, they may also requireheavy advertising to create theassociation between the mark and theproduct in the minds of consumers.

Examples: The trademark “Camel” formarketing cigarettes, “Apple” forcomputers, “Lotus” for software, and“Sun” for computers.

• Suggestive marks: These are marksthat hint at one or some of theattributes of a product. The appeal ofsuggestive marks is that they act as aform of advertising. A slight risk,however, is that some countries(including India) may consider asuggestive mark to be somewhatdescriptive of the product and,therefore, may to be deniedregistration, unless massive evidenceof use in the Indian market isestablished to prove ‘acquireddistinctiveness.’

Examples: The trademark“Soundcraft” in respect of soundrecording apparatus was held to bedescriptive of goods.10 Similarly,“Soflens” for contact lenses wasrefused registration.11 However, inIndia, “Stayfree” in respect of sanitarynapkins was allowed registration inPart B of the trademark register on thebasis of evidence of use.12 (It may benoted that under the Trademarks Act,1999, part A and part B of register oftrademarks have been merged.)

Irrespective of the type of mark youchoose, it is important to avoidimitating existing or well-knowntrademarks. A slightly alteredcompetitor’s trademark or a misspelt

12


13 1988, PTC 1

well-known or famous mark is unlikelyto be registered. A trademark is liableto be refused registration if theoriginal adoption is proved to betainted or copied irrespective of thelength of use.

Examples: “Charmis” is a registeredtrademark for face cream. It would beunwise to try to sell the same orsimilar products using the trademark“Formis” as it would probably beconsidered confusingly similar to theexisting mark and is unlikely to beregistered.

Further, it is undesirable to adopt a wellknown mark even in respect of entirelydifferent goods or service, as such use ismost likely to be restrained by courts andregistration refused or, if already allowed,cancelled.

Examples: Use of “7’O Clock” trademark(well known in India for shaving blades) inrespect of tooth brushes washeld to be dishonest and an injunctionwas granted.13

13


14 Rules 3 and 17, Trade Marks Rules, 200215 Rule19, Trade Marks Rules, 2002

Registering a Trademark in India —Step by Step

The ApplicantAn applicant makes an application forregistration of a trademark for goods orservices included in one class in triplicateon Form TM-1 with a prescribed fee,while on Form TM-51 for registering thesame mark in more than one class. Thefee payable is to be multiplied by thenumber of classes in which it is to beregistered.

The application will include –

• a representation of the trademark(one affixed on the appropriate formin the space 8 cm x 8 cm),accompanied by 5 additionalrepresentations of the mark. In nocase the size of the representationshall exceed the size 33 cm x 20 cm

• a transliteration and translation ofany part of the mark that is in alanguage other than Hindi orEnglish

• indication of the class of goods orservices

• address of the principal place ofbusiness of the applicant.14 If theapplicant has no residence or place

of business in India, an address forservice is to be given15

• a statement of the period duringwhich, and the person by whom ithas been used in respect of thegoods or services or a statementthat the mark is proposed to beused. The Registrar may require theapplicant to file an affidavittestifying to such usage withexhibits showing the mark as used

• signature of applicant or his agent.In the case of agent, a Power ofAttorney on Form TM-48 is to befiled

• If it is a partnership firm, the namesof all partners together with thenationality of each of them and thestatus of the firm, whetherregistered or not, are to be given,while in case of a corporate body,the country of incorporation is tobe stated

• if the trademark consists of shapeof goods or its packaging, therepresentation should consist ofat least five different views ofthe mark and a description in wordsof the mark while in case of threedimensional mark, the reproductionof the mark should consist of two-

14


dimensional graphic or photo-graphic reproduction, and

• if color combination is claimed,colors are to be indicated,accompanied by one reproductionin black and white and fourreproductions of the mark in color.

The Trademark Office

Application is to be filed at the appropriateoffice of the Registry at Mumbai, Delhi,Chennai, Kolkata or Ahmedbad,depending upon the place where theapplicant resides or has his principalplace (see Annex V). In case of foreignapplicants, the place mentioned as theaddress for service in India will determinethe appropriate office at which theapplication should be filed.

Allotment of number: Filing of anapplication will be acknowledged by theRegistrar by way of return of oneadditional representations of thetrademark, with the official number dulyentered thereon.

Examination: The application issubjected to formal and substantiveexamination. The formal examinationchecks whether the application complieswith the requirements of the Act andRules. The substantive examinationincludes examination for distinctivenessand a search amongst the registeredtrademarks and pending applications to

ascertain whether there are on record anymarks identical to or deceptively similarto the mark sought to be registered inthe relevant class(es).

The time taken between filing anapplication and taking it up forexamination is about ten to fifteen days.

Expedited examination: An applicantmay request for expedited examinationof an application for registration of atrademark on Form TM-63 together witha declaration stating the reason for therequest, on payment of five times theapplication fee (see Annex VI). In such acase, application is taken up forexamination immediately.

Further procedure: After dueconsideration of any evidence of use orof distinctiveness of the mark or any othermatter, the Registrar may refuse theapplication or accept it absolutely orsubject to amendments, modification,conditions or limitations, if any. Theapplicant may ask for a hearing or complywith the requirements of the Registrarwithin the time specified. Thereafter, thedecision of the Registrar is communicatedto the applicant.

Publication and opposition: When anapplication is found to be acceptable,the details of the application arepublished in the Trade Marks Journal toallow any person to oppose its registration

15


16 Section 6, The Trade Marks Act, 199917 Section 47, The Trade Marks Act, 199918 Section 48, The Trade Marks Act, 1999

within three months from the publicationdate or within a further period notexceeding one month in the aggregate.At present, applications are publishedin the Trade Marks Journal normallywithin three months of acceptance.

Registration: If there is no notice ofopposition, or if the opposition has beenduly considered and dismissed, then thetrademark is registered and a registrationcertificate is issued for a period of 10years from the date of filing theapplication. At present, registrationcertificates are issued by the Registrywithin eight to ten months of filing of anapplication, unless it contested in anopposition proceeding. The Register ofTrade Marks contains all the relevantdetails, such as the mark, the date offiling, actual date of registration, thegoods or services and the class orclasses in respect of which it is registeredand all other particulars.16

Renewal: The registration may berenewed for successive periods of 10years. For this purpose, an applicationhas to be submitted in Form TM-12 bythe proprietor or his agent within sixmonths prior to the expiration of thecurrent registration of the trademark. Ifthe registration has not been renewed,

or the prescribed surcharge has not beenpaid within the grace period permissibleunder law, the Registrar may remove themark and advertise the fact in theTrademark Journal. However, anapplication for restoration of the mark tothe register and renewal may be made inForm TM-13 (together with theprescribed fees) after six months butwithin one year from the expiration ofthe last registration of the Trademark.When the registration of the mark isrestored and renewed, the fact will beadvertised in the Trademark Journal. Atpresent, renewal is effected across thecounter on production of previousrenewal certificate or other document andin all other cases within fifteen days.

Removal of mark for non-use: Non-useof a registered trademark for acontinuous period of five years rendersthe mark liable for removal.17 The periodof five years will be reckoned from thedate of actual registration and not fromthe filing date of application forregistration. The use of a trademark by alicensee or a registered user will bedeemed to be used by the proprietor.18

Non-use may be justified due to “specialcircumstances in the trade”, whichwould include restrictions imposed byany law or regulation on the use of thetrademark in India.

16


17


How long does it take to register atrademark?The time required for registration of atrademark varies significantly, generallyranging from three months to two years,depending, among other things, onwhether a trademark office conductssubstantive examination or not.

In India, registration of a trademark isgenerally takes from eight to twelvemonths from the date of making a formalrequest for registration of a trademark inthe prescribed form (TM-1) and onpayment of the prescribed fee to thetrademark registry. The registration iseffective from the date of filing theapplication. If a trademark is not properlyselected, there is higher likelyhood of itbeing opposed, which may considerablydelay its registration.

What are the costs associated withtrademark creation, protection and use ?It is important to keep in mind, andproperly budget for the costs related totrademark creation and registration:

• There may be costs associated withthe creation of a logo or word to beused as a trademark, as manycompanies outsource this task to alogo designer or a branding company.

• There may be costs for conducting atrademark clearance search.

• There are costs associated with theregistration process, which varydepending on the number of countriesand the categories of products. InIndia, the Trade Marks Rulesprescribe the official fees payable inrespect of various proceedings in theRegistry (see Annex VI).

• If a company uses a professionaltrademark agent to assist in theregistration process, it would faceadditional costs, but would probablysave significant time and energy ineffectively following up theregistration process in accordancewith the law.

• There may be costs in respect ofenforcement of rights in a trademarkby instituting civil or criminalproceeding against infringers, as perlaw.

How can you find out if your chosentrademark might conflict with otherregistered trademarks? What is atrademark search?Before submitting an application forregistering a trademark, you should ensurethat a proper trademark clearance searchis carried out. This is done to make surethat the trademark you intend to use, or asimilar one, is not already registered byanother person or company for identicalor similar products.You can either make a

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19 Section 147, The Trade Marks Act, 199920 Rule 24, Trade Marks Rules, 2002

trademark search yourself or hire theservices of a trademark agent. It may bedifficult to make sure that your trademarkof choice is not “confusingly similar” toexisting validly-registered trademarks. Thisis why the guidance of an experiencedtrademark agent, who is familiar with thepractice of the trademark office and courtdecisions, may be very helpful.

Before applying for registration, it isdesirable to obtain preliminary adviceregarding the distinctiveness of yourproposed mark from the Registrar ofTrademarks in India by making a requestin form TM-55 and on payment of theprescribed fee.19 A request for search canalso be made in form TM-54 along with theprescribed fee to the Trade Marks Registryto obtain an official report to ascertainwhether any identical or deceptivelysimilar Trademark exists on the Register oris pending for registration for the samegoods or services.20 Such a report isnormally issued on the same day.Computerised search facility is available atall Trade Marks registry offices onpayment of Rs. 400/- for 15 minutes. Youmay also undertake an independent marketsurvey to rule out the possibility of the

same or a similar mark in actual use byanother person or company in relation tothe relevant goods or services. Dependingupon the geographical scope of yourbusiness, the survey may even have toextend beyond the territorial limits of India.

While searching can never be conclusive,it does reduce the degree of uncertainty.After being satisfied about the availabilityand registerability of a trademark, you maystart using the mark in relation to thegoods or services, and, at the sametime,make an application for its registrationunder the Act.

Trademarks are grouped into “classes”according to the goods or services theyserve to identify (see Annex III). You maytherefore begin by familiarizing yourselfwith the 45 different trademark classes.The International Classification, whichhad 42 classes earlier, has been enlargedto 45 classes. The changes are in theseperation of some of the services, whichwere hitherto covered by class 42, intoclasses 43, 44 and 45. The IndianClassification does not however reflectthese changes.

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Reg. No. 465568Courtesy: TTK Prestige Limited

A Well-classified System

While filling in your trademark

application form you are required,

in most countries, to indicate the

goods and/or services for which

you wish to register your

trademark and to group them

according to classes. These refer

to the classes in the trademarkclassification system. The

trademark classification system

allows for the storage of data on

registered trademarks in an

orderly manner in relation to the

types of goods or services. This

makes it easier to retrieve

information from trademark

databases. It is critical to register

your trademark in all classes in

which you intend to use your

trademark. The most widely used

classification system is the

International Trademark

Classification System {the so-

called Nice system for

classification of word marks},

which has 34 classes for goods

and a further 11 for services. More

information on the Nice

classification system is available

at: www.wipo.int/classifications/

en/nice/about/.

Example

How are products classified? Let

us take an example. If your

company is producing knives and

forks, then your trademark

application should be made for

the corresponding goods in class

8. If, however, you wish to market

other kitchen utensils (such as

containers, pans or pots) by using

the same trademark, you will also

have to register the mark for the

corresponding goods in class 21.

In India, the law permits a single

application to be made to cover

goods/services in several classes

for the same mark, but additional

fee is to be paid in respect of each

such additional class of goods or

services.

20


Do you need a trademark agent to file atrademark application?In India, the services of a trademarkagent/attorney is not necessary for filingan application for registration. However,the services of a trademark agent skilled inconducting trademark clearance searchesand familiar with the detailed procedurefor trademark registration may be used tosave time, ensure that you apply forprotection in the appropriate trademarkclass(s), and avoid refusal on absolutegrounds. If you apply for trademarkregistration abroad youmay be required to have a trademark agentwho is resident in the relevant country.

The Trade Marks Registry has a list ofregistered trademark agents. There are,however, quite a number of lawyers whoare practicing in this branch of law,without being registered as trademarkagents in India.

For how long is your registeredtrademark protected?In India, registered trademark is protectedfor 10 years from the date of filing theapplication. Registration may be renewedindefinitely (usually, for consecutiveperiods of 10 years) provided renewalfees is paid on time. Make sure thatsomeone in your company is maderesponsible for ensuring timely renewal oftrademark registrations.

Outsourcing Trademark CreationDesigning a trademark is a creativeprocess. In India, a creatorautomatically owns the copyrightover creative or artistic works, suchas the artwork of a trademark.Therefore, when the creation of atrademark and associated artwork,if any, is outsourced, it is usuallybest to clarify issues of copyrightownership in the originalagreement and/or to make sure thecopyright over the trademark andassociated artwork, if any,isformally assigned to yourcompany.

Is trademark registration in India validinternationally?Valid registration of a trademark in Indiagives you rights only in India, unlessyour mark is considered to be a well-known mark.

Should you consider protecting yourtrademark abroad?All the main reasons for registering yourtrademark in India also apply to thecommercialization of your products inforeign markets. It is, therefore, highlyadvisable to register your trademarkabroad if you are currently engaged inexport operations or intend to do so in thenear future. Exporting goods bearing a

21


Advantages of using the Madridsystem

The principal advantages ofusing the Madrid system are thatthe trademark owner can registerhis trademark in all the countriesparty to the system by filing:

• a single internationalapplication;

• in one language;

• subject to one set of fees anddeadlines.

Thereafter, the internationalregistration can be maintainedand renewed through a singleprocedure.

You can find more informationon international registration ofmarks either at your nationaltrademark office or on the WIPOwebsite: www.wipo.int/madrid/. A list of the Membercountries of the Madrid system isavailable ( see Annex IV).

• The Benelux Trademark Office.

• The Office for the Harmonization ofthe Internal Market of the EuropeanUnion (OHIM).

• The Organisation Africaine de faPropriete Inteffectuelle (OAPI).

distinctive trademark will enable yourexport products to be recognized inforeign markets, allowing your company tobuild a reputation and image amongforeign consumers that may result inhigher profits for your company.

How can you register the trademark ofyour company abroad?If you have registered the trademark(s) ofyour company in India, but wish to exportor grant a license to use the trademark(s)in other countries, then it is advisable toregister the trademark(s) abroad. There arefollowing ways to do so:

The National Route: your business mayapply to the trademark office of eachcountry in which you are seekingprotection by filing the correspondingapplication in the required language andpaying the required fee. A country mayrequire you to use the services of a locallybased trademark agent for this purpose.

The Regional Route: if you wish to applyfor protection in countries which aremembers of a regional trademark systemyou may apply for registration, with effectin the territories of all Member countries,by filing an application at the relevantregional office. The regional trademarkoffices are:

• The African Regional IndustrialProperty Office (ARIPO).

22


The International Route: If your homecountry is a member of the Madridsystem and your trademark has beenregistered or applied for in or witheffect in that country, you may use theMadrid system (administered by WIPO) toregister your trademark in more than 70countries that are party to the system.India is yet to become a member of theMadrid system. The ‘national route’ isavailable currently for Indian applicants toregister overseas.Check with a competentintellectual property attorney as to whichregional route is/are available to you forfiling of your trademark applicationabroad.

An Indian applicant may be able to use theMadrid System if the applicant has a realand effective business presence in acountry which is a member of the MadridAgreement or Madrid Protocol.

For registering a trademark outside India,the Registrar issues a certificate includinga copy of the mark on registration.

The Registrar may state in the certificatesuch particulars concerning theregistration of the mark as he may deem fit,and may specify the terms and conditionsand other limitation appearing on theRegister. The purpose for which thecertificate is issued may bestated therein.

India is a member of the InternationalConvention for Protection of IndustrialProperty (known as Paris Convention)and as such Indian applicantswishing to register their trademarks inone of the member countries, will enjoy aright of priority. On the basis of anapplication in one of the membercountries, the applicant(or his successor) may,within six months, apply forprotection in other member States.The later applications will beregarded as if they had beenfiled on the same dayon which the first applicationwas filed.

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3. Types of Trademarks

Trade marks Marks used to distinguish certain goods as thoseproduced by a specific enterprise.

Service marks Service Marks used to distinguish certain servicesas those provided by a specific enterprise.

Collective marks Marks used to distinguish goods or services producedor provided by members of an association.

Certification marks Marks used to distinguish goods or services that complywith a set of standards and have been certified by acertifying authority.

Well-known marks Marks that are considered to be well-known in the marketand as a result benefit from stronger protection.

What is a service mark?A service mark is very similar to atrademark. Both are distinctive signs;trademarks distinguish the goods ofone enterprise from those of others,while service marks fulfill the samefunction in relation to services.Services may be of any kind, such asfinancial, banking, travel, advertising orcatering, to name a few. Service marks can be registered, renewed,cancelled, assigned and licensedunder the same conditionsas trademarks. The Indian law does not,however, use the term ‘service marks’,as it is covered by the broader definitionof ‘trademarks’.

Example: MTNL (Mahanagar TelephoneNigam Ltd.) provides basictelecommunication and internet services.

What are collective marks?Collective mark under Indian law, is a markdistinguishing the goods or services ofmembers of an association of persons (notbeing a partnership within the meaning of

Reg. No. 13112138Courtesy: Mahanagar Telephone Nigam Limited

24


21 Section 2(1)(g), The Trade Marks Act, 199922 Section 2(1)(e), The Trade Marks Act, 1999

Reg. No. 831599Courtsey: Tea Board of India

the Indian Partnership Act,1932), which isthe proprietor of the mark, from those ofothers.21 Thus, a collective mark isgenerally owned by an association orcooperative whose members may use thecollective mark to market their goods orservices. The association generallyestablishes a set of criteria for using thecollective mark, such as quality standards,and provides individual companies thechoice to use the mark if they comply withsuch standards. Collective marks may bean effective way of jointly marketing theproducts of a group of enterprises, whichmay find it more difficult for theirindividual marks to be recognized byconsumers and/or to be accepted fordistribution by the main distributors.

In India, a collective mark can not beregistered if it is likely to deceive or causeconfusion on the part of public; inparticular, if it is likely to be taken to besomething other than a collective mark. Insuch a case, the Registrar may require thata mark in respect of which application ismade for registration comprise someindication that it is a collective mark.

So far, no collective mark has beenregistered in India.

What are certification marks?Certification mark, under Indian law, is amark capable of distinguishing the goodsor services in connection with which it is

used in the course of trade which arecertified by the proprietor of the mark inrespect of origin, material, mode ofmanufacture of goods or performance ofservices quality, accuracy or othercharacteristics from goods or services notso certified and registerable as such.22 Itmay be used by anyone whose productsmeet certain established standards.

An important requirement for acertification mark is that the entity whichapplies for registration is considered ”competent to certify” the productsconcerned.

In India, a mark cannot be registeredas a certification trademark in the name ofa person who carries on a trade in goodsof the kind certified or a trade in theprovision of services of the kind certified.

Example: “Darjeeling logo”, a property ofThe Tea Board of India verifies that thepacket contains 100% pure Darjeelingunblended with teas from any othergrowth. Presence of certification mark on aproduct is an assurance of conformity tothe relevant specifications.

25


23 Section 2(1)(zb), The Trade Marks Act, 1999 See also Section 11(6) to 11(11) of the Act, the factors which are relevant in determining a trademark as “well-known”24 Sunder Parmanand v. Caltex AIR 1969 Bom 24

What are well-known marks?A well-known mark under Indian law, is amark which has become well-known toa substantial segment of the public usingsuch goods or receiving such servicesthat the use of such mark in relation toother goods or services would be likely tobe taken as indicating a connection in thecourse of trade or rendering of servicesbetween those goods or services and aperson using the mark in relation to thefirst-mentioned goods or services.23

Thus, well-known marks are marks that areconsidered to be well-known by thecompetent authority of the country whereprotection for the mark is sought.Well-known marks generally benefitfrom stronger protection. For example, awell-known mark may be protected even ifit is not registered (or has not even beenused) in a given territory.

The main purpose of this strongerprotection is to prevent companies fromfree-riding on the reputation of a well-known mark and/or causing damage to itsreputation or goodwill. In CIBA GEIGYLTD & Another vs. SURINDER SINGHand Others (DELHI HIGH COURT), thePlaintiff were registered proprietor of the

trade mark ‘CIBACA’ and producedsufficient evidence to establishdistinctiveness and goodwill. Defendentadopted the same mark for motor vehicles.While granting an injunction, the courtruled that no one should be allowed to usea world famous name for goods whichhave no connection with the type ofgoods that generated its worldwidereputation, even though the competinggoods were entirely different. Similarly,Windows XP is well known in the computertrade. The expression ‘relevant public’would imply that the mark need not have allIndia reputation; rather, it is well known toend users in that particular trade.

Example: “Caltex” is an example of a well-known mark for petroleum products. Evenunder the old law, in which there was noexplicit provision for protection of well-known marks (as are contained inthe present Trade Marks Act, 1999),application for registration of thesame trademark by someone else forhorological and chronometric instruments(watches) was refused, on oppositionby the owners of the well known markCaltex, though the competing goodswere entirely different.24

26


non-use. ‘Special circumstances in thetrade’ would include restriction on use oftrademark in India imposed by any law orregulation.

4. Using Trademarks

Can you register a trademark withouthaving used it ?You may apply for registration before youhave used the trademark but somecountries like the United States of Americawill not officially register it until you haveshown proof of use. In India, the lawspecifically enables an application toregister a trademark to be made by anyperson “claiming to be the proprietor of atrademark used or proposed to be used byhim”.25 There are two exceptions26 forrecognizing the right of a person to applyfor registration of a mark, where theapplicant: (i) intends not to use the markhimself, but to assign the mark to acompany to be formed and registeredunder the Companies Act; and (ii) intendsthe mark to be used by a licensee as a“registered user” after the registration ofthe trademark.

In India, if the trademark has not beenused for a continuous period of five years,an application can be made for its removalfrom the trademarks register. The five yearperiod is reckoned from the date on whichthe mark is actually entered in the registerand not from the date of application. Ifnon-use is due to ‘special circumstancesin the trade’, then such period of non-usewill not be counted towards the period of Courtesy : Lion Dates Private Limited

25 Section 18(1), The Trade Marks Act, 199926 Section 46, The Trade Marks Act, 199927 Section 107,The Trade Marks Act ,1999

TM or ® !The use of ®, TM, SM or equivalentsymbols next to a trademark is not arequirement and generally provides nofurther legal protection. Nevertheless,it may be a convenient way ofinforming others that a given sign is atrademark, thus warning possibleinfringers and counterfeiters. The ®symbol is used once the trademark hasbeen registered, whereas TM denotesthat a given sign is a trademark; SM issometimes used for service marks. InIndia, ® is used to indicate that a markis registered. Such indication for atrademark, which has not beenregistered (as in a case of pendingapplication) would amount to falserepresentation, and is a punishableoffence, which may includeimprisonment for a maximum period ofthree years, or a fine, or both.27

27


Proper Use Essential

The proper use of a trademark is essentialfor maintaining and enforcing yourtrademark rights. Infact, proper use of atrademark helps in enhancing its valueand that of the relevant product orbusiness as well.

• Use a trademark as an adjective,but not as a noun or a verb. Do notsay ‘Cherry Blossom your shoes’.Say ‘polish your shoes with CherryBlossom’.

• Use a trademark in a consistentmanner at all times, be it inadvertising, catalogs, packaging,products, invoices, etc. Do notallow use of variations, take-offs,phonetic equivalents, other languageequivalents, or abbreviations of thetrademark. If it is a logo, do not allow itto be redesigned, compromised ormisused in any way.

• Whenever a mark is licensed, ensurethat its usage by a licensee is as hasbeen prescribed.

• Use symbol R in a circle, i.e., ® only,when a mark is licensed. Whenregistration is pending orotherwise, use TM to indicate thata trademark right is claimed for theword or device.

• Preserve records pertaining to theuse of the mark in India and othercountries. They constitute importantevidence in legal proceedings.

How should you use trademarks inadvertising?If your mark is registered with a specificdesign or font, make sure that thetrademark is used exactly as it isregistered. Monitor its use closely as it iscrucial for the image of your company’sproducts.

Can your company use the sametrademark for different products?Different trademarks may be used for thedifferent product lines of a company.Depending on its branding strategy, yourcompany may decide whether to use thesame trademark for your products,extending the brand every time a newproduct is released, or to use a differentmark for each product line.

Extending an existing brand to newproducts enables the new product tobenefit from the image and reputation ofthe mark. However, the use of a new mark,more specific and relevant to the newproduct, may also prove advantageous andenable the company to target the newproduct to a specific customer group (e.g.,children, teenagers, etc) or to create aspecific image for the new product line.Many companies also choose to use anew brand in conjunction with an existingbrand (e.g., Ferrero and Nutella).

Different companies adopt differentstrategies. Whatever your choice, you

28


should make sure that your trademark isregistered for all categories of goods and/or services for which it is, or will be, used.

What should be kept in mind when usingtrademarks on the Internet?The use of trademarks on the internet hasraised a number of controversial legalproblems with no easy or uniform solution.One important problem stems from the factthat trademark rights are territorial,whereas the reach of the Internet is global.This creates problems when it comes tosettling disputes between persons orcompanies legitimately owning identical orconfusingly similar trademarks for identicalor similar goods or services in differentcountries. Legislation in this area is stilldeveloping and treatment may differ fromone country to another.

Registration of a trademark in India islimited to India only and does not giveprotection against possible infringementby use of a similar mark abroad. If youoffer goods for sale via the Internet into acountry where someone else owns thetrademark, you may be sued forinfringement. You need to be aware of thepotential risks of trading over the Internet.You should seek legal advice on the bestways to avoid or minimize those risks,especially when you receive a notice froman overseas trademark owner alleginginfringment of trademark rights. You

What is a domain name and how does itrelate to trademarks?

Domain names are Internet addresses, andare commonly used to find websites. Forexample, the domain name ‘wipo.int’ isused to locate the WIPO website at http://www.wipo.int.

Over time, domain names have come toconstitute business identifiers, thus oftencoming in conflict with trademarks.

should also consider the potential benefitsfor your business of applying forregistration of your trademark overseasusing the Madrid Agreement or MadridProtocol, if it possible to do so. Till suchtime India becomes a signatory to theMadrid Protocol, it is advisable to obtainregistration of Indian trademarks at least incountries where the goods are likely to beexported, availing of the privilege of ‘rightof priority’ under the Paris Convention forthe protection of Industrial Property (ofMarch20, 1883, as amended uptoSeptember 28, 1979), to which India is asignatory.

http://www

29


28 Yahoo Inc. v. Akash Arora 1999 PTC 20129 Online India Capital co. v. Dimensions Corporate 2000 PTC 396

Therefore, it is important that you chose adomain name, which is not the trademarkof another company, particularly a well-known trademark.

With the advent of the Internet, protectionof domain names, has received duejudicial recognition in India, as in othercountries. A domain name often serves thesame function as a trademark in identifyinga particular person or source.28 However,the position may be different where thedomain name is descriptive. In OnlineIndia Capital Co. Pvt. Ltd. v. DimensionsCorporate29 , the plaintiff who was using awebsite under the namewww.mutualfundsindia. com brought anaction against the defendant who adoptedthe name www.mutualfundsindia.com. Itwas held that the plaintiffs’ domain namewas the description of the character of theservices offered by it. There was noevidence to show that the word hasacquired a secondary meaning, which wasa pre-condition for granting trademarkprotection to a descriptive name.

Sometimes, domain names of wellknowncompanies are registered as a trademark. These are liable to be expungedfrom the Register if fraud or cybersquatting is established. In AcquaMinerals Limited vs. PRAMOD BORSE& Another (Delhi High Court 2001) –

the plaintiff was the registered proprietorand copyright owner of BISLERI forbottled mineral water. They applied fordomain name registration to NetworkSolutin Inc.- to register bisleri.com. Asuit was filed in which the court ruledthat the defendant had registered, withmala fide and dishonest intention toblock, and thus had adopted a squattingtactic. The court also ruled that Internetdomain name is a valuable corporateasset and is more than an Internetaddress. Therefore, it is entitled to equalprotection as a trade mark.

In order to find out whether a particulartrademark is already protected, pleasecontact directly the national or regionaltrademark offices, which may have anInternet-searchable trademark database. Alist of such databases is available onWIPO’s website at: ecommerce.wipo.int/databases/trademark/

On the other hand, if the trademark of yourcompany is being used in a domain nameor is being cybersquatted by anotherindividual or company, then you may takeaction to stop such misuse/infringement ofthe rights of your company. In such acase, one option would be to use WIPO’svery popular online administrativeprocedure for domain name disputeresolution at: arbiter.wipo.int/domains/.

30


30 Section 52 and 53, The Trade Marks Act, 199931 Section 48(2), The Trade Marks Act, 1999

Reg. No. 1073747Courtesy: Nirula Corner House Pvt. Ltd.

This WIPO website includes a modelcomplaint as well as a legal index to thethousands of WIPO domain namedisputes that have already beensuccessfully resloved.

Can you license your trademark to othercompanies?A trademark may be licensed to anothercompany. In such a case, the trademarkowner retains ownership and merelyagrees to the use of the trademark by oneor more other companies. This is usuallydone on payment of royalties and involvesthe consent of the trademark owner, whichis usually included in a formal licensingagreement which spells out the terms andconditions of the trademark license.In practice, trademark licenses arefrequently granted within broaderlicensing agreements, for example,franchising agreements or agreementsincluding the licensing of other intellectualproperty rights such as patents, know-how, and technical assistance for theproduction of a given product.In India, licensing of a trademark isrecognized and there is a provision forregistration of the licensee as a “registereduser”, though such registration is notmandatory. However, it is explicitlyprovided that an unregistered licenseduser will have no right to ‘institute anyproceeding for any infringement’, as this

may be done only by a registered user.30

The permitted use of a trademark by thelicensee is deemed to be use by the ownerof the mark.31

What does a franchising agreement haveto do with trademarks?The licensing of a trademark is central to afranchising agreement. In franchisingagreements the degree of control of thetrademark owner over the franchisee isgenerally greater than is the case forstandard trademark licensing agreements.In the case of franchising, the franchiserallows another person (the franchisee) touse his way of doing business (includingtrademarks, know-how, customer service,software, shop decoration, etc.) inaccordance with a set of prescriptions andin exchange for compensation or royalty.

Example: Nirula’s, established in 1934, isa diversified group having a chain ofElegant Business Hotels, Waiter ServiceRestaurants, Family Style Restaurants, Ice

31


32 Section 45, The Trade Marks Act, 1999 33 Section 55, The Trade Marks Act, 1999

The Trade Marks Act, 1999, 1(ze): “tribunal” means the Registrar or, as the case may be, the Appellate Boardbefore which the proceeding concerned is pending.

Cream Parlours, Pastry Shops and FoodProcessing Plants in India. The chain withover 60 outlets operated mostly byfranchisees in different Indian statescaters to the Indian palate of over 50,000customers everyday.

Is there any restriction in selling orassigning the trademark of your companyto another company?It is increasingly possible to sell or assigna trademark independently from thebusiness that currently owns it.

Assignment of a trademark involvestransfer of ownership of the mark and suchassignment under the Indian law may bemade with or without the goodwill of thebusiness. The law prescribes a procedurefor advertisement of assignment as anotice to the public where the assignmentis without goodwill of business. Then,there are also restrictions on assignmentwhere multiple exclusive rights would becreated or where exclusive rights would becreated in different parts of India.

When a person becomes entitled byassignment or transmission to a registeredtrademark, he is required by law to register

his title.32 Further, an instrument in respectof which no entry has been made in theregister is not to be admitted in evidence byany court as a proof of title to a trademarkacquired by assignment.

Do you need to register all smallmodifications to your trademark?Many trademarks, including some of themost famous, have slightly changed orevolved over the years in order tomodernize the image of a company oradapt to new advertising media.Under the Indian law, alteration of aregistered mark in any manner‘substantially affecting the identitythereof’ is not permissible. Further, wherethe use of a registered trademark isrequired to be proved, the tribunal mayaccept use of a registered associatedtrademark or of the trademark withadditions or alterations not substantiallyaffecting its identity, as an equivalent forthe use required to be proved.33 As such,when the alteration is rather substantial,the altered mark may become the subjectof separate registration, so that it isassociated with the prior registered mark.

32


34 Section 83, The Trade Marks Act, 199935Section 91(1),The Trade Marks Act, 199936Section 93, The Trade Marks Act, 1999

37Section 134, The Trade Marks Act, 199938Section 135(2), The Trade Marks Act, 1999

5. Enforcing Trademarks

What should your business do if itstrademark is being used by otherswithout authorization?The burden of enforcing a trademark ismainly on the trademark owner. It is up toyour company as a trademark owner toidentify any potential or actualinfringement and to decide what measuresshould be taken to protect and enforceyour trademark rights. Registration of atrademark will be purposeless, unless therights conferred by registration areenforced against unauthorized use of atrademark as a trademark by third parties.

It is always useful to seek expert advice ifyou believe that someone is infringingyour trademark. An intellectual propertylawyer would be the right person toprovide guidance on the existing optionsin India and abroad to initiate actionagainst counterfeiting and infringementand will provide you with advice on howto enforce your rights.

If you are faced with infringement of yourtrademark rights, then you may choose tobegin by sending a letter (commonlyknown as a “cease and desist letter”) tothe alleged infringer informing him/her ofthe possible existence of a conflict. In

writing such a letter, the assistance of atrademark lawyer is recommended.

In India, there is an appellate board toexercise the jurisdiction, powers andauthority conferred on it.34 Any personaggrieved by an order or decision of theRegistrar may prefer an appeal to theAppellate Board within three months fromthe date on which the order or decisionsought to be appealed against is comm-unicated to such person preferring theappeal35. The court or other authority arenot entitled to exercise any jurisdiction,powers or authority in relation to thematters referred36.

In India, the law provides for filing a suitfor infringement before a court of aminimum level of a District court.37 Therelief may include ex parte injunction orany interloculatory order.38 Apart from thecivil and administrative remedies, the lawprovides for criminal proceedings againstfalsifying and falsely applying trademarks,which are criminal offences. The penaltiesinclude imprisonment for a term varyingfrom six months to three years and withfine from fifty thousand rupees to twolakhs rupees.

Any police officer not below the rank ofdeputy superintendent of police or

33


39Section 115(4), The Trade Marks Act, 199940 Section140, The Trade Marks Act, 199941section 144, The Trade Marks Act, 1999

equivalent, may search and seize withoutwarrant the goods, die, block, machine,plate, other instruments or things involvedin committing the offence. All the articlesso seized are to be produced before aJudicial Magistrate of the first class or aMetropolitan Magistrate. The policeofficer, before making any search andseizure, has to obtain the opinion of theRegistrar on facts involved in the offencerelating to trademark and will abide by theopinion so obtained.39

In order to prevent the importation ofcounterfeit trademark goods, measures atthe international border are available totrademark owners in many countriesthrough the national customs authorities.As a trademark owner, your company mayseek the assistance of the customsauthorities at the border, that is, before thecounterfeit goods have been distri-butedin the country concerned. The assistanceof customs would generally requirepayment of prescribed fees, for which youwill have to contact the relevant customsauthorities.

In India, as proprietor or a licensee of aregistered trademark, you can give noticein writing to the Collector of Customs,objecting to the importation of goodsbearing an infringing trademark.

There are certain goods which areprohibited to be imported into India by theCentral Government and are liable toconfiscation on importation under the Act.The Commissioner of customs, onrepresentation/trademarks complaint,under the Act, can ask the importer or hisagent to produce any document in relationto goods and to furnish information as tothe name and address of the sender ofsuch goods and also of the receiver of thegoods in India. This information may besought within a period of fourteen days,and if the person fails to do so, he may befined upto five hundred rupees. In caseany aforesaid information is received fromthe importer/agent, the Commissioner ofcustom communicates it to the registeredproprietor/user of the trademark.40

In any proceeding relating to a Trademark,the tribunal shall admit evidence of theusages of the trade concerned and of anyrelevant Trademark or trade name of get uplegitimately used by other person.41

Plan your trademark enforcement strategyin such a manner that it serves youroverall business objectives as well as youroverall intellectual property strategy,keeping in mind its likely costs, both interms of money and time, and benefits. Indoing so, it would be very useful to rely

34


on the advise of a competent trademarklawyer/attorney, given the complexity ofthe relevant laws and procedures beforethe courts, police and customs authoritiesin India and abroad

Arbitration or mediation: In someinstances, an effective way of dealing withinfringement is through arbitration ormediation. Arbitration generally has theadvantage of being a less formal, shorterand cheaper procedure than court

proceedings, and an arbitral award is moreeasily enforceable internationally. Anadvantage of mediation is thatthe parties retain control ofthe dispute resolution process. As such, itcan help to preserve good businessrelations with another enterprise withwhich your company may like tocollaborate in the future. For moreinformation on arbitration and mediation,see the website of the WIPO Arbitrationand Mediation Center at: /arbiter.wipo.int/center/index.htm/.

35


ANNEX l

Useful Websites for further information

On other intellectual property issues from a business perspective:www.wipo.int/sme/

On trademarks in general:- ”About IP” at the WIPO website: www.wipo.int/about-ip/en/- International Trademark Association: www.inta.org

On practical aspects relating to the registration of marks, see list of websites ofnational and regional trademark offices available in Annex I; orwww.wipo.int/news/en/links/ipo

On the Madrid system for the International Registration of Marks:www.wipo.int/madrid/en

For a list of on-line trademark databases maintained by industrial property officesthroughout the world:www.arbiter.wipo.int/trademark/

On the International Classification of Goods and Services for the Purposes of theRegistration of Marks under the Nice Agreement:www.wipo.int/classifications/en (under Nice Agreement)

On the International Classification of the Figurative Elements of Marks under theVienna Agreement:www.wipo.int/classifications/en (under Vienna Agreement)

On the conflict between trademarks and domain names and on alternative disputeresolution procedures for domain names:www.arbiter.wipo.int/domains/www.icann.org

36


Afghanistan Not availableAlbania www.alpto.gov.alAlgeria www.inapi.orgAndorra www.ompa.adAngola Not availableAntigua and Barbuda Not availableArgentina www.inpi.gov.arArmenia www.armpatent.orgAustralia www.ipaustralia.gov.auAustria www.patent.bmvit.gv.atAzerbaijan www.azpat.orgBahamas Not availableBahrain Not availableBangladesh Not availableBarbados www.caipo.orgBelarus www.belgospatent.orgBelgium www.mineco.fgov.beBelize www.belipo.bzBenin Not availableBhutan Not availableBolivia www.senapi.gov.boBosnia and Herzegovina www.basmp.gov.baBotswana Not availableBrazil www.inpi.gov.brBrunei Darussalam Not availableBulgaria www.bpo.bgBurkina Faso Not availableBurundi Not availableCambodia Not availableCameroon Not availableCanada www.opic.gc.caCape Verde Not availableCentral African Republica Not availableChad Not availableChile www.dpi.clChina www.sipo.gov.cnColombia www.sic.gov.co

ANNEX IlInternet Addresses of National and Regional Intellectual Property Offices

37


Comores Not availableCongo www.anpi.cg.wipo.netCook Islands Not availablCosta Rica www.registronacional.go.crCôte d’Ivoire Not availableCroatia www.dziv.hrCuba www.ocpi.cuCyprus www.mcit.gov.cy/mcit/drcor/

drcor.nsfCzech Republic www.upv.czDemocratic People’s Republic of Korea Not availableDemocratic Republic of the Congo Not availableDenmark www.dkpto.dkDjibouti Not availableDominica Not availableDominican Republic www.seic.gov.do/onapiEcuador Not availableEgypt www.egypo.gov.egEl Salvador www.ias.cnr.gob.sv/PI/onlineEquatorial Guinea Not availableEritrea Not availableEstonia www.epa.eeEthiopia Not availableFiji Not availableFinland www.prh.fiFrance www.inpi.frGabon Not availableGambia Not availableGeorgia www.sakpatenti.org.geGermany www.dpma.deGhana Not availableGreece www.obi.grGrenada Not availableGuatemala www.rpi.gov.gtGuinea Not availableGuinea-Bissau Not availableGuyana Not availableHaiti Not availableHoly See Not availableHonduras www.sic.gob.hn/pintelec/indice.htmHungary www.hpo.huIceland www.els.stjr.is

38


India www.ipindia.nic.inIndonesia www.dgip.go.idIran (Islamic Republic of) Not availableIraq Not availableIreland www.patentsoffice.ieIsrael www.justice.gov.ilItaly www.uibm.gov.itJamaica www.jipo.gov.jmJapan www.jpo.go.jpJordan www.mit.gov.joKazakhstan www.kazpatent.kzKenya Not availableKiribati Not availableKuwait Not availableKyrgyzstan Not availableLao People’s Democratic Republic www.stea.la.wipo.netLatvia www.lrpv.lvLebanon www..economy.gov.lbLesotho Not availableLiberia Not availableLibyan Arab Jamahiriya Not availableLiechtenstein Not availableLithuania www.vpb.ltLuxembourg www.etat.lu/ecMadagascar Not availableMalawi Not availableMalaysia www.mipc.gov.myMaldives www.trademin.gov.mv/homeMali Not availableMalta www.foi.org.mtMauritania Not availableMauritius Not availableMexico www.impi.gob.mxMoldova Not availableMonaco www.european-patent-office.org/

patlib/country/monaco/Mongolia www.ipom.mnMontenegro Not availableMorocco www.ompic.org.maMozambique www.ipi.gov.mzMyanmar Not availableNamibia Not available

39


Nauru Not availableNepal www.ip.np.wipo.netNetherlands www.octrooicentrum.nlNew Zealand www.iponz.govt.nzNicaragua www.rpi.gob.niNiger www.bnda.ne.wipo.netNigeria Not availableNorway www.patentstyret.noOman www.gulf-patent-office.org.saPakistan www.ipo.gov.pkPalau Not availablePanama Not availablePapua New Guinea Not availableParaguay Not availablePeru www.indecopi.gob.pePhilippines www.ipophil.gov.phPoland www.uprp.plPortugal www.inpi.ptQatar Not availableRepublic of Korea kipo.go.krRomania Not availableRussian Federation Not availableRwanda Not availableSaint Kitt and Nevis Not availableSaint Lucia Not availableSaint Vincent and the Grenadines Not availableSamoa Not availableSan Marino Not availableSao Tome and Principe Not availableSaudi Arabia Not availableSenegal www.oapi.wipo.netSerbia www.yupat.sv.gov.yu/srSeychelles Not availableSierra Leone Not availableSingapore www.ipos.gov.sgSlovakia www.indprop.gov.skSlovenia www.uil-sipo.siSolomon Islands Not availableSomalia Not availableSouth Africa www.uil-sipo.siSpain www.oepm.esSri Lanka Not available

40


Sudan Not availableSuriname Not availableSwaziland Not availableSweden www.prv.seSwitzerland www.ige.chSyrian Arab Republic www.spo.gov.syTajikistan Not availableThailand www.ipthailand.orgThe Former Yugoslav Republic of Macedonia www.ippo.gov.mkTogo Not availableTonga Not availableTrinidad and Tobago www.ipo.gov.tt/home.aspTunisia www.inorpi.ind.tnTurkey www.turkpatent.gov.trTurkmenistan Not availableUganda Not availableUkraine www.sdip.gov.uaUnited Arab Emirates Not availableUnited Kingdom www.patent.gov.ukUnited Republic of Tanzania www.cosota-tz.orgUnited States of America www.uspto.govUruguay www.dnpi.gub.uyUzbekistan www.patent.uzVanuatu Not availableVenezuela Not availableVietnam Not availableYemen www.yipo.gov.yeZambia Not availableZimbabwe Not available

Rev. April 29, 2008Note: For update list of websites visit the WIPO website at www.wipo.int/directory/en/urls.jsp

41


ANNEX IlIClassification of goods and services – Name of the classes

(Parts of an article or apparatus are, in general, classified with the actual article or apparatus,except where such parts constitute articles included in other classes).

Classes of Goods

CLASS 1: Chemicals used in industry, science and photography, as well as in agriculture,horticulture and forestry; unprocessed artificial resins, unprocessed plastics;manures; fire extinguishing compositions; tempering and solderingpreparations; chemical substances for preserving foodstuffs; tanningsubstances; adhesives used in industry.

CLASS 2: Paints, varnishes, lacquers; preservatives against rust and against deteriorationof wood; colorants; mordants; raw natural resins; metals in foil and powderform for painters, decorators, printers and artists.

CLASS 3: Bleaching preparations and other substances for laundry use; cleaning,polishing, scouring and abrasive preparations; soaps; perfumery, essentialoils, cosmetics, hair lotions; dentifrices.

CLASS 4: Industrial oils and greases; lubricants; dust absorbing, wetting and bindingcompositions; fuels (including motor spirit) and illuminants; candles and wicksfor lighting.

CLASS 5: Pharmaceutical and veterinary preparations; sanitary preparations for medicalpurposes; dietetic substances adapted for medical use, food for babies;plasters, materials for dressings; material for stopping teeth, dental wax;disinfectants; preparations for destroying vermin; fungicides, herbicides.

CLASS 6: Common metals and their alloys; metal building materials; transportablebuildings of metal; materials of metal for railway tracks; non-electric cables andwires of common metal; ironmongery, small items of metal hardware; pipes andtubes of metal; safes; goods of common metal not included in other classes;ores.

CLASS 7: Machines and machine tools; motors and engines (except for land vehicles);machine coupling and transmission components (except for land vehicles);agricultural implements other than hand-operated; incubators for eggs.

42


CLASS 8: Hand tools and implements (hand-operated); cutlery; side arms; razors.

CLASS 9: Scientific, nautical, surveying, photographic, cinematographic, optical,weighing, measuring, signalling, checking (supervision), life-saving andteaching apparatus and instruments; apparatus and instruments for conducting,switching, transforming, accumulating, regulating or controlling electricity;apparatus for recording, transmission or reproduction of sound or images;magnetic data carriers, recording discs; automatic vending machines andmechanisms for coin-operated apparatus; cash registers, calculating machines,data processing equipment and computers; fire-extinguishing apparatus.

CLASS 10: Surgical, medical, dental and veterinary apparatus and instruments, artificiallimbs, eyes and teeth; orthopedic articles; suture materials.

CLASS 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying,ventilating, water supply and sanitary purposes.

CLASS 12: Vehicles; apparatus for locomotion by land, air or water.

CLASS 13: Firearms; ammunition and projectiles; explosives; fireworks.

CLASS 14: Precious metals and their alloys and goods in precious metals or coatedtherewith, not included in other classes; jewellery, precious stones; horologicaland chronometric instruments.

CLASS 15: Musical instruments.

CLASS 16: Paper, cardboard and goods made from these materials, not included in otherclasses; printed matter; bookbinding material; photographs; stationery;adhesives for stationery or household purposes; artists’ materials; paintbrushes; typewriters and office requisites (except furniture); instructional andteaching material (except apparatus); plastic materials for packaging (notincluded in other classes); printers’ type; printing blocks.

CLASS 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materialsand not included in other classes; plastics in extruded form for use in manu-facture; packing, stopping and insulating materials; flexible pipes, not of metal.

CLASS 18: Leather and imitations of leather, and goods made of these materials and notincluded in other classes; animal skins, hides; trunks and travelling bags;umbrellas, parasols and walking sticks; whips, harness and saddlery.

43


CLASS 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt,pitch and bitumen; non-metallic transportable buildings; monuments, not ofmetal.

CLASS 20: Furniture, mirrors, picture frames; goods (not included in other classes) ofwood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber,mother-of-pearl, meerschaum and substitutes for all these materials, or ofplastics.

CLASS 21: Household or kitchen utensils and containers (not of precious metal or coatedtherewith); combs and sponges; brushes (except paint brushes); brush-makingmaterials; articles for cleaning purposes; steelwool; unworked or semi-workedglass (except glass used in building); glassware, porcelain and earthenwarenot included in other classes.

CLASS 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (notincluded in other classes); padding and stuffing materials (except of rubber orplastics); raw fibrous textile materials.

CLASS 23: Yarns and threads, for textile use.

CLASS 24: Textiles and textile goods, not included in other classes; bed and table covers.

CLASS 25: Clothing, footwear, headgear.

CLASS 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins andneedles; artificial flowers.

CLASS 27: Carpets, rugs, mats and matting, linoleum and other materials for coveringexisting floors; wall hangings (non-textile).

CLASS 28: Games and playthings; gymnastic and sporting articles not included in otherclasses; decorations for Christmas trees.

CLASS 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruitsand vegetables; jellies, jams, compotes; eggs, milk and milk products; edibleoils and fats.

CLASS 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour andpreparations made from cereals, bread, pastry and confectionery, ices; honey,treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments);spices; ice.

44


CLASS 31: Agricultural, horticultural and forestry products and grains not included inother classes; live animals; fresh fruits and vegetables; seeds, natural plantsand flowers; foodstuffs for animals, malt.

CLASS 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinksand fruit juices; syrups and other preparations for making beverages.

CLASS 33: Alcoholic beverages (except beers).

CLASS 34: Tobacco; smokers’ articles; matches.

CLASSES OF SERVICES

CLASS 35: Advertising; business management; business administration; office functions.

CLASS 36: Insurance; financial affairs; monetary affairs; real estate affairs.

CLASS 37: Building construction; repair; installation services.

CLASS 38: Telecommunications

CLASS 39: Transport; packaging and storage of goods; travel arrangement

CLASS 40: Treatment of materials

CLASS 41: Education; providing of training; entertainment; sporting and cultural activities.

CLASS 42: Scientific and technological services and research and design relating thereto;industrial analysis and research services; design and development of computerhardware and software; legal services.

CLASS 43: Services for providing food and drink; temporary accommodation.

CLASS 44: Medical Services; veterinary services; hygienic and beauty care forhuman beings or animals; agriculture, horticulture and forestry services.

CLASS 45: Personal and social services rendered by others to meet the needsof individuals; security services for the protection of property andindividuals.

Note : The International classification which had 42 classes earlier has been enlarged to 45 classes. The changes are in theseparation of some of the services, which were hitherto covered by class 42 into classes 43, 44 and 45. The Indianclassification, as above, does not however reflect these changes.

45


ANNEX IV

Members of the Madrid Union(As on February 7, 2008)

Albania (A&P)

Algeria (A)

Antigua and Barbuda (P)

Armenia (A&P)

Australia (P)

Austria (A&P)

Azerbaijan (A)

Bahrain (P)

Belarus (A&P)

Belgium* (A&P)

Bhutan (A&P)

Bosnia and Herzegovina (A)

Bulgaria (A&P)

China (A&P)

Croatia (A)

Cuba (A&P)

Cyprus (A&P)

Czech Republic (A&P)

Democratic People’s Republic of Korea(A&P)

Denmark (P)

Egypt (A)

Estonia (P)

European Community (P)

Finland (P)

France (A&P)

Georgia (P)

Germany (A&P)

Greece (P)

Hungary (A&P)

Iceland (P)

Iran (Islamic Republic of) (A&P)

Ireland (P)

Italy (A&P)

Japan (P)

Kazakhstan (A)

Kenya (A&P)

Kyrgyzstan (A)

Latvia (A&P)

Lesotho (A&P)

Liberia (A)

Liechtenstein (A&P)

Lithuania (P)

Luxembourg* (A&P)

Madagascar (P)

Moldova (A&P)

Monaco (A&P)

Mongolia (A&P)

Montenegro (A&P)

Morocco (A&P)

Mozambique (A&P)

Namibia (A&P)

Netherlands*(A&P)

Norway (P)

46


Oman (P)

Poland (A&P)

Portugal (A&P)

Republic of Korea (A&P)

Romania (A&P)

Russian Federation (A&P)

San Marino (A)

Serbia (A&P)

Sierra Leone (A&P)

Singapore (P)

Slovakia (A&P)

Slovenia (A&P)

Spain (A&P)

Sudan (A)

Swaziland (A&P)

Sweden (P)

Switzerland (A&P)

Syrian Arab Republic (A&P)

Tajikistan (A)

The former Yugoslav Republic ofMacedonia (A&P)

Turkey (P)

Turkmenistan (P)

Ukraine (A&P)

United Kingdom (P)

United States of America (P)

Uzbekistan (A)

Viet Nam (A)

Zambia (P)

Total: 82(A) : indicates a party to the Agreement (56)(P) : indicates a party to the Protocol (75)

* Protection may not be requested separately on Belgium, Luxembourg or the Netherlands , but onlyfor all three countries as a whole (Benelux), subject to payment of a single complementary orindividual fee.

Note: For up to date information about member of the Madrid Union visit the website of WIPO atwww.wipo.int/treaties/en/documents/pdf/madrid_marks.pdf

47


ANNEX V

Trademarks RegistryHead Office and Branch offices

MUMBAI (Head Office)Joint Registrar of TrademarksTrade Marks RegistryIntellectual Property BhavanSM Road, Antop HillMumbai-400 037Tel. 022- 24101144, 24101177 Fax: 022- 24120808, 24132295

(States covered: Maharashtra, Madhya Pradesh, Chattisgad, Goa)

AHMEDABADAssistant Registrar of TrademarksTrade Marks Registry15/27 National Chambers, 1st floorAshram road, Ahmedabad-380 009.Tel: 079-26580567, 26587193Fax: 079-26586763

(States covered: Gujarat and Rajasthan and Union Territory of Damman, Diu, Dadra andNagar Haveli).

KOLKATAAssistant Registrar of TrademarksTrade Marks RegistryI.P.Bhavan, 5th floor, CP-2Sector V, Salt LakeKolkata-700 091Phone: 033-23675975, 23672848Telfax. 033-23677311

(States covered: Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram,Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, Andaman & Nicobar Island).

48


NEW DELHIAssistant Registrar of TrademarksTrade Marks RegistryIntellectual Property BhavanPlot NO.32, Sector 14, DwarkaNew Delhi-110 075Tel. 011-28082915/16/17Fax: 28082917

(States covered: State of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, HimachalPradesh, Union Territory of Delhi and Chandigarh).

CHENNAIJoint Registrar of TrademarksTrade Marks RegistryIPR building, Industrial Estate SidcoRMD Godown Area, GST RoadGuindy, Chennai-600 031Tel : 044-22321992, 23222441/42Fax: 044-24314751

(States covered: Andhra Pradesh, Kerala, Tamil Nadu, Karnataka and Union Territory ofPondicherry and Lakshadweep Island).

49


ANNEX VI

Fees for some important Trade Marks Transactions(As per Trade Marks Rules, 2002)

Entry On what payable Amount CorrespondingNo. Rs. P. Form Number

1. On application to register 2500.00 TM-1a Trademark for a specifi-cation of goods or servicesincluded in one class[Section 18(1)]

2. On a single application 2500.00 TM-51under section 18(2) for the for each classregistration of a Trademarkfor different classes ofgoods or services.

3. For renewal under 5,000.00 TM-12section 25 of the regis-tration of a Trademarkat the expiration of thelast registration nototherwise charged.

4. For renewal under TM-12section 25 of the regis-tration of a series trademark at the expirationof the last registration.For the first two marks 5,000.00of the series of eachseparate class:

For every additional 2500.00mark of the series ofeach separate class.

50


Entry On what payable Amount CorrespondingNo. Rs. P. Form Number

5. For renewal under 5,000.00 TM-12section 25 of a single for each classapplication of a trademark for goods orservices in more thanone class-in respect ofevery class.

6. For renewal under 20,000.00 TM-12section 25 of the regis-tration of a collectivemark/certification trademark.

7. On application under 3000.00 TM-13section 25(4) for resto-ration of a Trademarkremoved from theregister.

8. For a search under 500.00 TM-54rule 24(1) in respect ofone class

9. On request for the 1000.00 TM-55Registrar’s preliminaryadvice under section133(1) for a Trademarkin respect of one class.

Note: For more information, see the website of Trade Marks Registry at www.ipindia.nic.in/tmr_new/first_schedule_forms/the_first_schedule.htm

Disclaimer: This publication has been adapted and reproduced with the prior express permission of the World Intellectual Property Organization (WIPO), the copyright owner of the original English language version, which is available at www.wipo.int/sme/en/documents/guides/. As such, WIPO is not liable or responsible for the accuracy or correctness of the adapted version of the publication, as that liability or responsibility rests solely with the National Institute of Science Communication and Information Resources, New Delhi, India. This guide is not meant as an authoritative statement of the laws on trademarks. Its broad aim is to educate those concerned with trademark by providing a general understanding of issues related to trademarks.

NISCAIR 2008. WIPO owns copyright in the original English language version (2003).No part of this publication may be reproduced or transmitted in any from or by any means electronically or mechanically, except as permitted by law, without written permission from the owner of the copyright.

Ó

WIPO Publications in the "Intellectual Property for Business" series:

1. Making a Mark: An Introduction to Trademarks for Small and Medium-sized Enterprises. WIPO publication No. 900.

2. Looking Good: An Introduction to Industrial Designs for Small and Medium-sized Enterprises. WIPO publication No. 498.

3. Inventing the Future: An Introduction to Patents for Small and Medium-sized Enterprises. WIPO publication No. 917.

4. Creative Expression: An Introduction to Copyright for Small and Medium-sized Enterprises. WIPO publication No. 918.

For other business oriented content and publications on intellectual property, please consult the You may also subscribe to the free monthly electronic newsletter of the SMEs Division available at

www.wipo.int/sme.

www.wipo.int/sme/en/documents/wipo_sme_newsletter.html

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