Aryan tribes from the northwest infiltrated onto the Indian subcontinent about 1500 B.C. Their merger with the earlier Dravidian inhabitants created the classical Indian culture. The Maurya Empire of the 4th and 3rd centuries B.C. reached its zenith under ASHOKA and united much of South Asia. The Golden Age ushered in
by the Gupta dynasty during the 4th to 6th centuries A.D. saw a flowering of Indian science, art, and culture. Arab incursions starting in the 8th century and Turkic incursions in the 12th century were followed by those of European traders, beginning in the late 15th century.
By the 19th century, Britain had assumed political control of virtually all Indian lands. Indian armed forces in the British army played a vital role in both World Wars. Nonviolent resistance to British colonialism led by Mohandas Gandhi and Jawaharlal Nehru brought independence in 1947.
The subcontinent was divided into the secular state of India and the smaller Muslim state of Pakistan. A third war between the two countries in 1971 resulted in East Pakistan becoming the separate nation of Bangladesh. India's nuclear weapons testing in 1998 caused Pakistan to conduct its own tests that same year. The dispute between the countries over the state of Kashmir is ongoing, but discussions and confidencebuilding measures have led to decreased tensions since 2002. Despite impressive gains in economic investment and output, India faces pressing challenges such as significant overpopulation, environmental degradation, extensive poverty, and ethnic and religious strife.
Who May Apply?
Any person claiming to be the owner of a trademark used or proposed to be used and who desires to register the mark may make an application for its registration. The applicant must have a claim to ownership of the mark. The word "person" includes associations of persons, companies that are incorporated or otherwise formed, trusts, or the central or state governments.
A person may acquire a right in a trademark either by its use in the course of trade in relation to certain goods and/or services or by registration under the Act Where an application for registration of a mark has been made stating that the owner intends to use the mark, the applicant must have made the application in good faith and must show that she or he is entitled to be registered as the owner of the trademark. A foreigner must furnish an address for service in India.
What Can Be Registered?
Prior to the 1999 Act, the Register of trademarks was divided into two parts, Part A and Part B. However, after the 1999 Act, this division in the Register of trademarks has ceased, and now trademarks which have either inherent or acquired distinctiveness may be registered in one central Register for trademarks.
The following trademarks may be registered:
(1) a name (including a personal or family name of the applic&t or that of his predecessor in business, or the signature of an individual);
(2) three-dimensional marks;
(3) invented words or any dictionary word or words which are not directly descriptive of the character or quality of the goods or services;
(4) any combina,tion of letters and numerals, provided they have some distinctive character;
(5) any devices (logos/designs), which may include a fancy device or symbol;
(7) any combinations of colors, which may include a single color with a word or device;
(8) packaging and shapes of goods; and
(9) sound marks which are capable of being represented graphically in conventional notation or described in words.
To be registrable, a mark must also be:
(1) capable of being represented graphically;
(2) capable of distinguishing the goods or services from those of others (i.e., acquired or inherent distinctiveness); and
(3) used or proposed to be used in relation to the goods or services to indicate a connection in the course of trade between the goods or services and the person having the right to use the mark, with or without the identity of that person.
Invented or arbitrary words are thus the most likely to be registered. Personal names or family names may also be used as trademarks; and registration may be obtained therefor provided that they are distinctive. For the purpose of registration, the signature of the applicant or his predecessor in the business is considered to be prima facie distinctive. Marks for Services:
The 1958 Act provided for the registration only of trademarks for goods. However, under the Trademark Act of 1999, the registration of marks for services is allowed. "Service" as defined in this Act means services of any description that are made available to potential users. It includes the provision of services in connection with businesses of any industrial or commercial matters such as, for example, banking, communication, education, financing, insurance, chit funds, real
estate, transport, storage, material, treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, constructions repair, conveying news or information, and advertising.
What Cannot Be Registered?
Under the Trademark Act of 1999, trademarks may not be registered if they:
(1) are devoid of any distinctive character;
(2) consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin, or the time of production of goods or rendering of the services or other characteristics of the goods or service;
(3) consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practice of the trade, unless it is shown that the mark has, in fact, acquired a distinctive character as a result of use before the date of application; or
(4) consist of the name of a sect, caste, or tribe in India (a very common name or a caste or sect is not registrable even with evidence of distinctiveness).
Unless it is shown that a geographical name has acquired a distinctive character as a result of use made of it or is a well-known mark, it also may not be registered.
A mark or sign also may not be registered as a trademark if it:
(1) deceives the public or causes confusion;
(2) contains or is comprised of any matter harmful to religious beliefs;
(3) contains scandalous or obscene matter;
(4) is expressly prohibited;
(5) consists exclusively of the shape of goods which forms the nature of goods themselves, or the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value of the goods (i.e., functional product designs);
(6) is similar to an earlier trademark and is used for goods or services associated with the earlier mark, or is so similar to an earlier trademark and the goods and services for which it is used to cause a likelihood of confusion;
(7) is identical with or similar to an earlier trademark and, although it is to be used for goods and services dissimilar to those for which the earlier trademark is registered and in the name of a different proprietor, the earlier trademark is a well-known trademark in India; or
(8) is not allowed to be used in India by any law, such as the Emblems and Names Act of 1950.
A well-known trademark is a mark used for any goods or services that has become known to a substantial segment of the public which uses such goods or receives such services that unauthorized use of such a mark in relation to other goods or services would be likely to be misconstrued as indicating a connection between those goods or services and the goods lawfully bearing the well-known trademark.
The Registrar is charged with the obligation of protecting wellknown trademarks against the registration of identical or similar trademarks. In doing so, the Registrar takes into consideration any malafide intent of the applicant.
Registration does not entitle the owner of a trademark to interfere with or restrain the use by any person of a similar trademark if that person or his or her predecessors in business have continually used that trademark from a date prior to the registration of the second, registered mark. The registered mark owner also may not object to such a use or to the addition of that mark to the Register.
No registration of a trademark will interfere with any bona fide use by a person of his or her own name or that of his or her place of business or of the name of the place of business of any of his or her predecessors in business, or the use by any person of any bona fide description of the character or quality of his or her goods. The party who alleges a bona fide intention to use a mark must establish his or her good faith.
The following items are required for applications for registration:
(1) application on prescribed form in triplicate together with the official fee;
(2) five additional representation sheets;
(3) power of authority, simply signed; and
(4) priority documents if priority is claimed.
Applications for certification marks also require a copy of the regulations and requirements governing the use of the mark.
Series marks additionally require a representation of each trademark in the series.
Evaluation & Review
The Trademark Office examines the application to determine whether:
(1) the application fulfils all the procedural requirements;
(2) the mark is capable of distinguishing the goods or services of the applicant and can be registered under the Act; and
(3) there is any trademark pending or registered that is identical or similar to the trademark applied for in the application.
Any objection by the Registrar to registration of a mark must be given to the applicant in writing. The applicant can rebut the Examiner's objections within the prescribed time. If the applicant does not respond to the Registrar's objection within the prescribed time, the Registrar will deem the application to be abandoned.
Upon compliance with the examination proceedings, the Registrar may reject or allow the application. If the application is allowed, the Registrar orders advertisement in the Official Gazette before acceptance. Any aggrieved party may make an application for rectification and correction of the register to the Registrar or to the Appellate Board. The application may be either for the removal of a mark from the Register or for omission from the Register of any entry related to the registered trademark.
In the past, registration of trademarks lasted for a period of seven years. Under the Trademark Act of 1999, the duration has been extended to ten years. Renewal of registrations is permissible for successive periods of ten years from the date of the original registration or the last renewal.
The Registrar must issue a notice to the registered owner of the mark before the expiration of the registration of the mark indicating the date of expiration and conditions concerning the payment of fees. After the expiration of a registration, the payment of a renewal fee can be extended by a grace period of six months through the payment of a surcharge. A trademark for which no renewal fee has been paid even after the grace period can be removed from the Register of
Registration may be cancelled where there was no bona fide intent to use or no bona fide use of the mark for five years. The five-year period of nonuse begins from the date on which the trademark is actually registered in the Register of trademarks. Any aggrieved person may file an application for removal of a registered trademark for nonuse. An aggrieved person has not been defined in the Act. In assessing the use of a mark, use by associated companies or by unregistered licensees may not be regarded in some circumstances as use by the registered proprietor. The sale of goods in duty-free shops at international airports or other authorized establishments in India constitutes use of the mark in the country. Sale to an airline in India also constitutes use of a mark. While deciding the use of a mark, the quantum of sale is not the deciding factor. It is also not necessary for the sale to be in the open market or on a regular basis.
If a domain name resembles any trademark registered prior to the registration of the domain name, the owner of the mark may apply to the administrative panel for cancellation of the domain name to protect their rights in the mark. If the complainant proves that the disputed domain name was adopted in bad faith, the administrative panel may cancel or transfer the domain to the prior owner of the trademark. Any person aggrieved by the order of the panel may apply to any competent court provided that the person supplies a copy of such complaint, file-stamped by the clerk of the court, to the administrative
panel within ten business days from the order. Thus, the panel may refrain from implementing the order and canceling the disputed domain name until the administrative panel receives: (i) evidence of a resolution between the parties; (ii) evidence that the lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing the lawsuit or holding that the complainant does not have the right to continue to use the disputed domain name.
Domain names may be registered as trademarks provided that they are not descriptive.
Notice may be given to the various customs houses of a claim to a registered trademark, requesting that a watch be instituted. These notices remain valid for a period of three months but can be renewed for additional three-month periods provided that proof of the anticipated infringement has been given.
Customs will detain infringing goods for 24 hours to enable the owner of the mark infringed to have an indemnity bond executed. If such a bond is filed, the goods will be detained for a reasonable time to enable legal proceedings to be instituted against the infringer.