Filing Trademarks in India

The odds of successfully obtaining or protecting a trademark depend on various factors. For example, the presence of identical or similar marks, either pre-existing on the trade marks register or available in the market is a fundamental test. Another factor is the proposed mark’s distinctiveness, or its ability to stand out on its own. The underlying question is whether the mark owns substantial distinctiveness and can leave a lasting impact in the consumers’ minds. 

The Distinctiveness Spectrum

The ‘sliding scale’ theory, or ‘distinctiveness spectrum’, in trademark law, helps determine the strength of marks. The spectrum classifies marks in categories ranging from distinctive to generic, in an order along the following lines: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary/distinctive. Each of these characteristics are defined and generally understood. However, the lines between these categories are blurred and not often separable at the edges. It becomes more complicated when discussing trademarks used in connection with different goods or services, for a mark that is distinctive in one class may be generic in another.

A brief typology of these categories is provided thus:

1. A generic mark is one that bears reference to, or has over time, acquired such reference to the class of products that it is applied to. Such marks are denied registration.
2. Marks that are descriptive of the trade in which they are to be used are also forbidden registration.
3. Suggestive marks are neither descriptive, nor distinctive or fanciful. A mark is suggestive when it requires a certain amount of effort by the consumer to relate the same with the product to which it is applied. A suggestive mark stands a better chance of registration.
4. The most sought after marks are those that are fanciful and arbitrary marks, i.e., distinctive in nature. Recent examples of distinctive marks include Zepto, Dunzo, Zomato, Nykaa, etc. 

Trademark Genericide

Distinctive marks inarguably contain the best chances of success. But, if proprietors are not careful with its usage and promotion, such marks run the risk of becoming generic, sliding from one end of the spectrum to the other.

Words such as Band-Aid, Escalators, Thermos, Aspirin, that seem to be generic, were once held distinctive and worthy of protection. However, over time, due to various factors, they lost their distinctiveness, and subsequently, trademark protection as well. This phenomenon is known as

Genericide.

‘Trademark Genericide’ occurs when a mark, once distinctive, becomes identifiable with the specific class of products that it represents. Genericide especially occurs when a mark becomes so successful that it becomes descriptive of its product, falling prey to its own popularity.

Factors causing genericide

There are many reasons as to why a mark may suffer from genericide:
a. Improper use by proprietors:
Overenthusiasm may occasionally be counterproductive. In the quest to market products to leave a lasting impact on the public, proprietors commit certain blunders in advertisements, leading to the ultimate downfall of their mark. Such practices include: using the trademark as a synonym of the product itself, or using the trademark as a verb instead of a proper noun. A common example of the latter is the campaign “Paytm karo”, the after-effects of which have been that people mistakenly refer to any mode of payment made via a mobile application as “paytm”.

b. Improper licensing:
Licensing strategies adopted by trademark owners also play a critical role. Allowing licensees to incorporate and use marks without quality control measures is another serious threat, leading to trademark dilution and genericide.

c. Trademark of unique/patented products:
Trademarks of products that are first-of-a-kind in the market or protected under a patent are at a higher risk of falling to genericide. Being the only manufacturer of the product, the proprietor assumes a place of monopoly. While such a position offers a profitable advantage, the drawback is, when over time, consumers start associating the trademark with the product itself.

Measures to Avoid Genericide

In order to preserve a trademark and prevent genericide, proprietors can follow certain basic guidelines:

a. Being careful during promotions:
While promoting the trademark or the product, presenting the trademark as a verb, or as a description of the product, must be avoided. Instead, it would be advisable to advertise the trademark as an adjective or along with a generic name/description. For example, instead of ‘paytm karo’, advertising the service as using “Paytm, the payment app”, or “Paytm digital payment”, would be better ways, and would ensure appropriate product recall in the minds of the consumer.

b. Proper use of the mark:
It is prudent that the trademark is always accompanied with a proper notice of registration wherever it is mentioned, i.e., “®” for registered trademark and the TM symbol as a superscript for an unregistered trademark.

c. Distinctive Representation:
The trademark may be represented distinctively among the surrounding text, via a distinctive font, stylization, or highlighted via capitalization.

d. Trademark Policing:
As a direct way to ensure appropriate use of a mark by the public, brands have started incorporating trademark policing, via issuing guidelines and objecting to improper use. On the brink of genericide, the Xerox Holdings Corporation initiated various campaigns to avoid genericide. The campaigns used messages such as “When you use ‘xerox’ the way you use ‘aspirin’, we get a headache”, and “If you use ‘xerox’ the way you use ‘zipper’, our trademark could be left wide open”.

Conclusion
For any business, the success of their brand is of utmost priority. However, besides focusing on popularity, proprietors cannot afford to ignore the potential that their trademarks hold. Inadvertent slip-ups during promotional or advertising campaigns, or inadequate policing or monitoring of use by others, could easily lead the trademark to slip from the edge of distinctiveness and fall into the abyss of genericide instead. Proper usage of a trademark begins right at inception, from when the trademark is coined and protection is sought. This responsibility rests with the proprietor, and continuous vigilance is required to maintain the sanctity of distinctiveness.

When hardcoded statutory deadlines are violated, can delays be condoned? This was the central question answered by the Delhi High Court in The European Union Represented by the European Commission vs. Union of India. The court allowed for an extension of a non-extendable statutory deadline in a patent matter because of the exceptional circumstances of the case. The decision, though, came with fair warning that this was in exercise of the court’s discretionary power, and the patent agent could not be excused for the error of its ways. It also raises important questions on the regulation of patent agents and the state of patent prosecution in India.

Facts of the case

The petitioner (patent applicant), through its patent agent, filed two patent application with the Indian Patent Office (IPO) as national phase entries of its Patent Cooperation Treaty (PCT) applications. In accordance with procedure, the IPO proceeded to issue First Examination Reports (FERs) for these applications. However, the patent agent in question failed to inform the applicant of the FERs. As a result, the FERs were not responded to in time, and in accordance with the Indian Patents Act, 1970 (the Act), the application was deemed as abandoned by the IPO.

The applicant then engaged another patent agent to rectify this situation, and the second agent filed for a condonation of delay at the IPO, regularly following up on this. The IPO refused to acknowledge the same, and eventually, the agent and applicant approached the Delhi High Court via writ petitions challenging the Controller’s orders of abandonment.

Key analysis

Two aspects led to the decision going in favor of the applicant:

1. The negligence of the first patent agent
2. Intention to not abandon the application

Negligence of the Agent

There was ample proof that it was the actions of the first patent agent that led to this entire situation in the first place. Patent agents are expected to know which deadlines are extendable and which are not, and keep applicants apprised of these. The court emphasized the importance of the role of a patent agent and called out the negligence in the present case. Persistent follow-up by the applicant with the first agent regarding the status of their applications, despite not receiving any response or even an acknowledgement, played a significant role in demonstrating that there was no intent to abandon the application.

The court was of the opinion that the entire fault lay with the patent agent and the applicant was not negligent at all in the present case. It was due to reasons beyond the control of the applicant that the application was abandoned and the consequences of the same were being borne by the applicant. On this account, the court noted that the position of a patent agent is akin to that of an advocate, and it is a settled legal principle that the litigant should not suffer due to mistakes made by the counsel/advocate.

Intent of the applicant

It was also argued and shown that there was never an intent to abandon the application by the applicant, that the acts of the first patent agent were contrary to the intention of the applicant, and that the application was deemed abandoned due to the agent’s actions. To demonstrate intent, the applicant showed filings of several counterpart applications in other jurisdictions, some of which had been granted. In addition to this, not only did the applicant demonstrate that they had consistently followed up with the first patent agent and failed to get any response, but also that the second patent agent continually followed up on the application with the IPO. All this worked in the applicant’s favour, and the court condoned the delay and allowed for the patent applications to move forward.

Extraordinary circumstances allow for extension of deadlines

In the normal course of action, such delay would not be condoned by the court. The provisions of the Act and its accompanying Rules make it abundantly clear as to which deadlines and rules can be extended and which cannot. The court itself made it clear that it is unlikely to deviate such deadlines or allow for extensions in the case of non-extendable deadlines.

Judicial opinion in respect of responses to FER or other deadlines seems to suggest that a court ought to be liberal in its approach if (a) it is shown that the applicant did not have an intention to abandon, (b) the court is convinced that there was a mistake by the patent agent; and (c) the applicant can establish full diligence. In such cases, the court said it can be flexible in its approach. In a counterfactual scenario, had the patent applicant not demonstrated intent by, for example, not following up with the first patent agent or not engaging a second patent agent to follow up and check on the status of the application, the judgment could have potentially gone the other way. The court stated it only employed its writ power in such extreme circumstances to guarantee that the applicant’s important statutory rights are not denied.

The court repeatedly emphasized that such delay condonation was a rare event, and it may only be considered after carefully considering the circumstances and concluding that the applicant did not intend to abandon the application. The court also referred to the Parliamentary Standing Committee’s report of July 2021, which had also suggested that some leeway be given to patent applicants in certain circumstances.

Conclusion

The decision of the Delhi High Court while protecting rights of patent applicants in India from unintentional abandonment, also brings into focus the role of patent agents in India and the importance of exercising due diligence. While the decision might have been on the question of judicial discretion and the extension of statutory delays, a more important issue emerges, that of regulating the actions of patent agents themselves. At present, there is no formal regulation of patent agents in India in any form or manner. Unlike Bar Associations, which perform self-regulatory functions to keep the actions of lawyers in check, there is no equivalent for patent agents. There is also no code of conduct that patent agents are expected to abide by or be held accountable to. Surely, this decision is a wake-up call for applicants and the IPO alike to start scrutinizing the performance of patent agents with greater care. Such scrutiny and accountability will have network effects on the quality of patent prosecution and enforcement that will inarguably outweigh the chaos of the present unregulated environment. It is something for the patent community in India to seriously consider putting into action.

Cinema is a way of life in India, and the one film that epitomizes this national obsession is Sholay. Released nearly half a century ago, Sholay is a genre-defining film, whose appeal transcends all boundaries of geography, language, ideology, and class, and that established standards for what we now call “masala” blockbusters. With its iconic status and enduring popularity, the film has been, unsurprisingly, the subject of much litigation over the years. Recently, the Delhi High Court addressed the infrequently discussed rights and protections available to film titles in the context of this film.

The end of a 25-year-old debate

For a film like Sholay, the title remains important long after its release. Justice Pratibha M Singh of the Delhi High Court put to rest a twenty-year-long battle, describing the film as “a part of India’s heritage”, in Sholay Media Entertainemt and Anr. v. Yogesh Patel and Ors., CS (COMM) 8/2016.

This is not the first time that title rights in Sholay have been discussed in a court of law. In Sholay Media and Entertainment Pvt. Ltd. and Anr. v. Parag Sanghavi and Ors. (CS(OS) 1892/2006, Delhi High Court, 24 August 2015), ‘Sholay’ was declared as a “well-known” trademark. The court also held that copyright in the film vests in the producer, under Section 17 in the Copyright Act, 1957. It further held that the use of similar plot, characters as well as the use of the underlying music, lyrics, background score and even dialogues amounted to an infringement of the copyright in Sholay, and that the plaintiffs’ moral rights had been infringed due to the defendants’ distortion and mutilation of the original work.

In the present case, Sholay Media and Entertainment (P) Ltd. and Sippy Films (P) Ltd. (the plaintiffs) sued the defendants for using the film title in domain names (e.g., ‘www.sholay.com’), publishing a magazine using the word Sholay and putting up for sale various merchandise, exhibiting scenes and characters from the movie. The defendants had also filed an application for trademark registration in 1999 for the mark Sholay in both the United States and India. The plaintiffs sought a permanent injunction against the use of Sholay by the defendants, claiming that such use led to infringement, passing off, dilution and tarnishment of their well-known mark.

The defendants did not deny or dispute their use of Sholay and justified it on the following grounds:

1. Film titles are not entitled to protection.
2. They had applied for trademark registration earlier than the plaintiffs.
3. There is no probability of confusion, because (i) the goods and services offered by both the parties are different and unrelated; and (ii) their website is on the internet, which is only accessed by educated people.

The law on film titles in India 

Before getting into what the court actually said, a quick summary of the legal position on film titles is useful.

The intellectual property rights accorded to film titles is not always clearly spelt out in Indian statutes. The Indian Copyright Act, 1957 does not offer outright copyright to movie titles. The definition of ‘works’ in copyright law does not include movie titles. As laid down by the Supreme Court in Krishika Lulla & Ors. V. Shyam Vithalrao Devkatta & Anr. (2016) 2 SCC 521, film titles are not entitled for protection under the Copyright Act, 1957, as they lack the ‘minimum amount of authorship’ required for protection. The court reasoned that, as per Section 13, copyright subsists in original literary works, and film titles being incomplete in themselves, refer to the work that follows. 

Protection for film titles is more commonly sought under the Trade Marks Act, 1999. Class 41 provides for registration of a mark used in connection with entertainment services. Besides Class 41, filmmakers also resort to ancillary classes associated especially with film merchandising, such as Class 09 (Cinematography films, vinyl records and audio tapes), Class 16 (promotional stationery), Class 25 (for clothing), and Class 35 (for advertising, marketing and publicity) and Class 42 (software, design and development of video).

Film industry associations, e.g., the Producers Guild of India, Indian Motion Picture Producers’ Association, and the Film Writers’ Association, also encourage registration of film titles, with a view to protect the commercial interests of films produced in India. Such registrations do not offer any statutory protection, but rights may be enforced by way of self-regulation.

The Delhi High Court 2022 decision

The court dismissed outright the claim that film titles were not entitled to trademark protection, holding that certain films cross the boundaries of just being ordinary words. ‘Sholay’, for example, was a mark associated exclusively with the film and the plaintiffs. Even if the plaintiffs had not registered it as a trademark, they would be entitled to protection under passing off law. For this, the court relied on Krishika Lulla & Ors. V. Shyam Vithalrao Devkatta & Anr. (2016) 2 SCC 521, wherein the Supreme Court said that “… no copyright subsists in the title of a literary work and a plaintiff or a complainant is not entitled to relief on such basis except in an action for passing off or in respect of a registered trade mark comprising such titles.” The court further relied on Kanungo Media (P) Ltd. v. RGV Film Factory & Ors. 2007 SCC OnLine Del 314, which recognized the applicability of principles of passing off under the Trade Marks Act on unregistered film titles, stating that, “In passing off, a necessary ingredient to be established is the likelihood of confusion and for establishing this ingredient it becomes necessary to prove that the title has acquired secondary meaning.” Thus, while a film title is entitled to protection under Trade Marks Act, in the case of unregistered titles, the test for a passing-off suit to be sustainable would require establishing that:

i. Secondary meaning has been accorded to the title; and
ii. There is a likelihood of confusion of source, affiliation, or connection on the part of              the potential audience.

In Kanungo Media, the plaintiff had filed a suit of passing off against the use of the title Nishabd by the defendant for their upcoming film. Applying the test of secondary meaning, the court held that the plaintiff’s film, being a Bengali documentary, did not have the extent of viewership to have attained a secondary meaning, as opposed to a Hindi movie. The plaintiff had not registered the film title as a trademark, and had delayed in taking action against the defendant, who had already begun promotions for their upcoming film. As per the court, this delay led to acquiescence by the plaintiff.

In the present case, the court held that Sholay’s reputation as a film had already been judicially acknowledged, pointing to the Bombay High Court decision in Anil Kapoor Film Co. Pvt. Ltd. v. Make My Day Entertainment & Anr 2017 SCC OnLine Bom 8119. In this decision, Sholay was mentioned as having acquired a reputation such that the film title is uniquely associated with the film and no other. The Delhi High Court held that the film’s reputation was uncontroverted, thus according to the title a secondary meaning. Besides this, the plaintiffs had also registered Sholay as a trademark in several classes.

As regards the claim that the defendants’ application for trademark registration had come earlier, the court stated that Sholay was released in 1975, well before the registration and incorporation of the defendants’ company.

Regarding the contention of the defendants that there was no probability of confusion owing to a disparity of goods and services, the court stated that contents in a movie are no longer confined to the theatres. Movies have expanded to online and other platforms. The internet has created an additional market for movies. Sholay itself has also expanded to various markets and has several trade mark registrations in various classes. The activities undertaken by defendants would be covered by most of these registrations. Hence, the possibility of confusion that the goods and services of the defendants are offshoots of the movie is highly likely. Concerning internet usage, the court noted that the internet is now accessed by billions of users across the world. Given the fame and popularity of the film, it would be easy for any person, educated or illiterate, to establish a connection between the defendants’ website and the film Sholay.

In sum, the court granted a permanent injunction in favour of the plaintiffs, restraining the defendants from using the trademark Sholay. The court also awarded damages of INR 25,00,000/- (~USD 33,000), relatively rare in such cases, along with the direction to transfer all domain names incorporating the name Sholay or any deceptively similar variation thereof to the plaintiffs.

Conclusion

The 2022 Sholay decision reinforces the position that film titles are entitled not only to protection under trademark law, but also under common law by way of passing off. Trademark registration is not a prerequisite for being granted such protection. For a movie as famous as Sholay, it is not only the storyline that grabs the attention of the viewers, but over the years, the viewers have also started associating various elements of the production with the film. The film title gains the most attention and is the starting point of reference and recall for most. The judgement rightfully recognizes the efforts put in by the movie makers in acquiring this goodwill, such that the title becomes exclusively associated with the film and gains its own meaning altogether.

Trademarks in India are governed by the Trade Marks Act, 1999 (“Act”) and Trademark Rules, 2017. The Act provides the procedure for the registration of any mark capable of being represented graphically as a word, device, label, numerals, or combination of colours, shape or sound, and capable of distinguishing the goods or services of one person from another. In other words, a trademark is a source identifier of businesses, products and services.

Any person or entity can file a trademark application in India, including foreign applicants. While adopting a trademark, an applicant must ensure the trademark is coined and arbitrary in nature, and not generic, descriptive, or common in respect of the goods or services offered under the trademark. It should be distinctive and not deceptively or confusingly similar to an existing brand or trademark.

Stage 1: Identifying the trademark and relevant classes

Before adopting a trademark, a trademark search is imperative. This helps applicants identify if there are any existing similar trademarks which have been applied for or already registered in India. For this purpose, a search on the official website of the Indian Trademarks Registry is useful, as also an online search, to determine the registrability of the proposed trademark. A search also helps identify risks in connection with the trademark, such as objections, oppositions or infringement challenges, during or after the registration of the trademark.

• Searching the Indian Trademarks Registry

Three types of searches can be conducted on the website of the Trademarks Registry – Wordmark, Vienna and Phonetic. A word mark search identifies trademarks that use the word searched for; a Vienna code search searches for similar visual elements such as a logo; and a phonetic search provides results having a similar sound. Searches are class specific, and results are restricted to records in the Register (and are thus India-specific only).

• Online search:

A simple online search is also always advised to determine the chances of availability and registrability of the trademark. This may include searching social media platforms, conflicting domain names or even brands present in other jurisdictions. This can help determine the degree of distinctiveness of the proposed trademark and identify any prior existing trademarks that may hinder the trademark application and brand as a whole.

Trademarks are associated with specific goods and services, for which countries follow the Nice Classification. This is an international system for the classification of goods and services for the registration of trademarks, that came into force pursuant to the Nice Agreement. The classification is revised annually, and new versions are published by the World Intellectual Property Office (WIPO). Under the Nice Classification, goods and services are divided into 45 classes (1-34 being for goods; 35-45 for services). Applications should be made in the classes of goods and services where the trademark is already being used and intended to be used.

A trademark application can be filed as a multiclass application, where the applicant seeks registration for more than one class; or as separate single class applications, with one application for a trademark for each class. Single class applications are generally recommended over multiclass applications. While the official fee for both kinds of applications is the same, if an objection or opposition is raised or filed even against one class in the multiclass application, the registration process in the other classes comes to a halt. Further, if the defence to such an objection or opposition fails, then the multiclass application will be refused as a whole.

Stage 2: Filing the trademark application

Upon determining that no similar trademark exists, a trademark application can be filed for the specification of goods/services for which it is being used or is proposed to be used, online on the official website (www.ipindia.com) or physically at the relevant Trademark Registry in which jurisdiction the applicant resides or operates. The Trade Marks Registry is headquartered in Mumbai, and has offices in Ahmedabad, Chennai, Delhi and Kolkata. Each office has jurisdiction over specified states in India. Foreign nationals or entities can also apply for trademark registrations in India, and the appropriate Trademark Registry would be based on their address of service in India, or their local attorney’s location.

Documents required at the time of filing include details of the applicant (name and address), specifications of goods and/or services, whether the trademark is being used, and so on. After the application is received, the Registry accords a date of filing and an application number to the trademark. Once filed, the trademark can be used by the applicant with a superscript of the ™ symbol, which indicates that a trademark has been applied for.

Stage 3: Examination of Applications

After filing, trademark applications are examined by the Trade Marks Registry in approximately one to two months’ time, and objections, if any, are raised. Objections are raised on two types of grounds:

1. Absolute Grounds (Section 9, Trade Marks Act): e.g., distinctiveness, devoid of distinctive character, not capable of distinguishing goods or services;
2. Relative Grounds (Section 11, Trade Marks Act): e.g., similarity with an earlier trademark already on the Register.

Objections are raised by way of examination reports, to which responses must be filed within one month of receipt. If a response is not received within this time, an application is deemed to have been abandoned. If the Examiner has further objections, a show cause hearing is scheduled.

Stage 4: Advertisement

If the Examiner is satisfied with the response to the objections, or with the show cause hearing, or if the Examiner does not raise an objection at all, the trademark is accepted and advertised in the Trademarks Journal. The Journal is published weekly on the official website. Once advertised, the trademark is open for opposition purposes by third parties, for a period of four months.

Stage 5: Registration and Renewal

If no opposition is filed by a third party within four months from the date of advertisement in the Journal, the trademark proceeds to registration. The Registry issues a soft copy of the registration certificate, and the applicant can use the symbol ® as a superscript with the trademark after receiving the registration certificate. A trademark is registered for ten years from the date of filing of the application, and is renewable every ten years thereafter, for a fee.

The Registrar usually sends a notice to the proprietor of the trademark asking them to renew their trademark. A trademark cannot be removed from the Register unless a notice has been served. If the trademark is not renewed, or fees are not paid, within the prescribed time, the proprietor of the trademark can apply for restoration of the trademark with an additional fee, between six months to one year after the prescribed time. If the trademark is neither renewed nor restored, it is removed from the Trademarks Register.

Why trademark registration is useful

Trademark registration is not compulsory, but it protects brands and businesses. A trademark registration provides you with full ownership of the trademark nationwide and grants the power to take infringement action against third parties copying the brand name, file police complaints if infringing or counterfeit goods are sold, and generally prevents competitors from using similar or identical trademarks.

However, unregistered trademarks also have certain legal protections, under common law concerning unfair competition, and for dilution and passing off, among others. Although unregistered trademarks enjoy limited rights, it is advisable for businesses to register their trademarks at the earliest.

The forum for adjudicating commercial suits in India is governed by the Commercial Courts Act, 2015 (“CCA”), where cases are heard by courts at different levels depending on the valuation of the suits. Lesser-valued cases are heard by courts lower in the judicial hierarchy and fall outside the direct scrutiny of the CCA, thus being subject to relatively lower regulation. As valuation tends to be based on self-assessment of the party instituting the suit, without adequate and rigorous enforcement, this provision can lend itself to considerable manipulation. Parties may deliberately value their suits to indulge in ‘forum shopping’, i.e., choose a court that is the most convenient and may provide them the most favourable outcome.  Acknowledging this concern, the Delhi High Court earlier this month laid down significant directions concerning the valuation of Intellectual Property Rights (“IPR”) suits, where this provision has been particularly abused.

The issue confronting the Court in Vishal Pipes Ltd vs Bhavya Pipe Industry (FAO-IPD 1/2022 & CM APPLs. 12-14/2022, 3 June 2022, Delhi High Court) was that IPR suits were being deliberately valued below Rs. 3Lakhs (~USD 4000) by plaintiffs in order to avoid being regulated by the CCA, thereby indulging in forum shopping or bench hunting. Justice Pratibha Singh held that all IPR suits valued below Rs. 3 Lakhs in the jurisdiction of Delhi (where the bulk of Indian IP litigation takes place), at the first instance, would be listed before the District Judge (Commercial) to determine and ensure that such undervaluation is not arbitrary or unreasonable. On the basis of such examination, the concerned commercial court would have to pass an appropriate order either directing the plaintiff to amend the plaint and pay the requisite fee or to proceed with the suit.

The Court was faced with two specific questions:

(i) Can IPR suits be valued below Rs.3 lakhs and be listed before the District Judges who are not notified as Commercial Courts?; and

(ii) Whether the provisions of CCA would be applicable to such disputes?” 

The first question was answered clearly in the negative, for various reasons. Firstly, the Court said that although judicial principles allow the plaintiff to value the suit in the manner it chooses, it must be in the bounds of the CCA, and this cannot be stretched to justify an undervaluation of IPR disputes and payment of a lower court fee.

Secondly, the Court noted that the CCA requires every commercial suit to have a ‘specified value’, and not ascribing a ‘specified value’ would be contrary to the scheme of the Act. Section 12(1)(d) of the CCA allows the ‘specified value’ in case of intangible rights to be the market value of those rights as estimated by the plaintiff.

Thirdly, it would be mandatory for IPR suits to be ascribed a ‘specified value’, in the absence of which the valuation of the suit below Rs.3 lakhs would be arbitrary, whimsical and wholly unreasonable. In this view, IPRs being intangible rights, some value would have to be given to the subject matter of the dispute as well. The Court would have to take into consideration the ‘specified value’ based upon not merely the value of the relief sought but also the market value of the intangible right involved in the said dispute.

Fourthly, the Court delved into the legislative intent of the CCA, noting that the amount of Rs.3 lakhs is the estimation of the legislature as the lowest threshold in any ‘commercial dispute’ in India which deserves to benefit from speedier adjudication, owing to the economic progress in the country. The legislative intent behind a lower threshold in a ‘commercial dispute’ cannot be rendered meaningless, and only in exceptional cases could a valuation of IPR disputes below Rs.3 lakhs be justified.

The Court also laid bare some practices in IPR suits in the Delhi jurisdiction. It said that the average court fee paid in Delhi in any civil suit is approximately 3% to 1% of the pecuniary value ascribed to the suit. Thus, the Court said, at Rs.3 lakhs, the court fee payable is minimal, and it becomes apparent that the only reason for which IPR disputes may be valued below Rs.3 lakhs would be to indulge in forum shopping and bench hunting, and not to genuinely exercise the option of the forum where relief is sought. The purpose would also be to escape the rigors of the CCA, and it would amount to abuse by plaintiffs of their rights, at the very least.

There was also no issue of affordability, since IPR disputes are usually filed by business entities, and if valued at a minimum of Rs.3,00,000/-, even individual IPR owners would be easily able to afford the court fee at the rate of 1-3%. Thus, the discretion vested in the plaintiff to value the suit as it pleases, ought not to be extended to an extent that it encourages malpractice, misuse, abuse and forum shopping.

In view of this analysis, the Court held that since IPR suits must be instituted in the District Courts “having jurisdiction”, for the territory of Delhi, District Judges notified as Commercial Courts which have subject matter jurisdiction under the CCA would be the District Courts “having jurisdiction”.

While the Court admitted that valuation of intellectual property by itself is very complex, it clarified that the commercial court is not expected to value the specific IP on the basis of any mathematical formula but to broadly take into consideration whether the said IP would be more than the minimum threshold of Rs. 3 Lakhs.

On the basis of the above, in order to maintain consistency and clarity in adjudication, such suits that may be valued below Rs.3 Lakhs shall continue as non-commercial and are to be listed before the District Judge (Commercial) without being subjected to the CCA. Further, all pending IPR cases currently before the Additional District Judges (Non-Commercial) in Delhi, shall be placed before the concerned District Judges (Commercial) while giving the Plaintiffs the liberty to amend their suits.

The judgement is a noteworthy step towards deterring forum shopping done by arbitrarily and unreasonably undervaluing IPR suits by the litigants. Routinely condemned by Courts for years, this concrete decision nips this practice in the bud. By holding that litigants and lawyers cannot escape the rigours of the CAA by undervaluing their suits, the Court has laid down boundaries for the judicial principle of dominus litis: the plaintiff is ordinarily the ‘master of the suit’, but this principle cannot be stretched to justify undervaluation of IPR suits to indulge in forum shopping.

India’s ace badminton player PV Sindhu created history by winning a bronze medal in the Tokyo 2020 Olympics held recently, joining the ranks of a select few who have one more than individual medal in the history of the games. While the country celebrated her historic achievement, in order to stay relevant and cash in on her success and popularity, various brands inserted themselves into ongoing conversations as well, in an act of what is called “moment marketing”.

Concerned that many brands were using this as an opportunity to get mileage out of such messaging, and potentially misrepresenting this as an endorsement, Sindhu and her agency Baseline Ventures are preparing to take 20 brands to court for such moment marketing. The brands include leading public and private sector banks, white goods manufacturers, and FMCG companies, with claims of Rs 5 crore from each of the brands. Baseline has had exclusive rights to manage Sindhu’s commercial and brand endorsement deals since 2016. The firm stated, where a brand makes a public display on such occasions, the brand is effectively trying to gain mileage out of such messaging, and it may lead many viewers to misconstrue the message as an endorsement.

This is not the only instance of Indian Olympic champions having encountered a buzz around their successes. A few days before Sindhu won her medal, weightlifter Saikhom Mirabai Chanu won a silver medal, and in her post-match interview, expressed a wish to eat pizza. The fast-food service chain Dominos pledged free pizzas for life to Chanu after the interview, but quickly enough, also compensated her for the use of her name and made a separate digital activation deal with the weightlifter.

What is moment marketing?

“Moment marketing” is a marketing strategy where brands take advantage of ongoing events, and try to gain relevance by inserting themselves into ongoing conversations at a marginal cost. Brands often also get involved in ambush marketing, which is when an advertiser “ambushes” an event, thus competing with other advertisers. Controversy arises because the brands who have officially sponsored the performers or celebrities in question may not be comfortable with other brands stealing the limelight.

The dairy cooperative, Amul, is the best case study, and arguably, an ambassador, for moment marketing in India. Many copywriters have risen to fame churning out Amul’s iconic regular advertisements on current events, which audiences eagerly look forward to even today. Over the years, Amul has changed its medium, moving away from physical hoardings to social media, but has successfully managed to stay relevant throughout.

Moment and ambush marketing are becoming increasingly prevalent in a world dominated by social media and short attention spans. The easiest way for brands to stay in visible is by being up to speed with news and follow trends. Tweets, memes, and short videos are means to become part of the conversation. The success of marketing campaigns is measured by audience engagement and viral content. But in this fight to stay relevant, brands often churn out content without thinking about the legal repercussions of their actions.

Legal Implications in the Sindhu issue

Sindhu and her agency have several rights at their disposal, as the marketing spree that brands seem to have indulged in after Sindhu’s medal-winning moment has multiple legal implications. Some of these are discussed here.

Olympic Rules

The Tokyo 2020 Olympics issued extensive regulations titled “Brand Protection Guidelines”, on intellectual property rights. These regulations essentially deal with the  intellectual property around the Olympics. Among other things, they refer to trademark protection, where any attempt to convey, in any form, an association with an athlete or with Olympic emblems, is a violation of the trademark laws of the Olympics, which are punishable by Japanese trademark law.

The International Olympic Committee (IOC) also put out guidelines around advertising during the tournament. There was a blackout period between July 13 (when the Olympic Village opened) and August 10 (two days after the Closing Ceremony) when even brands that sponsor the player were not allowed to post about them online. Only IOC and (in India’s case) the Indian Olympic Association (IOA) partners, were allowed to post about the players.

ASCI Guidelines 

To ensure brands do not infringe upon the privacy of celebrities, the Advertising Standards Council of India (ASCI) already has a code in place. The code says:

“Advertisements shall not, without permission from the person, firm or institution under reference, contain any reference to such person, which confers an unjustified advantage on the product advertised or tends to bring the person, firm or institute into ridicule or disrepute. If and when required to do so by ASCI, the advertiser and the advertising agency shall produce explicit permission from the person, firm or institution to which reference is made in the advertisement”

Advertisements that do not comply with this requirement may be in violation of the ASCI Code.

Trademark and copyright protection

In India, the infringement of a registered trademark is actionable under Section 134 of the Trademark Act. Remedies under trademark laws also include claiming damages from the entity which has illegally used the name of a celebrity. However, it might be difficult for PV Sindhu to get recourse under trademark law as Indian sportspersons do not usually register their personal or unique names to enable them to get relief under the law. Interestingly, many cricketers and movie celebrities have taken this path and registered their names. But  the majority of Indian athletes and sportspersons, besides cricketers, are still new to this concept of trademarking their own names.

Under copyright law in India, the term “performer” may be construed to include sportspersons such as Sindhu. A performer holds a copyright in their performance and is entitled to restrain others from exploiting their intellectual property for commercial purposes.

Right of publicity

The right of publicity has evolved from the right to privacy, which is a fundamental right in India. Also referred to as personality rights, the right of publicity allows individuals to take charge of the commercial use of their identity, including their name, photographs (including likenesses), and other identifiers. Sindhu would likely be entitled to raise a challenge of the right of publicity against brands that have used her name and references to her winning moment for their own benefit without due credit or compensation.

Conclusion

For brands and advertisers, participating in live conversations has become the norm. It is a natural fallout and distinguishing feature of the always-on culture that we now consume. The Sindhu case is not going to be an isolated one. Brands will constantly want to be a part of whatever is happening around the world at any point of time, and such instances will only occur more frequently and invite more interest and publicity.

For example, brand participation should be carefully undertaken, particularly when a public personality’s image or name is involved. Unauthorised use of images or names can have a host of detrimental and costly legal consequences. Instead of viewing this is as a challenge or a limitation, this is in fact an opportunity for brands to be more creative in their engagement with topical issues, for which Amul has set a fine example over decades.

Equally, agencies handling personalities should also be aware of their clients’ rights and protect their intellectual property, among other things. A defensive strategy would be through filing for trademarks around names and structuring air-tight endorsements, as many cricket players have done, whereas an offensive strategy would involve, as in the Sindhu case, responding to instances of abuse as and when they emerge.

Possibilities abound, but clearly, all parties involved in this need to revisit their strategies to help them make the most of the moment.

Introduction 

As intellectual property disputes grow in number in India, corresponding questions arise regarding the most appropriate adjudicating authority to be approached for redress. Besides regular courts, IP disputes also occasionally make their way into arbitrations. But the circumstances under which IP disputes can be referred to arbitration are not always clear. This matter was discussed in a recent suit in the Delhi High Court involving “Hero”, a well-known trademark in the business of two-wheelers. 

The Case

In this suit, the plaintiffs had sought a decree of permanent injunction restraining the defendants from dealing in electric bikes having a throttle, using “Hero” or any deceptively similar mark.¹

The trademark originated in the business of Hero Exports, which used to be a partnership firm of all the members of the Munjal Group. After a  Family Settlement Agreement (FSA), the businesses of the group were divided among four family groups. Alongside the FSA, a “Trade Mark and Name Agreement” (TMNA), was executed, which assigned the right to use the trademark “Hero”, and its variants, among the various groups. 

The plaintiffs and defendants belonged to two different family groups. The plaintiffs asserted that the TMNA conferred on their family group, the exclusive right to use the trademarks “Hero” and “Hero Electric”, and its variants, on all-electric vehicles, including electric bikes. The plaint alleged that the defendants (Lectro) were manufacturing, selling and promoting electric bikes under the brand “Hero”, thus violating the exclusive right vested in the plaintiffs.

The defendants argued that subsequent to the FSA and TMNA, any right to use the mark was necessarily governed by those agreements. Any dispute would, therefore, be subject to the provisions for arbitration contained in the agreements. Accordingly, defendants under Section 8 of the Arbitration and Conciliation Act, 1996 (A&C Act) sought to have the dispute raised by the plaintiffs to arbitration.

The Decision

The Delhi High Court, which was hearing the case, relied on the four-fold test of non-arbitrability of the subject matter, laid down by the Supreme Court in Vidya Drolia and Ors. v. Durga Trading Corporation.² As per this test, a cause of action and/or subject matter of a dispute is non-arbitrable when:

1. It relates to actions in rem, that do not pertain to subordinate rights in personam.
2. It affects third-party rights and has an erga omnes effect (i.e., it has implications on the public).
3. It relates to an inalienable sovereign and public interest function of the State.
4. It is expressly or by necessary implication non-arbitrable as per mandatory statute(s).

The court stated that the dispute between the plaintiffs and the defendants required a holistic appreciation of the FSA and TMNA in order to adjudicate on the rights conferred on the various family groups; and that the dispute was ex-facie arbitrable in nature, seen in the light of the FSA and TMNA.

The Court concluded that the controversy did not relate to the grant or registration of trademarks. The trademarks were already granted and registered, prior to the FSA and TMNA. The dispute was regarding the family group to which the FSA and TMNA assigned the rights to use the trademarks in connection with electric cycles and e-cycles. Thus, the dispute was based on rights emanating from the FSA and TMNA, and not on provisions of the Trade Marks Act.

Accordingly, the Court decided that the petitioner ought to approach an Arbitrator for appropriate reliefs as it may choose under Section 17 of the A&C Act, and decided that the suit should be referred to arbitration, with parties at liberty to appoint the arbitrator/arbitrators in accordance with the FSA and TMNA.

Critical Analysis

Of particular interest here is the Court’s decision to not examine the trademark infringement matter, and instead focus only on contractual aspects. The Court highlighted that the present suit was not about the deceptive similarity of the marks or trademark infringement, but rather, about the ‘right to use the mark’ which arises from the FSA and TMNA.

Judicial precedent shows that arbitrability has been decided by the courts on the basis of the nature of the claim raised. Disputes pertaining to the ownership, validity of IP right, etc., are actions in rem and thus, not arbitrable. However, disputes arising out of contractual relations such as restriction against the future use of IP by a party, are contractual, and actions in personam and therefore, arbitrable.

At least two questions arise from the present decision of the Delhi High Court:

1. Why did the Court not delve greater into the issues concerning IP infringement?

The plaintiffs had argued that the Court did not need to refer to the two family agreements, as they (the plaintiffs) were relying on the Trade Marks Act and the fact that Hero Exports was the registered proprietor of the trademark ‘Hero’ for electric bikes. 

The judgement did not however, consider the permanent injunction that the plaintiffs had sought. One line of criticism is that the Court overlooked the fact that invoking a right in rem against a particular person does not make it a right in personam which is subject to arbitration. Adjudication of the dispute would automatically define the scope of the plaintiffs’ rights, which can be claimed against other infringers as well in the future.

On the other hand, there is the argument that while this case deals with IP claims, the case also deals with the capability of courts to refer parties to arbitration. The High Court relied on the judgement in Vidya Drolia v Durga Trading Corporation, which laid down the tests that allow a court to refer a matter to arbitration. All other questions of arbitrability of the dispute must be left to the tribunal to adjudicate upon, without the intrusion of the court, for if the court indulged in anything further, it would amount to usurping the powers of the tribunal.

Further, the entirety of the cause of action in the dispute must be rendered non-arbitrable in order for a court to be able to completely prevent arbitration. A court of law can only prevent arbitration if the issue is not prima facie arbitrable. The jurisdiction of the court, as per Indian law, extends merely to judging two aspects:

1. Whether a valid arbitration agreement exists (which it does here, as evidenced by the FSA and TMNA);
2. Whether the subject-matter of the dispute is arbitrable (i.e., here, adjudicate the presence of a violation of a right purely in rem vide the IPR dispute in question). It is in this context that the Court also differentiates a non-arbitrable subject-matter and a non-arbitrable claim. 

2. Why did the Court fail to notice that plaintiffs’ exclusive claim over ‘Hero’ for electric bikes which includes (as per plaintiffs) electric bicycles conflicts with the defendants’ claim of rights over electric bicycles?

In this regard, the line of criticism is that the issue of whether “electric bikes” include “electric bicycles” is a question on the scope and the validity of the registrations of trademarks. This is purely a question of law that needs to be analyzed through examination of the Trade Marks Act, Trade Marks Rules, and the extant registrations of the parties.

However, as a pre-emptive observation against this, in paragraph 146 of the decision, the Court stated that the trademark in question already stood granted prior to the FSA and TMNA, and that the dispute here was in connection with which family group of the four was assigned the rights to the same. The assignment in this case was contractual via the FSA and TMNA, and thus existed solely in personam.

Conclusion 

This decision clears some air around the arbitrability of IP disputes in certain circumstances. Specifically, the Delhi High Court made the distinction between the treatment of an IP dispute and a contractual dispute, specifying that arbitration would follow in the latter case. While this decision offers a little more clarity than what existed before, on which dispute resolution forum parties would have to approach in different circumstances, it is likely that this determination will need to be made on a case-by-case basis.

¹ Hero Electric Vehicles (P) Ltd. v. Lectro E-Mobility (P) Ltd., 2021, Delhi High Court, CS (COMM) 98/2020 and I.A. 3381/2020, Decided on 02.03.2021

² 2019 SCC OnLine SC 358

Introduction

An anti-suit injunction is an order by the court which restricts a party from filing or continuing with proceedings in another court, including foreign courts, with regard to the subject matter of the suit.¹ When courts are approached by a party seeking an anti-suit injunction, they generally establish a ‘forum conveniens’, i.e., determine the most appropriate forum to decide upon the dispute. Once determined, the court recognise this forum as the one where the dispute has a ‘substantial and real’ connection.

Ordinarily, territorial jurisdiction in suits pertaining to intellectual property (IP) in India are determined by Section 20 of the Civil Procedure Code, 1908, which states that suits shall be instituted at the court within whose jurisdiction (i) any of the defendants reside, carry on business, or personally work for gain; or (ii) the cause of action arises, wholly or in part.

Some provisions in intellectual property law provide for additional forums that may be approached by parties. These are Section 62 of the Copyright Act, 1957 and Section 134 of the Trademarks Act, 1999. Both these provisions permit infringement suits to be instituted in any district court within whose jurisdiction the plaintiff resides, carries on business, or personally works for gain.

Anti-suit injunctions and personal jurisdiction in IP matters

Anti-suit injunctions are most common in arbitration or family law matters. However, such injunctions are occasionally granted in matters pertaining to intellectual property as well. It is mostly in cross border matters where it becomes complex, since the laws differ from country to country. In such cases, it becomes imperative to determine which country’s courts are best suited to hear the case. To do this, courts must establish personal jurisdiction in the matter.

In India, where a decision relating to the interest of the parties is to be made, courts must have personal jurisdiction. Personal jurisdiction refers to the authority to make a decision regarding the party being sued. In India, personal jurisdiction is not specifically defined in law. In IP cases, the definition of this term has been derived from jurisprudence.

The question as to what constitutes personal jurisdiction was discussed at length in (India TV) Independent News Service Pvt Limited v. India Broadcast Live LLC and Ors.² In this case, the plaintiff moved the Delhi High Court for a permanent injunction restraining the defendants from using their mark “INDIA TV”. The defendant contested this, claiming, among other things, the lack of jurisdiction of the High Court to entertain this suit.

While this suit was pending, the defendant instituted a parallel suit in the Arizona District Court in the United States seeking non-infringement. The plaintiff sought an anti-suit injunction against the Indian proceedings. The defendants argued that the Delhi High Court had no authority to preside over them, since they neither resided nor worked for gain in India; the promoters were residents of the US; and the registering authority was based in Arizona. All of these factors cumulatively made Arizona the forum conveniens in this matter, according to them.

Since this was an anti-suit injunction filed in the US, for the determination of personal jurisdiction, the position of US courts was considered. The defendant cited Cybersell Inc v. Cybersell Inc and Ors.³ which recognized a three-part test to determine personal jurisdiction,

“i. The non-resident defendant must do some act, enter some transaction with the forum or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum,

1. the claim must be one which arises out of or results from the defendant’s forum-related activities;

iii. exercise of jurisdiction must be reasonable.”

Cybersell⁴ also held that there must be sufficient minimum contact for personal jurisdiction to be established, which depends upon the nature and quality of commercial activity conducted.

The defendant also contended that “a mere maintenance of a homepage accessible in India is not sufficient to confer jurisdiction where there is no evidence to show that defendant No. 1 specifically targeted audiences in India.”

The plaintiff on the other hand, referred to Compuserve Inc. v. Patterson⁵ where general and specific personal jurisdiction was differentiated: where a specific jurisdiction has sufficient contact with the forum state to allow district courts to adjudicate by norms of fair play and justice. A three-step test, which went beyond that cited by the defendants, was as follows:

1. the defendant purposefully avails himself of acting or causing a consequence in the forum state;
2. the cause of action must arise from the defendant’s activities there; and

• the acts of the defendant must have a substantial enough connection with the forum to make exercise of jurisdiction over the defendant reasonable

On this basis, the plaintiff contended their goodwill was being damaged in India by the defendants, the website was highly interactive, and was not only accessible but offered the option of subscription.

In the case in India, the Delhi High Court held that in order to determine personal jurisdiction, it would have to consider three things: firstly, whether the defendant’s activities have sufficient connection with the forum; secondly, whether the cause of action arose out of these activities and thirdly, whether exercise of jurisdiction will be reasonable. It found that although mere accessibility is not a ground of personal jurisdiction, the fact that the website was interactive and the defendants had intentions of operating in India meant that there was sufficient connection with India. The Court also said that the defendants had enough Indian links for it to exercise jurisdiction while the plaintiff had an office only in India and did not have offices anywhere else in the world. Further, the damage to the plaintiff’s goodwill within India was a consequence of the defendants’ activities and thus the court had personal jurisdiction over the defendants.

Soon after, the Delhi High Court upheld the test laid down in India TV ⁶ and expanded upon its applicability, in Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy and Ors.⁷ In this case, the plaintiff, since 1994 had adopted and used the mark “Banyan Tree” and the banyan tree device, and claimed that both of which, due to extensive use, had acquired a distinct association with the plaintiff. In October 2007, the plaintiff learnt that the defendant had initiated a project named ‘Banyan Tree Retreat’, which was advertised on their website. The plaintiff contended that the Delhi High Court had territorial jurisdiction since the defendants had presence in India through their web page, the webpage was not passive and interactive, and the defendant had sent brochures to residents in Delhi.

The Delhi High Court held that the plaintiff would have to establish that the defendant purposefully availed of the jurisdiction of the forum court. It would have to show that the use of website was with the intention of concluding a commercial transaction. The Court also clarified that to be seen as purposeful availment, there must necessarily be a commercial transaction in the forum state, by specifically reaching out, or marketing, to customers. Neither a mere advertisement nor an insufficiently interactive website which does not purposefully transact with customers would be sufficient to determine jurisdiction. Where cause of action is established under section 20(3) of the Civil Procedure Code, 1908, the court will have the jurisdiction to try the matter. 

In a previous post, we highlighted a more recent case where the Delhi High Court in HT Media Limited & Anr v. Brainlink International, INC. and Anr.⁸ granted an anti-suit injunction against a suit initiated in the United States District Court for the Eastern District of New York. The High Court held that the suit before the US court was “vexatious “and “oppressive” since the website had been established with the motive of targeting Indian viewers, which later became inactive. This test for whether foreign proceedings are ‘oppressive’ or ‘vexatious’ is helpful to maintain international comity in India as well as around the world. 

Conclusion 

Anti-suit injunctions are a contentious device used to tackle conflicts arising out of jurisdiction- and forum-shopping. Courts are wary in handling such cases, and such injunctions are not granted frequently or lightly. Usually, strict tests have to be met before any such grant. The grant of an anti-suit injunction implies encroaching on the jurisdiction of another court, and thus, if not considered with particular care and consideration, can affect international relations. Although India does not have any explicit rules governing the award of anti-suit injunctions, Indian courts should grant injunctions on principles of equity and preventing lapses in the delivery of justice, while also considering the basic doctrine of international comity.

¹ Dinesh Singh Thakur v. Sonal Thakur, (2018) 17 SCC 12.

² 2007 (35) PTC 177 (Del.).

³ 130 F.3d 414.

⁴ 130 F.3d 414.

⁵ 89 F.3d 1257.

⁶ 2007 (35) PTC 177 (Del.).

⁷ CS (OS) No.894/2008.

⁸ CS (COMM) 119/2020.

1. 1. What are the various stages involved in the registration of an Indian Trademark?

      The Trademarks Law in India is governed by the Trade Marks Act, 1999. The Act provides for registration of any mark which is capable of being represented graphically as a word, device, label, numerals, or combination of colors and capable of distinguishing the goods or services of one person from another. In other words, a trademark is a source identifier. An Indian trademark application goes through the following stages, till registration:

      • Search (optional): A trademark search for identical or similar marks may be conducted online and on the official website of the Trademarks Registry to determine if the mark is available.
      • Filing: If it is determined that no similar Trademark has been identified, a trademark application is filed for the specification of goods/services for which it is being used or is proposed to be used.
      • Examination Report: The trademark application is examined by the Trade Marks Office in about two to four (2-4) months” time from the filing date and objections, if any, are raised. These objections can either be raised on:

        1. Absolute Grounds (distinctiveness, devoid of distinctive character, not capable of distinguishing goods or services, etc.) and/or

        2. Relative Grounds (similarity with an earlier trademark already existing on the Trade Marks Register).

      • If no objections are raised, the mark shall directly be allowed to be advertised. (Stage 5)

      • Response to Examination Report: If an examination report is issued, a response must be filed within one (1) month from the receipt of the examination report failing which the application is “deemed to have been abandoned” by the Applicant. If the Trade Marks Office is convinced with the response filed, the application is advertised in the Trademarks Journal. Alternatively, in case the Examiner has further objections, a show cause hearing would be offered to the Applicant.
      • Advertisement: After examination, if the Examiner is satisfied with the response filed to the objection/s, the trademark application is advertised in the Trademarks Journal. The Trade Marks Journal is hosted weekly on the official website.
      • Opposition: Once advertised, the trademark is open for opposition purposes for a period of four (4) months. In case no opposition is filed within this stipulated time period, the mark proceeds to registration.
      • Registration & Renewal: The application shall proceed to registration if the trademark application is not opposed within 4 months from the date of advertisement in the Trade Marks Journal. The Trade Mark Registry will then issue a soft copy of the Registration certificate. The mark is registered for a period of 10 years from the date of filing of the application and can be renewed from time to time on payment of renewal fees. Each renewal term is for a period of 10 years.

   2. Why is it important to identify the relevant classes?

      Before filing a trademark application, it is necessary to identify the classes in which one wishes to seek protection for their trademark.An application should be made in the relevant classes of current goods/services as well as in classes where there is intent to use.The specifications are covered under the NICE International Classification of Goods and Services which are divided into 45 classes. It ranges from Class 01 to Class 45 (wherein Class 01 to Class 34 deals with specification of goods and Class 35 to Class 45 deals with specification of services.

   3. Can an application be filed in more than one class for the same trademark?

      The trademark application can be filed as a multiclass application or as separate single class

   4. Is a prior search before filing a trademark application advisable?

      Before adopting a trademark, a trademark search is highly recommended, as this will give an indication of any existing trademarks which have been applied for/or registered in the Trademarks Registry. Accordingly, it is advisable to conduct a search on the official website of the Trademarks Registry as well as an online search to determine registrability of the proposed trademark

   5. What can be registered?

      Typically, the Trade Marks Office allows trademark registrations for a word, device, brand, numeral, single color, sound, 3D mark, shape of goods, label, packaging or combination of colors or any combination thereof.

   6. What is a Well-Known Trademark?

      The term “well-known trademark” refers to a mark which has become so well-known to the substantial segment of the public through its extensive and continuous use. Use of the mark in relation to any other goods or services by another party may be taken as indicating a connection between the two parties.Individuals/ Companies that have acquired immense brand value, reputation, and goodwill in India through their trademarks should get the trademarks included in the list of well-known trademarks to safeguard themselves from future infringements and dilutions.

   7. What is the criteria for determining a Well-Known Trademark?

      The Registrar shall, while determining whether a trademark is a well-known trademark, takes into account all the facts which he considers relevant for determining a trademark as a well-known trademark including the following factors:

      • That the trademark is well known to the public at large in India;
      • The number of persons involved in the channels of distribution of the goods or services;
      • The number of actual or potential consumers of the goods or services;
      • The duration, extent and geographical area of any use of such trademark;
      • The business circle dealing with those goods or services.
      • The record of successful enforcement of the rights in that trademark in particular, the extent to which the trademark has been recognized as a well-known mark by any court or Registrar under that record.

1. 1. What is a Well-Known Trademark?

      The term ‘well-known trademark’ refers to a mark which has become so well-known to the substantial segment of the public through its extensive and continuous use. Use of the mark in relation to any other goods or services by another party may be taken as indicating a connection between the two parties.Individuals/ Companies that have acquired immense brand value, reputation and goodwill in India through their trademarks should get the trademarks included in the list of well-known trademarks to safeguard themselves from future infringements and dilutions.

   2. What is the criteria for determining a Well-Known Trademark?

      The Registrar shall, while determining whether a trademark is a well-known trade mark, takes into account all the facts which he considers relevant for determining a trade mark as a well-known trade mark including the following factors:

      • That the trade mark is well known to the public at large in India;
      • The number of persons involved in the channels of distribution of the goods or services;
      • The number of actual or potential consumers of the goods or services;
      • The duration, extent and geographical area of any use of such trade mark;
      • The business circle dealing with those goods or services.

      The record of successful enforcement of the rights in that trademark in particular, the extent to which the trademark has been recognized as a well-known mark by any court or Registrar under that record.

1. 1. What is the official fees payable by an applicant for filing a trademark application in India?

      The official trademark fees payable by an applicant is INR 9000 (USD 145).

   2. Can an Applicant claim a reduction in the official fees?

      Yes, the applicant can claim a reduction in the official fees by approximately 50% if at least one of the following conditions is satisfied:

      • The Applicant is an Individual; or
      • The Applicant is a Startup; or
      • The Applicant is a Small Enterprise

      However, such a reduction in the official trademark fees will not be available if an eligible Applicant jointly files a trademark application with an Applicant, which is “other than a Small Enterprise”. “Other than Small Enterprise” herein refers to a company/organization, which is not a Startup or a Small Enterprise.

   3. What is a Startup according to the Trademarks Act?

      The Trademark Rules, 2017 have divided the Applicants in two categories:
      Category A: Individual/ Startup / Small Enterprise
      Category B: Others A Startup means an entity in India recognized as a Startup by the competent authority under Startup India Initiative and submitting declaration to that effect.
      The Trademark Rules, 2017 define “Startup” as an entity that satisfies the following criteria:

      • It is incorporated or registered in India, not prior to five (5) years,
      • Has an annual turnover not exceeding INR 25 Crores (Rupees Twenty-Five Crores only) / USD 250 Million (Two Hundred and Fifty Million United States Dollars) (approximately) in any preceding financial year and
      • Is working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property.

   4. Can a non-Indian company be considered as a Startup?

      A non-Indian company can be considered as a Startup if it fulfills the criteria for turnover and period of incorporation/registration as per Startup India Initiative.

   5. What are the documents required for claiming trademark fee reduction applicable for a Startup?

      The Applicant would be required to obtain a Certificate, under the Start-up India Initiative, from the Inter-Ministerial Board of Certification as constituted by the Department of Industrial Policy and Promotion from time to time.

   6. What is an Enterprise according to the Trademarks Act?

      An Enterprise means an industrial undertaking or a business concern or any other establishment, by whatever name called, engaged in the manufacture or production of goods in any manner pertain to any industry specified in the first schedule to the Industries (Development and Regulation) Act, 1951 (65 of 1951) or engages in providing or rendering or any services or services in such an industry.

   7. Who is a Small Enterprise according to the Trademarks Act?

      A Small Enterprise can be classified as the following:

      • Small Manufacturing Enterprises: An Enterprise engaged in the manufacture or production of goods wherein the investment in plant and machinery is more than INR 25 Lakh (Rupees Twenty-Five Lakh only)/ USD 2.5 Million (Two Point Five Million United States Dollars) (approximately) but does not exceed INR 5 Crores (Rupees Five Crores only)/ USD 50 Million (Fifty Million United States Dollars) (approximately).
      • Small Service Enterprises: An Enterprise engaged in providing or rendering of services wherein the investment in equipment is more than INR 10 Lakh (Rupees Ten Lakh only)/ USD 1 Million (One Million United States Dollars) but does not exceed INR 2 Crores (Rupees Two Crores only)/ USD 20 Million (Twenty Million United States Dollars) (approximately).

   8. Can a non-Indian company be considered as a Small Enterprise?

      In case of foreign enterprise, an Enterprise which fulfils the aforementioned criteria is eligible to be an Applicant in the Small Enterprise category.

   9. What are the documents required for claiming a Small Enterprise status?

      An Applicant is required to submit evidence of registration under the Micro, Small and Medium Enterprises Development Act, 2006. Accordingly, an MSME Registration or SIS Registration Certificate would suffice accompanied with the official fee.

1. What is the next step once the trademark has been advertised in the Trademarks Journal?

   After the examiner reviews the trademark, if the trade mark application is considered allowable, the application is advertised in the Trademarks Journal. Once advertised, the trademark is open for opposition purposes for a compulsory period of four (4) months. In case no opposition is filed within this stipulated time period, the mark proceeds to registration. The purpose behind publishing a Trademark in the Journal is to enable any third party to view the trademark and file a trademark opposition against it.

2. Who can oppose a Trademark Application in India?

   “Any person” may oppose a trademark. This person does not necessarily have to be a registered proprietor of any mark. He can be a purchaser, customer or a member of the public likely to use the goods. The rationale behind this is that the Opponent is not only representing himself but the public at large because having two similar marks in the market can only result in confusion.

3. What is the period within which a Notice of Opposition can be filed?

   The Notice of Opposition has to be filed within four (4) months from the date of publication of the mark in the Trademark Journal. The period is not extendable under any circumstance.

4. What are the stages in an Opposition proceeding?

   • Stage 1 – Filing a Notice of Opposition/Filing a Counter-Statement : Any person wanting to oppose a mark can do so by filing a Notice of Opposition on the prescribed form along with the prescribed fee within four (4) months of advertisement of the mark. It is first sent to the Registry for review and if all the formalities are met, the Registry will then serve the notice on the other party.A counter-statement or reply to the opposition must be filed within two (2) months. There is no extension to file a counter-statement which means that if the Trademark Applicant fails to file a counter-statement within two (2) months of receiving the Notice, the mark shall be deemed abandoned. The counter- statement is first sent to the Registry for review and if all the formalities are met, the Registry will then serve the counter-statement on the Opponent.

   • Stage 2 – Filing of Evidence in support of Opposition : Within two months (extendable by one (1) month of receiving the counter-statement, the Opponent has the choice of providing evidence in support of his opposition in form of an Affidavit to strengthen the case. The Opponent can choose to waive filing an Affidavit if he wants to rely on the facts stated in the notice of opposition. Whatever maybe the choice, the Opponent has to inform the Officials and the other party within the prescribed time otherwise the opposition will be tagged as abandoned.

   • Stage 3 – Filing of Evidence in support of Counter- Statement : Within two (2) months of receiving evidence/intimation of waiver by the Opponent, the Applicant has to file evidence in support of his counter-statement /application. The Applicant also has an option to waive his right to submit any evidence.

   • Stage 4 – Filing of Evidence in Reply : Within one (1) month of receiving evidence/waiver, the Opponent again has the option to file additional evidence in support of his opposition. This option is given to achieve some sort of finality in the proceedings, to rebut the evidence produced by Applicant.

   • Stage 5 – Hearing : Ordinarily with three (3) months of the completion of evidence, a hearing is appointed and the parties are notified. After hearing the parties and considering the evidence, the Registrar shall decide whether the trademark is to be accepted or not.

1. What is the Madrid Protocol?

   The Madrid Protocol provides for the international registration of trademarks by filing a single International Application. Indian companies which have procured trademark registrations and/or have pending applications with the Trade Marks Office in India can file a single International Application (“IA”) under the Madrid Protocol.This IA can be filed across 92 countries based on the same particulars as of the registration/pending application in India (Home Application). The countries which shall be covered by the IA are to be designated by the Applicant at the time of filing. Once the application has been filed, it is examined and/or prosecuted under the local laws of these designated countries.

2. What are the advantages of filing under Madrid Protocol?

   Reduction in cost : The additional fee of engaging local counsels at the time of filing of the application is not required. This reduces the cost of filing the application substantially as a single request can be filed for recordal of assignment, name change, renewals etc.

   Reduction in time : Generally, the countries designated at the time of filing have to either accept or refuse the application within a period of eighteen (18) months from the date of filing of the International application. This reduces the time frame of procuring registrations considerably.

3. What are the disadvantages of filing under the Madrid Protocol?

   Any change owing to opposition/rectification/cancellation/objections in the Home Application within a period of five (5) years from the filing of the IA shall also identically change the particulars of the International application across all designated countries.

   If the Home Application is opposed and the application is eventually removed, the International application in such cases shall also be removed from all designated countries.

   The specifications of goods and services that are accepted for various countries and their respective trademark offices may differ.

1. Who can file a Trademark application in India?

   Any person claiming to be the proprietor of a trademark, used or proposed to be used by him, may file an application for the registration of a Trade Mark. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark.

2. What are the documents required for trademark registration in India?

   The minimum documents and information which are required for filing a filing trademark application in India is as follows:

   • The name, address and nationality of the Applicant. If the Applicant is a company, the country or state of incorporation with the complete address. If a partnership concern, then the name of all the partners;
   • A list of goods and/or services for which registration is required;
   • Trade Mark Entity: Whether the Applicant is an Individual, Start-up or a small enterprise;
   • Soft copy of the trademark to be registered;
   • If the application is filed claiming priority from an earlier filed application in another country, details of that application is also required at the time of filing of the application in India (application number, filing date, country and goods/services). A certified priority document or its duly notarized copy is to be submitted with the Trade Marks Office in original within two months of the filing of the application. If the certificate is not in English, a certified/notarized English translation is required.
   • USE : Date of first use of the trademark in India, if at all used or else the application can be filed on a proposed to be used In case the use of the trademark is claimed prior to the date of the application, an affidavit testifying to such use along with supporting documents required for trademark registration, shall have be filed along with the application. [The term ‘use’ in India has an extensive meaning and does not necessarily mean physical presence of the goods or services in India. Advertisement of the mark in foreign journals having circulation in India or the use of the mark in sales invoices, letterheads etc. bearing the trademark shall constitute ‘use’ of the mark in India.].
   • Power of Attorney : A prescribed document simply signed by the authorized signatory of the Applicant with the name and designation clearly mentioned (no legalization/ notarization is required).

3. Is it mandatory to file Power of Attorney while filing a Trademark application?

   It is mandatory to submit a Power of Attorney at the time of filing the application on behalf of an Applicant. The Power of Attorney needs to be simply signed by the Applicant (no legalization or notarization is required).

4. Is it mandatory to submit “Statement of Use” at the time of filing of application?

   The trademark application can be filed either claiming usage from a date prior to the date of filing of application or on Proposed to be Used basis.

   In case the Applicant wants to file an application claiming usage of the mark in India prior to the date of filing of application, then an affidavit, along with supporting documents testifying such use will also have to be filed. The affidavit needs to be signed by the authorized signatory and notarized by a Notary Public.

   In case the Applicant wants to file an application on a Proposed to be Used basis, then an affidavit substantiating use, is not required.

1. Is amendment in Trademark application allowed under the Trademarks Act?

   The trademark law in India provides the Applicant of a trademark with an opportunity to correct an application only for minor changes and not for changes that substantially affect the identity of the trademark or the goods or services covered by the application. The correction or amendment as allowed can be made before or after registration of the trademark application.

2. What are the permissible amendments under the Trademarks Act?

   Following are the permissible amendments under the Trademarks Act:

   • Amendment/correction in the name, address or description of the registered proprietor
   • Cancel the entry of a trademark on the Register
   • Amendment of user date
   • Amendment in the specification of goods and/or services.

3. Can action be taken against a trademark that is wrongly registered or wrongly remaining on the Trademarks Register?

   A mark may have been wrongly registered or may be wrongly remaining on the register. In such cases the Act provides for rectification of the register.
   Any person, aggrieved by an entry wrongly made or wrongly remaining on the register of trademark, is entitled to file a petition for:

   • Rectification of the Trademark in the Register
   • Cancellation of Registration or removal of the registered mark.

4. What is rectification of a Trademark?

   Rectification of a trademark can be filed in India on grounds of contravention or failure to observe a condition of the trademark already entered in the Register or an error in registering the trademark.The grounds for filing a rectification action are as follows:

   • Contravention or failure to observe a condition entered in the Register
   • The Register suffers from the absence or omission of an entry e.g. a disclaimer, a condition or a limitation on the registered mark.
   • The entry made in the Register was made without any sufficient cause i.e. registration was obtained by fraud or misrepresentation of facts or the mark registered was similar to an already registered mark, etc.
   • Error or defect in any entry made in the Register.
   • The entered mark was wrongly remaining on the Register i.e. it is contrary to some of the provisions of the Act or is likely to cause confusion amongst the public and trade.
   • The renewal fee has not been paid.

5. What is cancellation of a Trademark?

   Cancellation of a trademark is a process in which a party seeks to remove a registered trademark from the register. This can be done: –

   • If it is proved that the trademark was registered without any bona fide intention of use by the owner
   • If the trademark hasn’t been used for a continuous period of five (5) years from the date of registration of the mark.

6. Who can file for rectification/cancellation proceedings?

   Ans: Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may file for rectification/ cancellation proceedings. An ‘aggrieved person’ implies any party whose trading interests are affected by the presence of the registration on the register.

7. Where does one file a rectification/ cancellation action?

   An application can be filed in the prescribed manner before the Trademarks Registry where the application for its registration was filed or at the Appellate Board, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.

8. What is the effect of rectification?

   The Tribunal i.e. the Registrar or the Appellate Board, after giving a notice as well as an opportunity of being heard to the concerned parties, may either cancel, vary, add or remove the entry in question.

9. What are the documents required for filing a rectification/ cancellation action?

   The documents required for filing a rectification/ cancellation action are as follows:

   1. An application is to be made in triplicate on the requisite form
   2. A statement of case, setting out the nature of the Applicant’s interest, facts upon which the case is based and the relief that is sought.

1. How to renew a Trademark in India?

   The registration of a trademark is valid only for a period of 10 years. After which, it can be renewed from time to time. Trademark renewal preserves those rights which are only available to a registered mark. In case the proprietor fails to renew the trademark, then he shall lose all the protection that comes along with registration.

   Application for renewal of the trademark in India can be filed on or before 6 months, before the expiry of the registration in a prescribed form before the Registrar along with the requisite renewal fee.

   A renewal request of trademark in India can also be filed within 6 months after the expiry of the renewal date along with the requisite late renewal fees.

   If the request is not filed and the fees is not paid within the aforementioned periods, the trademark is liable to be removed from the Register.

2. How to restore a Trademark in India?

   If more than six (6) months have lapsed from the renewal date and no renewal request has been filed, then an application for restoration is required to be filed within one (1) year from the date of expiration of the renewal date. The application is to be accompanied with the prescribed fee and a statement explaining the factors that led to the trademark not being restored.

   The Registrar will restore the Trademark if satisfied that it is just to do so.

1. Can a Trademark be transferred from one person to another?

   Trademarks like any other asset can be transferred from one proprietor to another. The transfer could be temporary through licensing or permanent thorough an assignment. A registered mark, or a mark for which an application to register has been filed is assignable/transferable.

2. What is the difference between Assignment of Trademark and Licensing of Trademark?

   In case of an assignment of a trademark, there is a transfer in the ownership of the trademark registration and in case of licensing, the proprietary rights of the trade mark continue to vest with the original owner but only few restricted rights to use the brand/trademark are given to the third party.

3. What is Assignment of Trademark?

   Assignment of a trademarks is a process in which the owner of the trademark transfers the ownership and proprietary rights of the trademark either with or without the goodwill of the business. The manner in which an assignment can be made are as follows:

   • Complete Assignment to another entity
   • Assignment to another entity but with respect to only some of the goods/ services
   • Assignment with goodwill
   • Assignment without goodwill

4. What are the documents required for the Assignment of Trademark?

   A trade mark is generally assigned by way of a properly executed and notarized Trademark Assignment Agreement which pertains to the transfer of the mark from the owner to another. Accordingly, a specific request along with the Trademark Assignment Agreement is required to effect such a change of ownership in respect of the mark at the Trademarks Registry.

5. What is Licensing of Trademark?

   A trademark may be licensed to allow others to use the mark without assigning the ownership and the same may be done for all or some of the goods and services covered. The Trademarks Act refers to a Licensee as a ‘Registered User’.

6. Is it necessary to record an assignment with the Trademarks Office?

   Once a trademark is assigned it is necessary to record the change in ownership with the Trademark Registry. Specific forms with fees along with the corresponding Assignment Deed have to filed to ensure that the records reflect the ownership details.

   The Trademarks Act states that the assignment or transmission shall be ineffective against a person acquiring a conflicting interest in or under the registered trade mark without the knowledge of assignment or transmission.

7. Is it necessary to record a License Agreement with the Trademarks Office?

   A trademark is licensed by way of a License Agreement. As per the Trade Mark Act, 1999, contrary to the requirement in case of Assignment, the recordal of the license agreement for permitted use with the Trademark Registrar of a trademark is voluntary and not compulsory. However, it is advisable that the Agreement be registered with the Registrar.