What is the law under which the Trademark Protection is granted in Nepal?

Patents, Design and Trade Marks Act, 1965 governs and deals with the mechanism of registration of trademarks in Nepal.

Which governmental body is responsible for registration of Intellectual properties in Nepal?

The Department of Industry (DOI)is a government body that is responsible for granting patents, designs, and trademarks registrations in Nepal.

What type of marks can be registered?

In Nepal, the marks that can be protected as trademarks can be categorized as follows:

1. Conventional Trademarks including word mark, device mark, logo mark and collective mark.
2. Non-Conventional Trademarks including colour mark and shape mark.

Who can file an application for trademark registration in Nepal?

Any natural person, body corporate (like a company), trust, society, or joint applicants, even if they are not Nepalese citizens can file an application for the registration of the mark in respect of his goods/services.

Can an application be filed for single class or multiple class?

A trademark application can be filed for a single class only. Multi-class trademark applications cannot be filed in Nepal.

Which edition of NICE Classification is accepted by the Trademarks office?

The Nepal trademark office follows the 12th edition of NICE Classification and has a list of accepted goods and services.

What are the documents and information required at the time of filing the application for registration?

1. A Power of Attorney signed by the applicant sealed and attested by two witnesses, notarization.
2. Copy of registration or license of the business for product or service in which trademark is used or intend to use.
3. Four copies of model of trademark.
4. Authorizations letter if somebody has been authorized to act on behalf of the owner to register the trademark.
5. If the applicant is a foreigner, certified/notarized copy of any foreign registration certificate and address for service in Nepal must be submitted with application.
6. priority claim, where priority of an earlier application is claimed.
7. Registration of foreign trademarks in Nepal is to the extent of the foreign registration of such marks. For registration of marks belonging to foreign entities, the applicant must submit a certified or notarized copy of a valid trademark registration certificate for the same mark in the same class in the name of the applicant, either from the client’s own jurisdiction or from any foreign jurisdiction.

What is the initial registration term?

Once the trademark is registered, it is valid for a period of 7 years from the date of application.

What is the time frame to complete trademark registration in Nepal?

Trademark registration is a long process, and it takes around 6-12 months from the date of application to obtain registration in case no opposition is filed by a third party.

What are the grounds on which a trademark application can be refused/objected by the Registrar in Nepal?

1. formalities: i.e., for compliance with the filing requirements.
2. classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application.
3. distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations.
4. conflict with prior registration, prior-filed application or earlier unregistered rights resulting from an official search.
5. If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another.

What is the prescribed period for filing opposition after the trademark has been published?

Upon publication of the trademark in the Trademarks Journal, any person can oppose the registration of the said trademark by filing a notice of opposition within the prescribed period of 90 days from the date the Trademarks Journal is published in doind.gov.np.

What is the renewal term?

In Nepal, first trademark registration is valid for 07 years from the date of registration with a possibility to renew in every 07 years, one (01) month prior to the expiry date and 35 days after expiry, by paying normal fees. The mark can be further renewed for a term of 7 years after lapse of the 35 days after expiry, within 6 months, by paying late fees. If a trademark is not renewed within this timeframe, it is automatically cancelled.

What is the non-use cancellation period of a Trademark in Nepal?

The non-use cancellation period of a Trademark is for 1 year from the date of registration.

Understanding the Process and Procedures

• What is a .in domain dispute?

.in domain dispute occurs when two or more parties claim rights to the same .in domain name. These disputes can arise due to various reasons, including trademark infringement, cybersquatting, or bad faith registration.

• Who oversees the resolution of .in domain disputes?

The National Internet Exchange of India (NIXI) oversees the resolution of .in domain disputes. NIXI has established the .IN Registry, which is responsible for managing and administering the .in country code top-level domain (ccTLD).

• What is the INDRP?

The INDRP stands for the .IN Domain Name Dispute Resolution Policy, which provides a framework for resolving disputes related to .in domains. This policy is designed to ensure fair and efficient resolution of disputes in accordance with established principles of law.

• How does the dispute resolution process work?

The dispute resolution process under the INDRP involves several steps:

1. Filing a Complaint: The complainant submits a formal complaint to the INDRP, outlining the basis of their claim.
2. Appointment of an Arbitrator: An independent arbitrator is appointed to review the case and decide the Complaint.
3. Submission of Evidence: Both parties are required to submit evidence supporting their claims and defences.
4. Arbitration Proceedings: The arbitrator conducts the proceedings, including hearings and examination of evidence. The proceedings are conducted virtually and submissions are to be made through email.
5. Decision: The arbitrator issues a decision based on the evidence presented and applicable laws.

• What are the grounds for filing a complaint?

A complaint can be filed if:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
2. The domain name registrant has no legitimate interest in the domain name.
3. The domain name has been registered or is being used in bad faith.

• Is there any word restriction or restrictions on size of documents to be submitted with the complaint?

Yes, as per the INDRP Rules, the (maximum) word limit are 5,000 words for all submissions in the Complaint (excluding annexures). Annexures shall not be more than 100 pages in total.

• What constitutes bad faith registration?

Bad faith registration can include actions such as:

1. Registering the domain name primarily to sell, rent, or transfer it to the complainant or a competitor for profit.
2. Registering the domain name to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.
3. Registering the domain name to disrupt the business of a competitor.
4. Using the domain name to attract, for commercial gain, internet users by creating confusion with the complainant’s trademark.

• How long does the dispute resolution process take?

The time frame for a completing proceeding in a .in domain dispute as provided in the policy are 60 days from the date of commencement of arbitration proceeding. The date of commencement of the arbitration proceeding shall be the date on which the Arbitrator issues notice to the Respondent. In exceptional circumstances, the timeline may be extended by a maximum period of 30 days by the Arbitrator to pass an award subject to a reasonable justification in writing.

• What are the possible outcomes of a dispute resolution?

The arbitrator can issue a decision that includes:

1. Transfer of the domain name to the complainant.
2. Cancellation of the domain name.
3. Rejection of the complaint, allowing the registrant to retain the domain name.

• Is the arbitrator’s decision final?

Yes, the arbitrator’s decision is final and binding on both parties. However, parties have the right to challenge the order/ seek judicial review if they believe there has been a significant error in the decision-making process. The grounds for challenge are limited.

• How can I avoid .in domain disputes?

To avoid domain disputes, consider the following best practices:

1. Conduct thorough research before registering a domain name to ensure it does not infringe on existing trademarks.
2. Register domain names that are distinctive and not easily confused with established brands.
3. Maintain accurate and up-to-date contact information in the domain registration records.
4. Respond promptly to any claims or disputes filed against your domain name.

• Can I transfer my .in domain during a dispute?

No, domain transfers are prohibited during an ongoing dispute resolution process to prevent any changes that could affect the outcome of the case. In fact, the NIXI directs the domain registrar to lock the domain post receipt of the complaint and has to be specifically requested to unlock the domain for transfer post expiry of the Appeal period that is 90 days from the date of decision.

• How much does it cost to file a complaint?

The official fee to file a complaint under the INDRP is INR 35,400/- (approximately USD 410). For a personal hearing, the official fee is INR 2,360 (approximately USD 30) per hearing and maximum two hearings are allowed.

• Where can I find more information about the INDRP?

For more detailed information about the INDRP, you can visit the official website of the .IN Registry or contact the National Internet Exchange of India (NIXI) at https://nixi.in/

• Can I represent myself during the dispute resolution process?

Yes, parties can choose to represent themselves during the dispute resolution process. However, it is often beneficial to seek professional advice from legal experts or domain dispute resolution specialists to navigate the complexities of the process effectively.

The Office of the Controller General of Patents, Designs & Trademarks (CG’s Office) has released a set of Frequently Asked Questions (FAQs) regarding Form-27 or the Working Statement requirements under the Patents Act, 1970 (referred to hereafter as the Patents Act).

The CG’s office received multiple communications from various stakeholders requesting the issuance of guidelines or FAQs concerning the requirement for a “statement regarding the working of a patented invention on a commercial scale in India” (Working Statements), as outlined in Form-27, particularly in relation to the recently notified Patents Amendment Rules, 2024.

A public virtual meeting on this matter was also held on 29th July 2024. Following this, the CG’s office has issued FAQs related to Form-27 or the Working Statement requirements under the Patents Act. Frequently Asked Questions (FAQs) on Form No. 27 under the Patent Act and timelines for various scenarios post the 2024 amendment is provided to clarify that a single Form-27 can be submitted to provide details for multiple patents, provided these patents are related and granted to the same patentee(s).

Here are some key details regarding Form-27 from the FAQs:

What is Form 27 (Working Statement of granted patents)
Form 27 (working statement of granted patents) is a mandatory requirement for the granted Patents to furnish the information whether the Patent has been worked or not under Section 146(2) of the Patents Act, 1970 (as amended) and Rule 131(1) of the Patents Rules, 2003.

Who needs to file Form-27
Every patentee and every licensee in India shall file Form-27.

Deadline to file Form-27
Form 27 is required to be filed at the Indian Patent Office once in respect of every period of three financial years commencing right after the financial year in which the patent has been granted.

What information is required in filing Form 27
Form 27 is required to be provided with below information in case of working or non-working of the patent:
If Patent is worked: The Patentee has to affirm only that the patent has been worked.
If Patent is not worked: The Patentee has to affirm that the patent has not been worked followed with choosing the below provided reasonings or may provide any specific reason if any:

1. Patented Invention is under development/ commercial trial
2. Patented Invention is under Review/approval with Regulatory authorities
3. Exploring commercial licensing
4. Any other, may specify

New Amendment in the Form 27

1. Earlier the Form 27 was required to be filed for each financial year commencing right after the financial year in which the patent has been granted on or before the 30th of September of the commencing financial year.
2. With the recent amendments now, the Form 27 is required to be filed once in respect of every period of three financial years commencing right after the financial year in which the patent has been granted on or before the 30th of September of the commencing financial year.
3. Provision to extend the timeline of submission of Form 27 in accordance with rule 131(2) and 138 of the Amended Patent Rules, 2024.

Additional change in the Form 27

1. The Patentee can now provide their contact information in the Form 27 in case interested in receiving communications from any person interested in seeking a license.
2. A single Form 27 can be filed for multiple granted patents in case the patentee is same.

Penalty on non-compliance of the requirement of Form 27 for the granted patents]

The Form 27 is mandatory requirement under Section 146(2) of the Patents Act, 1970 (as amended) and Rule 131(1) of the Patents Rules, 2003. In case of failure in compliance of the requirement or providing false statement or information, then in accordance with Section 122 the patentee shall be punishable with fine which may extend to ten lakh rupees or punishable with imprisonment which may extend to six months, or with fine, or with both.

Timeline and procedure to fulfil the requirement of Form 27

1. In accordance with the recent amendments dated March 15th, 2024, the patents granted before /during / after the financial year 2022-23 can be filed as pern below:
   The patents granted before financial year 2022-23: If the Patentee has filed Form 27 for financial year 2022-23 (If not, the Form 27 for the missed financial year is required to be filed before hand). The Form 27 is required to be filed once in respect of period of three financial years 2023-24, 2024-25 and 2025-26 on or before the 30th of September 2026.
2. The patents granted during financial year 2022-23: The Patentee is required to file Form 27 once in respect of period of three financial years 2023-24, 2024-25 and 2025-26 on or before the 30th of September 2026.
3. The patents granted after the financial year 2022-23 (i.e., during F.Y 2023-24 and after): The Patentee is required to file Form 27 once in respect of period of three financial years 2024-25, 2025-26 and 2026-27 on or before the 30th of September 2027.

For example:

Provision to extend the timeline for filing Form 27

1. The timeline for filing Form 27 can be extended for 3 months by filing Form 4 under Rule 131(2) along with the prescribed official fee of INR 2,000 (for Natural Person /Start up /Small Entity / Educational Institution) or INR 10,000 (for other than natural person) per month.
2. In pursuant to the filed Form 4 extending the timeline maximum 3 months) the deadline to file Form 27 can be further extended by 06 months (in addition to the timeline already extended in pursuant to filed Form 4 under Rule 131(2)) by filing request under Rule 138 along with the prescribed official fee of INR 10,000 (for Natural Person /Startup /Small Entity / Educational Institution) or INR 50,000 (for other than natural person) per month.
3. In case Patentee/Licensee has failed to avail an extension of three months by filing Form 4 under rule 131(2), the deadline for filing Form-27 still can be extended by 6 months from the last date of filing of Form 27 by filing request under rule 138 along with the prescribed official fee of INR 10,000 (for Natural Person /Startup /Small Entity / Educational Institution) or INR 50,000 (for other than natural person) per month.

The FAQs also provide detailed scenarios for patents that will expire in the financial years 2023-24 and 2024-25:

1. Form-27 is due on September 30, 2024, specifically for patents that expired during the financial year 2023-2024.
2. For all patents granted before March 31, 2023, the deadline to file Form-27 is September 30, 2026, unless the patents either expired in the financial year 2023-2024 or will expire in the financial year 2024-2025.

Is it possible to condone a delay in filing Form-27?
No, a petition under Rule 137 for condoning delay in filing is not permitted.
Are there any options available for filing Form-27 if the deadline expired before the commencement of the Patents (Amendment) Rules, 2024?
None. It is not possible to file Form-27 if the due date had passed before the Patents (Amendment) Rules, 2024 came into effect.
Can multiple stakeholders (like patentees, exclusive or non-exclusive licensees) file Form-27 separately for same patent or a group of patents?
Yes. Patentees and exclusive or non-exclusive licensees can file Form-27 separately for the same patent or a group of patents.

Start-Ups are often embroiled in various issues ranging from their products development and distribution, hiring employees and employment agreement, funding et al. Amidst these issues, the intellectual property protection (IP) takes a back seat. This can, more often than not, scupper your chances to attain success. As a Start-Up, there is no leeway for error. We would quickly run you through the reasons why a Start-Up needs IP protection:

1. Protecting your ideas or invention:

This can be attributed as one of the prime reasons to protect your IP. You won’t surely deny the fact that the world is full of free riders. Even before your idea or invention is into the public domain, you would see it being squatted. Thus, for realization of your commercial success, you need IP protection right from the inception. Much of your future success is reliant on how neatly your IP is protected.

2. Attracting investment:

A well protected IP portfolio can attract investors, suppliers, funders etc. There is a reason behind that. If your IP portfolio is unprotected, it aggravates its chances to meet its doom by posing itself to conflicts. On the other hand, a well-protected IP portfolio could be intriguing to investors as this enhances its chances to attain potential success or stability without getting into hustle and bustle with others.

3. Competitive advantage:

As a matter of common sense, you could attain competitive advantage on others if your IP portfolio is protected. Unprotected IP could be easily taken away by copycats, which would inhibit your commercial success because there would too many sellers with the same subject matter. In other words, it would be helpful in gaining competitive advantage on others.

4. Putting the world on notice:

Once your IP is registered or granted as per the local laws and procedures, you are legally entitled to put the world on notice that your IP is registered or granted with the use of designated symbols. Thus, making it easier for the third parties to understand that no one else is entitled to the use of the IP in question unless rightfully authorized.

5. Protection from infringement suits:

This is an inverse proposition. Once you are granted a registration to an IP right, you are presumed to be the owner of the IP in question. In the process of prosecution of your application, there are high chances that any third party who had already registered their IP with the same subject matter would be objected to by the Registry officials or the third party itself. Thus, this would consequently prevent your IP being registered and thus avoiding any infringement suits in the future.

6. Right to take action against the infringers:

Once you have registered your IP, it enables or provides you with a statutory right to take action against the third party infringers. In the absence of such protection, it would be difficult to prove one’s case in the court of law and one has to resort to other common law remedies such as passing off which is rather more difficult a proposition to prove when compared to the aforesaid right.

7. Increase the value of your enterprise:

As you would already be aware that IP is a form of property, however, intangible in its nature. At times, this can account for more than the tangible value of an enterprise. Thus, it becomes all the more important to protect IP and increase the value of your enterprise on the basis of such intangible assets.

8. Make money:

It is important to note that upon application or registration of your IP, you can assign or license it to third parties for revenue. The different types of IP can generate different revenue streams for a Start-Up and thus, enabling it to survive in initial crunch times. Also, it can help a Start-Up to spread its wings in areas where it lacks expertise or doesn’t have resources to commercialize itself by licensing or assigning the IP.

9. Smooth exit:

Once your IP is protected, it becomes easier for your start-up to exit should you think to do so. Botched up IP portfolios can lead to significant delays in exiting. Thus, if your IP portfolio is in its place, it would be easier for third parties to take over and prevent any such deals to fall apart due to IP issues.

Thus, it is amply clear that there are strong reasons to protect your Start-Up by protecting your IP. In the early stages of business, not protecting IP is often put down to being short on cash. However, in our experience, this would only lead to more distractions and failures than stability. We would advise timely allocating funds for protection of IP.

How to identify IP?

Identifying IP is not a daunting task. You should sit down with your team and a lawyer to cull out what you think should be protected. These are often your creative assets. Once you have zeroed in on the types of IP to be protected, you should seek advice from your lawyer. Different types of IP protection apply to various category of works. For example, subject matter of patent would be inventions, copyrights would protect literary, dramatic, musical and artistic work, and trademarks would protect a Start-Up’s brand name, logo, signatures etc.

How to protect IP?

It is very important to understand that identification of the subject matter/IP is not the end of road. Once you have conceived a brand name or think you have come up with an invention, you should seek lawyer’s advice whether to file an application with the Registry or not. Is the subject matter registrable? Secondly, if registrable, is it already not in use by any third party? This could be assessed by conducting relevant searches with the help of your lawyer. When you have the results that there would be potentially no obstacles debarring your registration or grant, you should go ahead with filing an application with the Registry.

How to manage IP?

Again, as and when your IP is protected, you cannot sit back on a recliner. You then have to manage your IP, which is an ongoing process. You have to liaise with your lawyer as to the renewal deadlines and keep a tab on the renewals in certain IP types. Further, you have to keep a watch on third party applicants or infringers in the market. If there are any applicants with the Registry with the claim to the same/similar subject matter, you ought to take action against such parties. Further, you can take court action for any infringing market use.

Deadlines for protecting different types of IP:

There are different timelines applicable to register your IP. You should consider consulting your lawyer as and when you have created an IP. Depending on the type of IP, a lawyer would accordingly advise you. Generally speaking, patents are the most time sensitive ones. If you don’t patent your invention, anyone can apply for a patent and exploit it for profit exclusively for 20 years. On the other hand, other types of IP such as trademarks and copyright have less rigid rules. Nevertheless, you should be aware as a Start-Up that protecting your IP at the earliest will not only etch your name on the Registry’s records as a notice to the world, but also shoo away any potential copycats, or inverse claims.

Why to engage an IP lawyer:

It is further to be understood that a Start-Up has already too much on its plate to look after. In such a scenario, it is advisable to engage an IP lawyer who is adept at dealing with multitudinous legal issues. Often Start-Ups are inclined to ‘Do-it-yourself’ (DIY) approach. However, this could lead to more complications or delays in prosecuting an application. Further, if there are any third party rights meddling with your application, it could lead to more expenses than saving, for example, contesting an opposition from a third party. An IP lawyer would have conducted basic trademark searches or patent prior art searches to look for potential conflicts.

Templates don’t work when it comes to agreements:

Another pertinent or natural extension of DIY approach is usage of online templates which are basic in their content. Thus, it is crucial that an IP lawyer is engaged who understands intricately all the legal issues involved. Any agreement, for an example, non-disclosure agreement, is multifaceted. It has to cover various aspects which a Start-Up may unwittingly overlook right from defining “confidential information” to return or destruction of information. Thus, it is not wise or appropriate to use online templates as they may be missing critical aspects or anything which has to be tailored as to your specific needs. In the same vein, it is important to mention that a Start-Up should consult an IP lawyer before disclosing any information to third parties.

Basic checklist for Start-Ups:

1. Carry out trademark searches or prior art searches for patent to see if the trademark or patent is already applied for or in use.
2. Register your trademark, brand or logo.
3. Check if the domain name is available.
4. Identify other types of IP that you may have.
5. Keep the information confidential by using non-disclosure agreements.
6. Have proper employment agreements in place to avoid any IP ownership conflicts against employees.
7. Have contributors assign their IP to you or have agreements which obligate them to assign, whether pre-existing the Start-Up foundation or thereafter.
8. Have confidentiality agreements executed with employees.
9. Seek authorization from other parties before you use their IP.
10. Keep proper records of the date of creation or use of the IP.

Government’s scheme:

The Government of India launched a scheme for Start-Ups Intellectual Property Protection (SIPP) in 2016 on pilot basis and extended upto 31-03-2023. In addition, the scheme was made applicable to all Indian innovators/ creators using the services of the TISCs established in India w.e.f. 06-09-2019. To further encourage the IP facilitators to provide quality services to eligible applicants, the scheme was revised and facilitation fees notably increased by at least 100% w.e.f. 02-11-2022. The scheme is now being extended further for a period of three years upto 31-03-2026. However, based on the experience gained from implementation of the scheme so far, certain aspects of the scheme have been amended w.e.f. 01-04-2023.

Objective:

To nurture and mentor innovative Start-Ups and assist them in protecting and commercializing IP assets by providing high quality IP services by facilitators and resources.

Appointment of Facilitators:

The facilitators shall be empaneled or appointed by the Controller General of Patent, Trademark and Design (CGPDTM). It shall regulate conduct and functions of the facilitators at regular intervals. Ms. Suvarna Pandey from RNA IP Attorneys has been appointed as one of the facilitators for patent/design.

Function of Facilitators:

1. Pro Bono advice.
2. Advice and protection of IP in foreign jurisdictions.
3. Assistance in filing and prosecution of patent, trademark and design application.
4. Drafting provisional/complete specifications for Start-Ups.
5. Responding to office actions and other queries of the Registry.
6. Attending the show cause and opposition hearings, if any, at the Registry.

Fees of Facilitators:

The following professional fee structure shall be applicable. Further, the fee is to be borne by the Government (respective IP Offices) and paid directly to the facilitator by the office of CGPDTM upon submission of the claims by the facilitator.

Statutory Fees:

The cost of the statutory fees for each patent, trademark or design application shall be borne by the Start-Up itself. These are tabulated in the respective Patents Rules 2016 as amended, Trade Mark Rules 2017 as amended and Designs Rules 2001. Further, as per the revised Patent Rules 2016, Start-Ups will now be eligible for 80% rebate in the patent fee. The rebated costs are applicable for expedited processing of the application too. In relation to trademarks, the new rules offer 50% discount on the official fees for startups and SME’s (small and medium enterprises) with respect to filing an application for registration of a trademark and for expedited processing of an application.

1. In case of an ISA application for a patent, the cost of PCT fees (transmittal fee, international filing fees, search fees etc.) shall be borne by the eligible applicant itself.
2. In case of an International Trade Mark application, the cost of fees and payments under Madrid System shall be borne by the eligible applicant itself

For a basic application, the following fee shall be applicable:It is to be noted if any application is abandoned before disposal of the application, the facilitator shall be entitled for the filing fee and not for disposal of the application.

Ownership of the Intellectual Property Rights:

The rights under the scheme shall be non-transferable, either wholly or partially, to the facilitators or the government. The Start-Up shall have full rights in the IP generated.

Disclaimer

The scheme does not entitle a Start-Up with any grant or registration. The intellectual property application i.e., patent, trademark or design shall be assessed and disposed-off as per the applicable laws and rules.

What are plant varieties breeders’ rights in India? The rights of plant varieties breeders are protected under the PPVR&FR Act (Plant Protection, Varieties Registration, and Farmer’s Rights Act 2001).

The Plant Variety Act in India is a legislation that provides protection for plant varieties and encourages the development of new and improved plant varieties through intellectual property rights. It establishes a system for the registration and protection of plant varieties, granting breeders exclusive rights over their creations.

What is the purpose of the Plant Variety Act?

The main purpose of the Plant Variety Act is to stimulate agricultural innovation and ensure fair rewards for plant breeders. It aims to encourage the development of new and improved plant varieties by providing legal protection to breeders, allowing them to have exclusive rights over their varieties and control their commercial use.

What type of plants are covered under the Plant Variety Act?

The Plant Variety Act covers a wide range of plants, including agricultural crops, horticultural crops, forest trees, ornamental plants, and fruit crops. It encompasses both sexually and asexually reproduced plants.

How does the registration process work under the Plant Variety Act?

To obtain protection under the Plant Variety Act, a breeder needs to apply for the registration of their plant variety. The application should include detailed information about the variety, its distinctiveness, uniformity, stability, and the breeder’s rights over it. The application undergoes examination, and if it meets the criteria, the variety is registered, and the breeder is granted exclusive rights.

What rights does a breeder have under the Plant Variety Act?

Once a plant variety is registered, the breeder is granted several rights, including the exclusive right to produce, sell, offer for sale, export, import, or distribute the propagating material of the registered variety. These rights prevent others from using the protected variety without the breeder’s authorization.

What are the benefits of the Plant Variety Act for farmers?

The Plant Variety Act also includes provisions that safeguard the interests of farmers. It allows farmers to use the protected varieties on their own farms for cultivation, exchange, or sale of produce, subject to certain conditions. Farmers are also permitted to save and use seeds from protected varieties for subsequent cultivation.

How long does the protection last under the Plant Variety Act?

Under the Plant Variety Protection and Farmers’ Rights Act in India, the protection for registered plant varieties typically lasts for 15 to 18 years, depending on the type of plant. Specific durations include:

1. 15 years for new plant varieties;
2. In the case of extant varieties, 15 years from the date of notification of extant varieties by the Central Government under Seed Act 1966;
3. 18 years for trees and vine;
4. and other crops are protected for 15 years from the date of registration.

What happens if someone infringes on the rights of a registered plant variety?

If someone infringes on the rights of a registered plant variety, the breeder can take legal action against them. The Plant Variety Act provides remedies for infringement, including injunctions, damages, and other appropriate relief.

Who is eligible to apply for plant variety protection under the Plant Variety Act?

Any person or entity that has developed or discovered a new and distinct plant variety can apply for plant variety protection. This includes individual plant breeders, research institutions, agricultural organizations, and commercial entities.

How do farmers’ rights relate to plant breeders’ rights?

Plant breeders’ rights and farmers’ rights are two distinct but interconnected concepts. While plant breeders’ rights grant exclusive control to breeders over their new plant varieties, farmers’ rights acknowledge the vital role of farmers in conserving and using traditional seeds. Farmers’ rights often come into play when plant breeders’ rights restrict farmers’ ability to save and exchange seeds, ensuring that farmers have the freedom to continue their traditional practices.

• What is the forum in India to file patent invalidity proceedings?

The patent invalidity proceedings can be filed at the Patent Office in Mumbai, Delhi, Kolkata, and Chennai based on the office that granted the patent. However, if the defendant seeks to challenge the patent’s validity during an infringement action, the action must be transferred to the High Court.

• What are the requirements to establish that a patent claim is invalid?

Both lack of novelty and inventive step requirement (obviousness) can be independent ground for invalidity. Section 64 of the Indian Patents Act outlines circumstances under which a granted patent can be revoked.

1. Novelty Grounds: The claimed invention is anticipated by a single publicly known reference, sale of products, or commercial disclosure before the application is filed. If the claimed invention lacks novelty regarding the earlier disclosed knowledge or prior use, this can invalidate the patent.
2. Obviousness Grounds: Claimed invention is obvious to any person skilled in the art and does not involve any inventive step can be invalidated based on obviousness. Suppose a person skilled in the art, such as an expert appointed by the court for testimony, considers the claimed invention to be evident and easily discoverable as of on the priority date of the claimed invention. In that case, the patent claim can be invalidated on the grounds of obviousness.
3. The subject of the claim of the patent is not an invention: A claimed subject matter that does not fall within the criteria of the patentable subject matter, such as defined by Section 3 of the Indian Patent Act, can be invalidated on those grounds.
4. Patent wrongfully obtained: Applicants of the patent should be the inventors who have worked on the invention. Insufficient disclosure of inventors’ details or disclosure of a person as an inventor who is wrongfully mentioned to be the inventor can form the basis of invalidation of the patent.
5. Insufficient disclosure of the invention: If the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, that is to say, the description of the method or the instructions for the working of the invention as contained in the complete specification are not by themselves sufficient to enable a person possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention.
6. The claims included in the patent are not fully substantiated by the description provided.
7. Failure to disclose information relating to foreign applications as required under Section 8 of the Indian Patent Act.

• Who can file patent invalidation proceedings in India?

Patent invalidation proceedings can be initiated by any person interested in or by the Central Government or as a counterclaim in a suit for infringement of the patent by the High Court.

• What is the burden of proof required to establish that a patent claim is invalid?

The burden of proof is on the person claiming/alleging that a claim is invalid. The requirement would depend upon the grounds invoked supporting the invalidity claim as detailed in response to question 2.

• Is the decision of the Patent Office in invalidation proceeding appealable, and to which courts?

Applicants can file an appeal under Section 117A before the respective High court within three months of the date of the adverse order. Since the dissolution of the Intellectual Property Appellate Board (ex-forum for appeals) in 2021, the jurisdiction of appeals in IP matters has been transferred to the respective High courts that will enact their respective rules, designating the procedures and formalities to be followed.

• Is it necessary to show the working of a patent after grant? Can it be a ground for revocation?

Under the provisions of section 146, every patentee, or a licensee, is required to furnish the information relating to the working of a patent which is essentially a statement as to the extent to which the patented invention has been worked.

Any person interested or the Government can apply for the Revocation of Patent to the Controller with respect to the patent for which compulsory license is granted. The Patent Revocation should be filed within two years of the grant of the compulsory license.

• Whether during invalidation proceedings can a court only partially invalidate a patent?

A court can partially invalidate a patent. While deciding on a counterclaim filed by a defendant in action for infringement, a court can invalidate specific patent claims and hold that the remaining claims are valid.

• Is it possible to amend patent claims during invalidation proceedings?

Yes, it is possible to amend patent claims during the invalidation proceedings. The procedure for amending granted claims is described in sections 58 and 59 of the Patents Act 1970. Even when a patent has been declared invalid, the judge has the power to allow an amendment of the claim rather than to cancel the claim.

• What is the difference between revocation proceedings and post-grant opposition?

A revocation proceeding may be filed against a patent any time after the grant of the patent. But a post-grant opposition can be only filed after the grant of a patent but before the expiry of one year from the date of publication of the grant of a patent. Key differences between post-grant opposition and revocation proceedings include the narrower scope of inquiry in a post-grant opposition and the limited period in which a post-grant opposition can be filed.

• How do you commence invalidation proceedings?

As a first step, it is important to have a good understanding of the patent and accordingly conduct an invalidity search to identify prior art that will hamper the claims of an invention, rendering them obvious and proving that it is not novel.

What type of complaints are covered under ASCI Code?

ASCI adjudicate complaints across all media such as Print, TV, Radio, hoardings, SMS, Email, Internet/ website, product packaging, brochures, promotional material and point of sale material, etc.

Who are the members of ASCI?

The principal members of ASCI, who are also its sponsors, are firms of considerable repute within industry in India, and comprises of advertisers, media, advertising agencies and other professional/ancillary services connected with advertising practices.

What are the basic tenets of ASCI Code?

ASCI seeks to ensure that the advertisements follows four basic codes of ethical advertising:

1. Honesty: The claims being made in the advertisement must be true and capable of being established with evidence.
2. Decency: The advertisement must not be offensive to generally accepted norms of public decency
3. Non-Harmful: The advertisement should not be for promotion of products regarded as harmful or hazardous or unacceptable to the society at large.
4. Fair in competition: The advertisement should not be unfair to competition.

How can I submit a complaint at ASCI? Can anyone file a complaint?

Complaints may be submitted via text on WhatsApp, an online form, by way of mobile app, email or telephone. Letters may be sent to the postal address provided on ASCI’s website www.ascionline.in.

As per ASCI Code, the complaint can be lodged by:

1. the general public/ consumers;
2. non-public, such as government regulators, consumer groups and industry bodies;
3. intra-industry complaints i.e., complaint by one advertiser against another or amongst ASCI members; and
4. suo motu complaints – when a member of the ASCI Board, the Consumer Complaints Council (CCC) or the Secretariat makes a complaint.

Filing of a complaint with ASCI is free of cost and a decision is passed within four to six weeks. However, in case of Fast Track Complaint Redressal scheme (complainant and the other side need to be ASCI members), a fee of Rs. 75,000 (approx. US$ 1000) is required to be paid and the decision is passed within two weeks.

What type of evidence is required to be filed along with the complaint?

The following requisite details and documentation are required to be included in a complaint:

1. Complainant’s name, profession, organization and contact details.
2. Particulars of the advertisement including the exact objectionable content of the advertisement and details of the product/ service involved.
3. Publication/ broadcast details as well as a clipping /copy of the advertisement.
4. The specific grounds for objection as the basis of the complaint. The specific objections raised in the complaint need to be substantiated, where necessary, with supporting data/ information. This data is shared by ASCI with the advertiser complained against.
5. If the advertisement is in a language other than Hindi or English, a translation of the advertisement in Hindi or English is required.

What are the steps involved from filing of the complaint until it is adjudicated by CCC?

The main steps involved in a complaint filed before the ASCI are:

1. Filing of a complaint by the complainant and its acknowledgement by the Designated Officer through email/ hardcopy.
2. Examination and service of the complaint to the advertiser asking for their written comments/ response.
3. Filing of written response by the advertiser within a period of 5 business days from receipt of the complaint (extendible to 7 business days in case of the need to support claims technically).
4. Evaluation of the complaint by the CCC

ASCI also provides informal resolution if the advertiser, on receipt of a complaint, readily volunteers to address the objections in the advertisement by either withdrawing or modifying the advertisement.

Can an advertiser raise the defence that it is not a member of ASCI and refuse to comply with the order passed by ASCI asking the advertiser to withdraw/amend the advertisement?

This is not a valid defense and complaint cannot be dismissed on this ground alone. The decisions passed by ASCI are applicable to members and non-members. However, in case Fast Track Complaint is lodged, the complainant and the advertiser must be ASCI members.

What are the remedies available to the advertiser if it is aggrieved by the final order passed by ASCI? Is it possible to seek an injunction/stay from the court against the ASCI order?

The following options are available to the advertiser:

1. file review petition before ASCI;
2. file a civil suit before the court seeking stay order/ injunction and/ or damages against the order passed by ASCI.

Are the decisions passed by CCC accessible to the general public?

Yes, they are available on ASCI’s social media portals (Facebook, Instagram, YouTube, LinkedIn and Twitter), its website www.ascionline.in and are also shared with members of ASCI in the monthly/ annual report.

What are the implications due to non-compliance of decision passed by ASCI?

The decisions passed by ASCI are shared with the government of India from time to time to ensure compliance with the decisions passed. Rule 7(9) of Cable Television Network Rules, 1994 states that no advertisement which violates ASCI’s Code shall be carried in the cable service. The Information and Broadcasting Ministry (I&B) of Government of India has issued advisories in the past to broadcasters against airing advertisements that violates ASCI’s code and not complying with the decision of its Consumer Complaints Council. Additionally, ASCI has partnered with Ministry of Ayurveda, Yoga and Naturopathy, Unani, Siddha and Homoeopathy (AYUSH) and Department of Consumer Affairs to curb misleading advertisements. Thus, the decisions passed by ASCI have been given more teeth in reality even though it claims to be self-regulatory organization.

How many complaints were filed before ASCI in the year 2020? Which sector received maximum number of complaints?

In the year 2020, ASCI received 6527 complaints against 3,315 advertisements. Out of these 2,357 complaints were upheld. The maximum violations were in education sector (1062) followed by healthcare (827). The main violations/issues raised in the educational comprised of job guarantees, fake job scam and healthcare advertisements comprised the lack of truthfulness and honesty of representations and claims.

Is the advertiser required to obtain approval from ASCI before the advertisement is launched?

It is not mandatory to have the advertisement cleared from ASCI before it is aired by the advertiser.

Is pre clearance advertisement advice provided by ASCI binding on ASCI if the complaint is filed against the same advertisement at a later date?

The advice is not binding on the advertiser or ASCI. However, the possibility of the complaint being upheld by CCC against such advertisement reduces significantly.

Is it permissible to identify a competitor by name in the advertisement?

The Advertising Standard Council of India Code requires that advertisements shall not make unjustifiable use of the name or initials of any other firm, company or institution, or take unfair advantage of the goodwill attached to the trademark or symbol of another firm or its product, or the goodwill acquired by its advertising campaign.

Comparative advertising is allowed as long as the advertiser seeks to portray the advantages of its products in a truthful and honest manner. There is no bar against comparing particular features of two products to claim superiority over a competitor’s offering or against making a general comparison, as long as this is truthful. When making such a comparison, the advertiser cannot claim that the competitor’s product is bad. In other words, the advertiser can claim that its product is superior, but cannot denigrate the competitor’s product or call it inferior as it would amount to product disparagement’ and may incur legal consequences. Comparative advertising is permitted provided the rights of trademark owner are not infringed and unfair advantage is not taken of the competitor’s trademark (Sections 29(8) and 30(1) of the Trade Marks Act).

Are there any guidelines on the disclaimers allowed in the advertisement?

Disclaimers can ‘expand or clarify a claim, make qualifications, or resolve ambiguities, to explain the claim in further detail, but should not contradict the material claim made or contradict the main message conveyed by the advertiser or change the dictionary meaning of the words used in the claims received or perceived by a consumer’. The disclaimer should be prominently written, represented in the same language having same font as the claim and should not be written in italics.

What is the duty of celebrity appearing in the advertisement? Can the celebrity appearing in the advertisement be held liable for misleading advertisement?

In matters concerning celebrity endorsements, celebrities are expected to have adequate knowledge of the ASCI Code and it is the duty of the advertiser and the agency to make sure that the celebrity they wish to engage is made aware of them. Further, celebrity should do due diligence that the description, claims made in the advertisement they appear or endorse can be substantiated are not misleading or deceptive. Further, celebrities should not participate in advertisements that is prohibited for advertisement or carry health warning such as injurious to health.

As per Consumer Protection Act, 2019, penalty of INR 10 Lakh (approximately USD 13,700) and one year ban may be imposed on the celebrity from endorsing the product/service. For subsequent violation, penalty of INR 50 Lakh (approximately USD 68,500) and up to 3 years ban from endorsing the product/service may be imposed. The celebrity can avoid imposition of penalty if he can establish due diligence on his/her part to verify the veracity of the claims made in the advertisement regarding the product or service being endorsed.

Are there special rules for claiming a product is new or improved?

The word ‘new’, ‘improved’ or an improvement of the product may be used in advertisements for one year from the date the new product/ service has been launched in the market.

Are their special guidelines on advertising products that claim to provide prevention for COVID-19?

Several advertisements with misleading claims around COVID-19 have emerged, such as those referring to the cure and prevention stemming from ‘anti-corona’ mattress or through the application of tulsi (Indian basil) drops to apparel. To curb these practices, ASCI has issued guidelines to promoters for the advertisement of various medicinal products and services. These guidelines cover the following main points:

1. Avoid claiming destruction of any virus other than coronavirus. In case the advertisers opt to claim the removal of any other virus, the advertisement shall include a disclaimer, e.g. “claim not applicable to coronavirus (COVID-19)”, or similar message.
2. AYUSH regulatory authorities are required to stop advertisement of AYUSH-related claims for COVID-19 treatment in print, television and electronic media.
3. Advertisers’ claims of reducing the chances of getting infected with COVID-19, or gaining immunity against it, should be supported by health authorities. Otherwise, it should be backed up by recognised medical literature, or regulatory-approved clinical research conducted by recognised medical institute or laboratory.

Are well known marks protected in India?

Yes, well known marks are protected in India. There are specific provisions under the Trade Marks Act, 1999 and procedure to record well known trade marks in India is provided under the Trademarks Rules, 2017 enacted under the Act, 1999. Prior to March 2017 there was no procedure in place to record well known marks in India though they were protected under specific provision (Section 11(6)) of the Trade Marks Act.

What is the procedure for determining a mark as a well-known trade mark?

As per the Trade Marks Rules, 2017, an application is required to be filed (online) at the Trade Marks Registry supported by evidence of use. The Trade Marks Registry, Mumbai reviews the application filed to verify the filing requirements. Thereafter, hearing is appointed at Mumbai Trade Marks Registry to present your case. If the hearing officer is convinced that the trade mark should be declared as a well-known trade mark, the trade mark is advertised in the Trademarks Journal (TMJ) inviting objections from the general public within 30 days from the date of publication in the TMJ. If, no objections are received, the trade mark is advertised in the trade mark is advertised in the TMJ and included in the list of well-known marks.

Are there any guidelines issued by Trade Marks Registry mentioning the evidence required to be filed along with the application?

As per the guidelines published by the Trade Marks Registry, the application for well-known mark must be accompanied with following documents:

• Statement of Case describing applicant’s rights in the trade mark
• Evidence in support of the averments comprising of
  • use of the trade mark;
  • applications filed or registration obtained
  • annual sales turnover of the applicant’s business based on the subject trade mark duly corroborated;
  • evidence regarding number of actual or potential customers of goods/services under the trade mark;
  • evidence regarding publicity and advertisement of the trade mark and the expenses incurred,
  • evidence as to knowledge or recognition of the trade mark in the relevant section of the public in India and abroad
• Copy of favourable orders passed by Indian Court or Trade Marks Registry in India and if the trade mark has been recognized as a well-known trade mark by any Court or Indian TMO.

We may point out that Section 11(6) of the Trade Marks Act lists out the factors to be taken into account for determining a mark as a well-known trade mark, which are summarized below. Thus, the above guidelines follow the criteria laid down in the Trade Marks Act.

1. knowledge or recognition about the trade mark in the relevant section of the public. i.e. number of actual and potential users of the products/services under the trade mark, number of persons involved in distribution channel etc.;
2. the duration, extent and geographical area where the trade mark is used and promoted;
3. details of registrations or applications for registrations of the trade mark;
4. the record of successful enforcement of the rights in that trade mark including the record stating that the trade mark has been recognized as well known by any court or Registrar.

How extensive evidence of use is required to be filed along with the well-known application?

The following documents are generally useful to enclose along with the affidavit/ statement of case:

• Copy of board resolution/POA in favour of the authorized signatory;
• information/articles discussing the origin/history of the brand worldwide and date of use of the mark in India;
• list of application/registrations in India along with copies of few registration certificates;
• details of oldest active registration anywhere in the world;
• annual worldwide and India specific sales figures of goods/services rendered under the trade mark for the last 10 years;
• copy of invoices issued in India to customers mentioning the trade mark for the past 8-10 years (2-3 invoices per year will suffice);
• annual worldwide and India advertisement/sale promotional expenses incurred towards the trademark in India for the past 6-8 years;
• copy of advertisements published in India and worldwide in newspapers/magazines or any other media for the past 6-8 years.
• copy of favourable court orders passed by Courts, Tribunals or UDRP/INDRP domain name proceedings. 2-3 orders will suffice;
• extracts from 3^rd party websites, news articles, extracts from social media websites establishing use and reputation of the mark in India;
• copy of decisions declaring the trademark to be well-known/famous in India other jurisdictions of the world;
• industry awards, accolades, brand rankings conferred on the brand over the years;

All the documents along with the evidence is needed to be submitted online, there is a restriction that total file size of the documents should not exceed 5 MB.

What are the benefits in obtaining a well-known mark?

The Trade Marks Act grants broader protection to well-known trade marks to prevent its misuse. The Trade Marks Act specifically imposes obligation on the Registrar to protect a well-known trade mark against the identical or similar trade marks. For instance, the owner of well-known mark can restrain 3^rd parties from seeking registration or using identical or deceptively similar trade marks even in relation to different goods or services. Further, the Trade Marks Registry may take well known status into account when examining application of third parties for an identical or similar mark.

Are there any significant roadblocks in the procedure for determining a mark as a well known trade mark?

We do not foresee any significant concerns. However, there is a backlog at the Trade Marks Registry. Currently, all hearings to adjudicate well-known applications are listed at Mumbai Trade Marks Registry. Further there is a long queue of well-known petitions pending before Mumbai Trade Marks Registry. It is likely to take at least 18-24 months for the trade mark to be recorded as well-known, calculated from the filing date.

How many trade marks have been declared as well-known trade marks?

As of October 2022, 137 marks have been granted the status of well-known trade marks in India. The brand owners have shown keen interest in seeking well-known mark status for their brand.

India – FAQ’s on Franchise Agreements

What is ‘Franchising’?

Franchising is the process by  which an entity (Franchisor) that has developed a particular way of doing business expands the business by giving other existing or would be entrepreneurs (Franchisees) the right to use the Franchisor’s proven business model in another location for a definite period of time in exchange of monetary consideration.

What are the types of Franchise Agreements?

Following are the types of franchise agreements that can be entered into between the parties:

• Invention Licensing Agreement – This kind of an agreement is preferred when a person has created a new invention and seeks to maximize the fruits of his invention, by firstly patenting the invention and thereafter licensing it on a nationwide or worldwide platform so as to create a great reach. Such an agreement focuses on the licensing of patent and design rights and the manufacturing and marketing of the invention.
• Trademark Licensing Agreement – The trademark is licensed to another person to use the trademark on goods which are associated with that particular trademark so as to build brand equity. This type of an agreement may be for the manufacture, preparation, marketing, presentation, and sale of goods. In these agreements, certain specific provisions are entered to preserve the standard or quality of the goods and the goodwill and reputation of the brand associated with the trademark.
• Character Merchandising Agreement – Under this agreement, the name of a famous personality is licensed to be used on certain products. To ensure protection of the reputation and / or copyright associated with such personalities, special provisions are entered into such agreements to ensure the protection of the same.
• Dealer / Distributor / Marketing arrangements – Under these franchising agreements, the business system or format of the franchisor is adopted by dealers or distributors to gain from an already established business system or format.

How can the Franchisee ensure the protection of trade secrets, business know-how and IPR licensed under the Franchise Agreement?

Whenever a Franchising Agreement is entered into, there is sharing of IPR, trade secrets and business know-how associated with the Franchisor’s business as it is essential for the franchisee in continuing with the business operations. It is also the Franchisee’s duty to take adequate precautions in protecting the Franchisor’s confidential information from the third parties.

In order to ensure protection of such information, the Franchisor can keep a Confidentiality Clause under the Franchise Agreement or can enter into a Non-Disclosure Agreement (NDA) with the Franchisee so as to make the disclosure of such protected information punishable.

Further, the Franchisor can also enter into a Non-Compete Agreement with the Franchisee so as to prevent the Franchisee from competing with the Franchisor during the Franchise Agreement and also be prevented from divulging into similar business post-termination of the agreement for fixed number of years.

What fees can be charged for a Franchise?

The fees charged for a franchise typically includes but is not limited to the following:

• Initial Franchise Fee
• Store Opening Fee
• Royalty
• Marketing/Advertising contribution
• Purchase Price for products, equipment and other items supplied by the franchisor to the franchisee
• Training Fee

Do Franchisees have a right to sell their franchise?

The Franchisor is generally in complete control of the business and he has the right to choose Franchisees for his business. This means that the Franchisors while entering into a Franchise Agreement give away only limited control over the franchise. Therefore, Franchisees do not generally have the right to sell their franchise unless specifically provided in the Franchise Agreement. If the Franchise Agreement contains such provisions, then it should be detailed so that no conflict from the same arises and the Franchisor must always have the final decision as to who can join its network of franchise.

What should the Franchisor consider before entering into a Franchise agreement?

Here are few pointers for the Franchisor to consider:

1. Who the franchisee is?
2. What its track record has been;
3. The business experience it has, if any;
4. Is the franchisee involved in any other businesses, apart from the one it is seeking franchise in;
5. The terms and conditions under which the franchise relationship can be terminated or renewed;
6. The financial condition of the franchisee and its system.

India – FAQ’s on registering your brands

What are the different kinds of mark that can be registered as trade marks under the Indian Trade Marks Act?

• Word marks, logos, slogans, signatures, names, devices, labels, numeral(s) and/or any
• combination of these
• Combinations of colours
• Shape of goods
• 3-dimensional marks
• Sound marks
• Smell marks (None have so far been registered).

Is registration of a trade mark essential?

Registration of a trade mark is not essential; unregistered marks can be protected in India by means of a passing-off action. Registration is, however, advisable; it is prima facie proof of validity and ownership of the trade mark.

Who can apply to register a trade mark?

Any person claiming to be the proprietor of a trade mark can seek registration. The application can be filed either on the basis of actual use (prior to the filing of the application) or intention to use.

Are service marks registrable in India?

Yes, since the enactment of the Trade Marks Act, 1999, service marks are registrable. However, India still follows the 7th Edition of the International Classification of Goods and Services, which contains only 42 classes. Applications for registration of services that would fall within Classes 43 – 45 under the 9th Edition of the International Classification, should, in India, be filed in Class 42.

Can you use the symbol ® in connection with trade marks in India?

It is not only permissible, but also advisable in India to use the symbol ® next to a registered trade mark. Use of this symbol will put third parties on notice of the registration. Using the symbol in connection with an unregistered trade mark, however, will amount to a false representation, which is a punishable offence.

What documents are required when filing a trade mark application in India?

• Description of the mark i.e. whether it is a word mark or a logo or device. If it is a logo or device mark, a representation of the mark must be provided.
• Class/es in which registration is sought (as per the 7th Edition of the International Classification of goods and services).
• Goods/services in respect of which registration is sought.
• Date of first use of the mark in India. Where the mark has not been used, confirmation that the mark is ‘proposed to be used’ should be provided.
• Name, address, legal status and trade description of the Applicant.
• Authorisation of Agent (this can be filed later).
• Where a priority claim is being made, a certified copy of the priority document together with a certified English translation (if the priority document is not in English). The priority document must be filed within two months of the date of filing the application.

Next step once an application for registration of a trade mark has been filed?

Once an application has been filed, the Trade Mark Registry will issue an Examination Report which may contain a refusal to register on either absolute and/or relative grounds, and/or other requisitions. The Applicant has 30 days from receipt of the Report within which to submit its written response. This period may be extended by one month by filing a request and paying the official fees.

What are the absolute grounds for refusal to register?

The absolute grounds for refusal include that the mark:

• is devoid of distinctive character;
• is generic or common to the trade;
• is likely to deceive or cause confusion;
• is likely to hurt religious sensibilities;
• is scandalous or obscene; or
• that registration of the mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act.
• is identical with or similar to an international non-proprietary name (INN).

What are the relative grounds for refusal?

The Registrar can refuse to register a mark on the ground that it is identical with or similar to an earlier mark that has been registered in relation to similar goods or services.

If the Registrar does not accept the applicant’s written submissions, will the Registrar allow a hearing?

In this situation, there will usually be a hearing.

What is the procedure once acceptance of a trade mark application has been published in the Trade Marks Journal?

Once acceptance is published in the Journal, the trade mark application will be open to opposition from interested third parties for a period of up to four months from the date of publication of the acceptance. If no opposition is lodged by a third party during this period, the application will proceed to registration. The registration will be valid for a term of 10 years from the date of filing.

How long does it take for a mark to be registered?

If no substantial objection is raised at the examination stage, and no opposition is filed (by a third party) on publication of acceptance of the application, the mark will generally be registered within 18 to 24 months of the date of filing.

Can the applicant appeal a refusal to register?

In the event of a refusal to register, the applicant can appeal to the Intellectual Property Appellate Board. The appeal must be filed within three months of receipt of the refusal order.

Can a mark be registered as a ‘well-known’ mark under the Indian Trade Marks Act?

There are no provisions in the Act for the registration of a mark as a ‘well-known’ mark. Marks can, however, be protected as well-known marks and the Act sets out the facts that should be taken into account when determining whether or not a mark is ‘well-known’. These are:

1. The knowledge or recognition of the trade mark in the relevant section of the public, including knowledge in India obtained as a result of promotion of the trade mark in or outside India;
2. The duration and extent of use of the trade mark;
3. The duration and extent of promotion of the trade mark, including advertising or publicity and presentation at fairs or exhibition of the goods or services to which the trade mark is applied;
4. The duration and geographical scope of any registration of the trade mark, to the extent they reflect the use or recognition of the trade mark; and
5. The record of successful enforcement of the rights in the trade mark; in particular, the extent to which the trade mark has been recognised as a well known trade mark by any Court or Registrar.

The Act further provides that the Registrar shall, while determining whether a trade mark is known or recognised in a relevant section of the public, take into account the following: number of actual/potential consumers of the goods or services; number of persons involved in the channels of distribution of the goods or services; and the business circles dealing with the goods or services.