Basics of Trademark

 

Basics of Trademark

 

Preface

 

Trade mark is an important form of Industrial Property Rights. It plays a key role in a consumer economy. As in the case of other forms of Intellectual Property Rights, trade marks also exhibit the dialectics between public and private interests. As a source identifier, a trade mark enables the consumers to identify the origin of the goods/services. The consumer thus gets the goods/services of his/her choice. On the other hand, the originator of the goods (for example the company that manufactures the goods) gets protection for the mark. Most national laws on trade marks are designed to balance this duality of interests. Further, the national laws define the legal rights of the owners of trade marks and prescribe the boundaries of such legal rights. Unregistered trade marks are protected under the principles of common law in many countries.

 

What Marks are Registrable

 

All marks are not registrable. For a Mark to be registrable, it must conform to certain statutory prescriptions. One such fundamental prescription is that a mark to be registrable must be "distinctive". The quality of distinctiveness, distinctive character, or capable of distinguishing is a basic principle that finds place in most national laws. A word having a direct reference to the character or quality of goods is not registrable. However a word having direct reference to the character or quality of goods is registrable if it has acquired distinctiveness through long and continuous use. There are several other principles, all tested by a number of judicial decisions, elaborating the registrability of trade marks.

 

Trade Marks Administration System

 

The trade marks registration systems in most countries forms part of unified intellectual property administration system. An application for the registration of trade marks must be filed at the office designated for purposes of granting trade marks registration. Ordinarily this function is performed by the national IP Offices. The trade marks office will conduct an examination of the application, conduct a search to identify if there exist prior registrations and advertise the trade marks before accepting the application. Once the application is accepted, the mark will be registered in the national trade marks register and a certificate of registration will be issued. Typically one term of registration is 10 years, which is extendible from time to time.

 

Trademark Prosecution in India

 

Registrable Marks

 

The new law on trademarks that came into force on September 15, 2003 permits the registration of Service Marks. Till then only trade marks used in respect of goods were registrable in India. Collective Marks and Well Known Marks are also now recognized in India. 
The scope of registrable Marks has been expanded to include shape of goods, packaging or combination of colors.

 

The Application

 

Application for registration of an ordinary trademark (including a service mark) must be filed in Form TM-1. The Form must be filed in triplicate accompanied by 5 additional representations of the Mark. Apart from this, 1 representation must be affixed to the Form itself. 
Application for registration of a trademark claiming Convention Priority must be filed in Form TM-2. To register a Collective Mark the application must be filed in Form TM-3 and for Certification Marks the application must be filed in Form TM-4. 

All applications must be accompanied by the prescribed official fee and a Power of Attorney, if filed through an agent. The Power of Attorney must be made in the prescribed form, Form TM-48. It must be signed by the Applicant and duly stamped. The Power of Attorney can be filed subsequent to the filing of the application but within a period of preferably 3 (three) months from the date of filing of the application.

 

The Trade Marks Registry Having Jurisdiction

 

There are 5 Trade Marks Registries in India. These Registries are located in Delhi, Mumbai, Chennai, Calcutta and Ahmedabad. An application must be filed at the Trade Marks registry within whose territorial jurisdiction the Applicant is located. For applications originating from outside India, (and if the Applicant does not have a place of business in India) the appropriate Registry is the one in whose jurisdiction the principal place of business of the agent in India is located.

 

Priority Claim

 

India ratified the Paris Convention in December, 1998. An application for registration of a trade Mark claiming convention priority can be filed within 6 (six) months from the date of filing of corresponding application in the respective jurisdiction. To claim priority, a certified copy of the convention application is required.

 

User

 

Intent to use applications can be filed in India.

 

Trade Mark Search

 

It is desirable to conduct a Trade Mark search to ascertain the existence of prior registrations of identical marks. Thus far it has been rather cumbersome to conduct trademark searches in India because it was to be done manually. The digital database of registered and advertised trademarks is now available. This has made trademark search easy and expeditious. 

A Trade Marks search can be conducted by making a formal request for search in Form TM-54. Each such request must confine to a given class. The Search Report will be made available within 30 days from the date of request. 

The new law provides for expedited search. An application for expedited search must be filed in Form TM-71 and a report will be issued within 7 days from the date of request. The fee for expedited search is 5 (five) times the ordinary fee.

 

Company Name Search

 

As per the new law (Rule 32) a request can be made to the Registrar of trademarks (in Form TM-11) to cause a search and issuance of a certificate to the effect that no trade mark identical to the name of a company has been registered or is pending for registration with the Registrar.

 

Distinctiveness Opinion From The Registrar

 

One of the important features of the Indian trademarks law is that the Registrar’s opinion can be sought as to the distinctiveness of a trademark. A request to this effect can be made in Form TM-55. The Registrar will advise on whether the Mark proposed to be registered is prima facie distinctive. The Registrar will give his advice ordinarily within 7 days of filing this request.

 

Prosecution Of Application

 

Upon filing a trademark application, the Trade Marks Registry will issue cash receipt bearing the Indian trademark application number. Ordinarily within 30 days from the date of filing, the Trade Marks Registry will issue a copy of the Additional Representation bearing the Application Number and Date of Filing.

As per the new law, an Applicant for registration of a trademark is entitled to make a Request for Expedited Examination. This request, to be filed in Form TM-63, must be filed along with a declaration stating the reason for such request. The official fee for an expedited examination is 5 times the application fee. In the event an applicant files a request for expedited examination, the Registrar will issue the examination report within 3 months from the date of request. 

The specification of goods or services if exceeds more than 500 characters, the prescribed fee must be paid for each additional character. Also an Application in Form TM-61 must be filed along with the application for registration of the mark, if the number of characters in the goods/service specification exceeds 500. 

Typically the office action will set out various objections concerning the registrability of the Mark. If citation objections are raised, the Examiner will append a search report mentioning the particulars of the prior registrations. The applicant is required to reply to the First Office Action within three (3) months from its date of communication. 

The applicant, if complies with the requirements of the Trade Marks law, the Mark will be accepted in due course. The Trade Marks Registry thereafter advertises the Mark in the Trade Marks Journal.

 

Opposition

 

The Mark remains open to opposition for three (3) months, which is extendible for a further 1 month upon request, in the prescribed form, by a person interested to enter opposition. If a Notice of Opposition is filed within this period, the application enters the opposition proceedings which involves serving a copy of the Notice of Opposition by Registrar on the Applicant, the Applicant’s counter statement within [2 months from the date of receipt of Notice of Opposition], the evidence by opponent, the further evidence by the Applicant, and hearing, if any and the Registrar’s Decision allowing or rejecting the opposition.

 

Grant

 

If there is no opposition against the proposed registration or the opposition proceedings have been decided in favor of the Applicant, the Trade Marks Registry will proceed to grant the Registration.

 

Term Of Registration & Renewal

 

The Mark upon registration will be in force for a term of Ten (10) years. It must be renewed every Ten (10) years thereafter.

 

Trademark Filing Requirements - India

 

The Details of the Applicant

 

·         Name ·         Address ·         Citizenship ·         Legal status and country of incorporation (if the applicant is a company)

 

Specimen of the Mark

 

·         Five (5) printed specimen of the Mark, if the Mark is in Black & White. ·         Ten (10) printed specimen of the Mark, if the Mark is in Color ·         Three to Five different views (2 Dimensional views or photographs of the Mark, if the Mark is a 3 D Mark ·         In the case of shape of goods or packaging, five (5) different views (2 Dimensional views or photographs)

 

Specification of Goods or Services

 

The total number of characters in the specification of goods or services if exceeds 500, additional fee must be paid.

 

User

 

The law requires the applicant to specify whether the Mark is in use in India. If in use, then the date of user is required to be specified.

 

Priority details

 

Priority can be claimed if the Indian application is filed within 6 months from the date of filing of the basic application. We require the following to claim priority:

 

·         Priority application number ·         Priority country ·         Priority date ·         Certified priority document (may be submitted later)

 

Power of Attorney

 

A Power of Attorney is required to be filed with the application for registration, if it is being filed through an Agent. A Power of Attorney needs to be stamped appropriately. It is also possible to file the Power of Attorney subsequent to the filing of the Application.

 

Basics of Patents

 

Basics of Patents

 

Meaning & Content

 

Patents are statutorily designed real life legal instruments aimed at protecting inventions. Inventions, in modern times, are the outcome of well-planned research and development. Patents act as economic incentives to inventors who put in intellectual labor to develop new and useful inventions. Patents foster research and development by providing limited term exclusivity to patentees to commercially make use of the inventions they own. Patents are granted by national governments in consideration for disclosing to the public the scientific and technological information subsisting in the inventions by the inventors/or the subsequent owners of the inventions. Published patent specifications are therefore, important scientific documents containing extremely valuable scientific information. A patent is enforceable only within the territorial limits of the nation granting it.

 

Patentable Inventions

 

Invention means a new product or process involving inventive step and capable of industrial application. Not all inventions are patentable. For an invention to be patentable, it must be new, useful and non-obvious. Invention means a new product or process involving inventive step and capable of industrial application. Inventive step is defined as a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to the person skilled in the art. The national laws of a number of countries prescribe limitations on the patentability of inventions. As for example, the Indian law declares that Inventions which are frivolous or which claim anything obviously contrary to well established natural laws as not patentable. Inventions, the commercial exploitation of which could be contrary to public order or morality or which cause serious prejudice to human, animal or plant life or health or to the environment are also declared as non-patentable. Similarly there are several other specific categories of inventions, which are declared as non-patentable in India.

 

Patent Specification

 

The process of patenting begins with the execution of an idea by an inventor. Typically an idea is executed by preparing a technical disclsoure statement that enables a person ordinarily skilled in the art to reduce the invention into practice. The technical disclosure is then converted into a patent specification. This is an extremely sophisticated process that is governed by well established conventions in patent law and practice. The process typically involves conducting prior art searches to distinguish the current invention from prior art and developing a patent disclosure that demonstrates the best mode of working the invention. The patent specification comprises a title, the technical field, cross-reference to related patents (if relevant), the background of the invention, the description of the related art, the summary of the invention, the brief description of the drawing figures (if any), the detailed description of the preferred embodiments, claims and abstract.Claims are the most critical components of a patent specification. Claims define the nature and extent of the rights that a patentee owns in the invention.

 

Filing and Prosecuting Patent Applications

 

Most countries have national laws providing for patent administration systems. These national laws not only prescribe the substantive principles concerning the patentability of inventions but also the procedure for securing patents for inventions and maintaining such patents after the grant. Once an application for a patent is filed, the national patent office in most countries will publish the application (there are some exceptions to this). Typically an application for patent will be examined for formal and substantive compliance by the national patent offices. This examination may precede prior searches and in such cases the national patent office may issue a search report. This will be followed by the establishment of an Examination Report. It is the obligation of the applicant for patent to remedy the objections by the Examiner of Patents and there will be certain time limits attached with these processes. Once the applicant complies with the national patent office requirements, the patent will be granted and issued. It is the patentee’s responsibility to maintain an issued patent by paying the annuities until the patent expires after its 20 years' term (the term of patent may not be 20 years in all countries).

 

Applicant’s particulars

 

  Full Name

  Addres

  Type of incorporation (e.g. partnership, company, etc.)

  Country of incorporation (where applicant is not a perso)

  If applicant is not the inventor How applicant derived right to file patent application from inventor(s) (e.g., employment agreement, commission, assignment deed, etc.)

 

Patent Prosecution in India

 

The Application

 

An application for a Patent is to be made in the format prescribed by the Patents Act and the Patent Rules. All applications are to be accompanied by a specification clearly describing the invention claimed. The following documents must accompany the application:

 

Application for grant of patent in Form 1; Form 2 accompanied by two copies of the complete patent specification; Two sets of the drawing figures, if any, one set of which should be in thick A-4 size white sheets; Duly stamped power of attorney in Form 26 authorizing the agent; Declaration of the inventorship signed by the applicant in Form 5; Priority documents, if any, if not in English, English translation thereof; The Statement and Undertaking regarding corresponding foreign filings in Form 3; and Proof for the applicant’s right to apply for patent. To obtain a lodgment date, what is required is: The Specification; Name and address of the applicant; Name(s) and addresse(s) of the Inventor(s); and The priority details.

 

Form 1 must be signed by the inventors. However it could be signed by the agent at the time of lodgment and it can be substituted with a duly signed one within 3 months from the date of lodgment or at any time before acceptance of the complete specification. To claim priority from corresponding foreign filings, certified copies of the priority document must be filed. Upon filing a Patent Application, the Patent office issues an official filing receipt, which contains the Indian Patent Application Number assigned to the application.

 

The Applicant

 

The Applicant for a Patent can be either the true and first inventor or the assignee or legal representative of the true and the first inventor.

 

Publication

 

The Patents Amendment Act, 2002 brought into force Sections 11A and 11B concerning publication of applications. All patent applications will be published in the official gazette on the expiry of 18 months from the date of filing or the date of priority whichever is earlier. Applications wherein a secrecy direction is given under section 35 shall not be published.

 

Representation

 

Any person can file a representation by way of opposition against the grant of patent, once the application is published. The representation shall be considered by the Controller only when a request for examination of the application has been filed.

 

The Examination

 

The Patent Office will examine an application only if the applicant files a request for examination. The request for examination must be filed after the publication of the application but within 36 months from the date of priority or date of filing, whichever is earlier. The request can be filed by any interested person. Once the request is filed, the Patent Office will issue the First Examination Report. The Applicant must respond to the objections (if any) raised by the Examiner within the prescribed time lines. All procedural compliances must be met within 3 months from the date of receipt of the First Examination Report, or as may be prescribed. The remaining substantive objections raised by the Examiner must be removed and the application must be re-filed to put the application in order for grant within 6 months from the date of the First Examination Report. An extension of time upto 3 months is available. However, this extension can be availed only before the expiry of said 6 months period and in circumstances beyond the control of the applicant.

 

Grant

 

Once the applicant complies with all the requirements under the Patents Act and the Patents Rules, the Patent Office will issue a notice regarding Intimation of Grant. Thereafter, the Letters Patent shall be issued to the applicant.

 

Opposition

 

The granted application shall remain open for objection by interested parties for 12 months from the date of publication of the patent in the Patent Office Journal.

 

Renewal

 

A renewal fee is to be paid at the expiration of two years from the date of Patent and before the expiration of all succeeding years. A patent becomes ineffective if the renewal fee is not paid in time.

 

Patent Filing Requirements in India

 

Inventor’s particulars

 

·         Full Name ·         Address document (may submit later) ·         Citizenship ·         Inventors signature in prescribed form

 

Specification

 

·         Acceptable filing language: English/Hindi ·         Description ·         Claims ·         Abstract ·         Drawings (if any)

 

·         Printed on plain A-4 size sheets (one set in thick white drawing sheets). ·         Shall bear in the left hand top corner the name of the applicant. ·         Shall bear on the right hand top corner the number of sheets and the consecutive number of each sheet (e.g. Page 3 of 4) ·         Figures shall be in an upright position.

 

·         Electronic copy of the above, if any (preferable in Word)

 

Priority claim details (if relevant)

 

·         Priority date ·         Priority country ·         Priority application number ·         Applicant in priority application ·         Title of the priority application ·         Certified copy of priority document (may submit later) ·         Verified English translation of priority document (if relevant, may submit later)

 

Forms

 

·         Power of Attorney form

 

·         Duly stamped and notarized by Notary Public

 

Other Documents

 

·         Details of corresponding applications in other countries ·         Instrument of assignment duly executed and legalized if applicant is not inventor ·         If inventor not so named in the application, signature of inventor in prescribed form ·         If invention relates to micro-organisms deposited under Budapest Treaty, please provide:-

 

·         Name of International Depository Authority (may submit later) ·         Date of deposit (may submit later) ·         Accession Number (may submit later)

 

Minimum instructions to obtain filing date

 

·         Applicant’s name & address ·         Description, claims, drawings, abstract (in English) ·         Priority claim details, if any

 

National Phase Filing Requirements

 

International phase documents

 

·         Verified English translation of international application (if applicable) ·         Copy of PCT publication (for our records) ·         Citizenship ·         If applicant is not the inventor

 

 

 

Applicant’s particulars (if different from publication cover page)

 

·         Full Name ·         Address ·         Citizenship ·         If applicant is not the inventor

 

·  How applicant derived right to file patent application from inventor (e.g., employment agreement, commission, assignment deed, etc.)

 

Inventor’s particulars

 

·         Full Name ·         Address ·         Citizenship ·         Country of permanent residence ·         Inventor’s signature in prescribed form

 

Priority claim details (if relevant)

 

·         Form PCT/IB/304 or Verified English translation of priority document (may submit later)

 

Forms

 

·         Power of Attorney form

 

·  Duly stamped and notarized by Notary Public

 

Other Documents

 

·         If seeking early entry into national phase before publication of international application

 

·   Copy of international application

 

·         Instrument of assignment duly executed and legalized if inventor is not the applicant ·         Inventor’s assent if inventor is not so named in the application in prescribed form.

 

Patent Opposition in India

 

Introduction

 

The Pre-Grant Opposition by way of Representation can be filed after publication of the application (in the Patent Office Journal) till the grant of the patent by any person, in writing, against the grant of patent.

The Post Grant Opposition can be filed by any interested person within 12 months from the date of publication of the grant of patent in the Patent Office Journal at the appropriate office.

 

Grounds for opposition:

 

The major grounds on which the representation or opposition can be made are (a) wrongful obtainment; (b) obviousness; (c) non-patentable subject matter; and (d) anticipation having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.

 

Procedure:

 

In pre-grant opposition, the representation may be given at the appropriate office along with a statement and evidence in support of the representation. A hearing can also be requested if desired. However, the representation shall be considered only when a request for examination of the application has been filed. Upon considering the representation, if the Controller feels that the application needs amendment or rejection, a notice shall be given to the applicant in this regard. A copy of the representation may also be sent. The applicant has to reply within a period of 1 month from the date of the notice with statement and evidence in support of his application. The applicant may also request for a hearing if desired. The case shall be decided ordinarily within 1 month from the completion of above proceedings.

In post-grant opposition, the notice of opposition is to be given in the prescribed form at the appropriate office along with a written statement setting out the nature of the opponent’s interest; the facts upon which the opponent bases his case; the relief which the opponent seeks; and the evidences, if any. A copy of the statement and evidences is to be provided to the patentee.

Reply statement and evidence:

In response to the notice of opposition, the patentee can submit a reply statement setting out fully the grounds upon which the opposition is contested; and evidence, if any, in support of his case. The patentee has to reply within 2 months from the date of receipt of the copy of the written statement and opponent’s evidence by him. The patentee has to deliver a copy of his statement and evidences to the opponent.

Reply evidence by opponent:

 

The opponent may leave evidence in reply strictly confined to matters in the patentee’s evidence at the appropriate office. The opponent has to reply within 1 month from the date of delivery to him of a copy of the patentee’s reply statement and evidence. The opponent has to provide a copy of reply evidence to the patentee.

Hearing:

On the completion of the presentation of evidence, and on receiving the recommendation of Opposition Board, a date and time for the hearing of the opposition may be fixed, which shall be notified to the parties at least 10 days in advance. The party who desires to be heard has to inform the Controller by a notice along with the prescribed fee.

Decision:

After hearing the party or parties desirous of being heard, and after taking into consideration the recommendation of Opposition Board, the opposition shall be decided and the decision shall be notified to the parties giving reasons therefor.

 

The Opposition Board

 

On receipt of notice of opposition, the Controller constitutes an Opposition Board consisting of three members and nominates one of the members as the Chairman of Board. The Examiner who has dealt with the application for patent during the proceeding for grant of patent is not eligible as a member of the Opposition Board. The Opposition Board conducts the examination of the notice of opposition along with documents (statements and evidences) filed, and submits a report with reasons on each ground taken in the notice of opposition with its joint recommendation within 3 months from the date on which the documents were forwarded to them.