Understanding Indian trademark law

To be in par with international trademark law, the Indian trademark law has been codified and is about to undergo an amendment. Recently India signed the Madrid Protocol allowing foreign applicants to file international application designating India like most of the other countries in the world. Trademark registration India makes it mandatory to fulfill certain requirements. These requirements specify that the trademark to be registered should be distinctive and not deceptive. This means that words describing the product, geographical names and common surnames should always be avoided. The concept of ‘well known mark’ was also introduced after the last amendment.

Priority: It is important to file a corresponding application in India for claiming a priority from an application made in US. India trademarks states that the process should be completed within six months from the date of filing the original application.

Grounds of refusal: A trademark application can be rejected on following grounds.

Absolute ground: Section 9 states the various absolute grounds under which the applications can be rejected. This includes points such as trademark devoid of distinctive character, descriptive trademark, trademark likely to cause confusion and trademarks prohibited under the Emblems and Names Act, 1950.

Prohibition: Section 13 of the act prohibits the registration of each such trademark which is a commonly used and universally accepted name of a chemical element. OR has been declared by the WHO and been notified by the registrar as international non proprietary name.

Statutory defense: Trademark office India states down various statutory defense available to the applicants. This mainly includes honest concurrent usage, prior user and acquiescence for registration, parallel imports, generic ness and fair use while describing the products for criminal matters.

License/Assignment: Under the trademark registration law India trademarks are recognized as movable property thus, can be easily licensed/assigned. Thus, a trademark can be easily assigned irrespective of the goodwill attached to it.

Harpreet Oberoi is author of Jotwani.com. Jotwani Associates provides copyright registration in India through various Indian Courts.