Monday, December 24, 2012

Pomegranate Patenting By US Company Blocked By India

Traditional knowledge of India has provided many modern days solutions. Many foreign companies have tried to obtain patents that are primarily based upon traditional knowledge of India.

Till recently we had no traditional knowledge digital library (TKDL) of India. However, now we have a TKDL that is serving the interests of India and international community by thwarting any attempt to patent a product or service based upon Indian traditional knowledge. The Indian TKDL is a representative database of 1200 Ayurvedic, Unani and Siddha formulations.

It has been reported that India has once again thwarted an attempt made by a US company to claim a patent at the United States Patent and Trademark Office (USPTO) on the use of pomegranate for the treatment of ulcers. To achieve this objective the Indian TKDL submitted prior art evidences in December 2010 in the form of references in three books from 11th century to 20th century.

Naturally if prior art and knowledge about an applied patent is already available in public domain there is little scope for the grant of a patent in that field. Objections regarding such applied patent are natural and in most cases they succeed as well.

After the objections raised by the Indian TKDL the applicant tried to amend the claims on August 14, 2012, but the examiner later rejected all the claims. This is a positive development and Perry4Law and Perry4Law’s Techno Legal Base (PTLB) congratulate TKDL on its proactive role in this regard.

Wednesday, August 8, 2012

The Madrid Agreement And Madrid Protocol And Its Applicability And Implementation In India

Intellectual property rights in India cover areas like trademark, copyright, patent, geographical indications, etc. As far as the trademarks law of India is concerned, the Trade Marks Act, 1999 (TMA 1999) and the corresponding Trade Marks Rules, 2002 (TMR 2002) regulate the legal framework pertaining to trademarks in India. It also regulates the national and international trademark registration in India. The TMA 1999 also regulates the convention application under Indian trademark law.

Of late international aspects of brand protection and trademark protection have assumed a centre stage in India. Trademark and brand protection under new gTLDs registration by ICANN is a very challenging aspect. The most important question to be asked these days is whether your brand and trademark is violated by new GTLDs?

Another significant aspect of international trademark protection pertains to adoption and implementation of Madrid Agreement and Madrid Protocol. International registration of trademarks under Madrid Agreement and Madrid Protocol has attracted the attention of international companies and trademark stakeholders.  

However, India has still not ratified the Madrid Protocol and accession of the same is still pending in India. Although India has enacted the Trademark (Amendment) Act, 2010 yet the same has not been notified so far. In the absence of the same, the proposed Act has no value.

Answering to a question in Parliament of India in the current monsoon session (August-September 2012) of the Parliament, the concerned minister has informed that the accession (proposed notification of Trademark rules under the Trademark (Amendment) Act, 2010 would enable the Indian companies to register their trademarks in the member-countries of the Protocol through a single applications as well as allow foreign companies to register their trade marks in India, within a specific timeframe i.e. 18 months.

At present, there are 86 contracting parties to the Protocol. Under the Trademarks (Amendments) Act, 2010, the Head Office of the Trade Marks Registry (which is at Mumbai) or such branch of the Trade Marks Registry as the Central Government may by notification in the Official Gazette specify, will deal with the international applications.

However, so far the trademark registration in India is governed by the TMA 1999 and till the 2010 Act is notified the position would remain the same.

International Registration Of Trademarks Under Madrid Agreement And Madrid Protocol

Trademark protection is generally territorial in nature. This means that trademark protection has to be sought under different jurisdictions to obtain protection under those jurisdictions. In order to obviate practical difficulties and hardships during such trademark application at international level, Madrid Agreement and Madrid Protocol have been adopted by the international community. The Madrid Protocol was adopted to render the Madrid system more flexible and more compatible with the domestic legislations of certain countries which had not been able to accede to the Madrid Agreement.

The Madrid Agreement and Protocol are open to any State which is party to the Paris Convention for the Protection of Industrial Property. The two treaties are parallel and independent and States may adhere to either of them or to both. In addition, an intergovernmental organisation which maintains its own Office for the registration of marks may become party to the Protocol. Instruments of ratification or accession must be deposited with the Director General of WIPO. States and organisations which are party to the Madrid system are collectively referred to as Contracting Parties.

The system makes it possible to protect a mark in a large number of countries by obtaining an international registration which has effect in each of the Contracting Parties that has been designated.

An application for international registration (international application) may be filed only by a natural person or legal entity having a connection, through establishment, domicile or nationality, with a Contracting Party to the Agreement or the Protocol.

A mark may be the subject of an international application only if it has already been registered with the Trademark Office (referred to as the Office of origin) of the Contracting Party with which the applicant has the necessary connections. However, where all the designations are effected under the Protocol the international application may be based on a mere application for registration filed with the Office of origin. An international application must be presented to the International Bureau of WIPO through the intermediary of the Office of origin.

An application for international registration must designate one or more Contracting Parties where protection is sought. Further designations can be effected subsequently. A Contracting Party may be designated only if it is party to the same treaty as the Contracting Party whose Office is the Office of origin. The latter cannot itself be designated in the international application.

The designation of a given Contracting Party is made either under the Agreement or under the Protocol, depending on which treaty is common to the Contracting Parties concerned. If both Contracting Parties are party to both the Agreement and the Protocol, the designation will be governed by the Agreement, in accordance with the so-called “safeguard clause” (Article 9sexies of the Protocol).

Where all the designations are effected under the Agreement the international application, and any other subsequent communication, must be in French. Where at least one designation is effected under the Protocol, the applicant has the option of English, French or Spanish, unless the Office of origin restricts this choice to one of these.

The filing of an international application is subject to the payment of a basic fee (which is reduced to 10% of the prescribed amount for international applications filed by applicants whose country of origin is a Least Developed Country (LDC), in accordance with the list established by the United Nations), a supplementary fee for each class of goods and/or services beyond the first three classes, and a complementary fee for each Contracting Party designated. However, a Contracting Party to the Protocol may declare that when it is designated under the Protocol, the complementary fee is to be replaced by an individual fee, whose amount is determined by the Contracting Party concerned but may not be higher than the amount which would be payable for the registration of a mark with its Office.

Once the International Bureau receives the international application, it carries out an examination for compliance with the requirements of the Agreement, the Protocol, and their Common Regulations. This examination is restricted to formalities, including the classification and comprehensibility of the list of goods and/or services; any matter of substance, such as whether the mark qualifies for protection or whether it is in conflict with an earlier mark, is left to each designated Contracting Party to determine. If there are no irregularities, the International Bureau records the mark in the International Register, publishes the international registration in the WIPO Gazette of International Marks, and notifies it to each designated Contracting Party.

These Contracting Parties may examine the international registration for compliance with their domestic legislation and, if some substantive provisions are not complied with, they have the right to refuse protection in their territory. Any such refusal, including the indication of the grounds on which it is based, must be communicated to the International Bureau, normally within 12 months from the date of the notification. However, a Contracting Party to the Protocol may declare that, when it is designated under the Protocol, this time limit is extended to 18 months. Such a Contracting Party may also declare that a refusal based on an opposition may be communicated to the International Bureau even after this time limit of 18 months.

The refusal is communicated to the holder, recorded in the International Register and published in the Gazette. The procedure subsequent to a refusal (such as an appeal or a review) is carried out directly between the administration or court of the Contracting Party concerned and the holder, without any involvement of the International Bureau. The final decision concerning the refusal must, however, be communicated to the International Bureau, which records and publishes it.

The effects of an international registration in each designated Contracting Party are, as from the date of the international registration, the same as if the mark had been deposited directly with the Office of that Contracting Party. If no refusal is issued within the applicable time limit, or if a refusal originally notified by a Contracting Party is subsequently withdrawn, the protection of the mark in question is, from the date of the international registration, the same as if it had been registered by the Office of that

Protection may be limited with regard to some or all of the goods or services or may be renounced with regard to only some of the designated Contracting Parties. An international registration may be transferred in relation to all or some of the designated Contracting Parties and all or some goods or services.

The system of international registration of marks has several advantages for trademark owners. Instead of filing many national applications in all countries of interest, in several different languages, in accordance with different national procedural rules and regulations and paying several different (and often higher) fees, an international registration may be obtained by simply filing one application with the International Bureau (through the Office of the home country), in one language (either English or French) and paying only one set of fees.

Similar advantages exist when the registration has to be renewed; this involves the simple payment of the necessary fees, every 10 years, to the International Bureau. Likewise, if the international registration is assigned to a third party or any other change, such as a change in name and/or address, has occurred, this may be recorded with effect for all the designated Contracting Parties by means of a single procedural step.

One disadvantage of the Madrid system is that any refusal, withdrawal or cancellation of the basic application or basic registration within five years of the registration date of the international registration will lead to the refusal, withdrawal or cancellation of the international registration to the same extent.

The process of attacking the basic application or basic registration for this purpose is generally known as “central attack”. Under the Madrid Protocol, the effects of a successful central attack can be mitigated by transforming the international registration into a series of applications in each jurisdiction designated by the international registration, a process known as “transformation”. Although transformation is an expensive option of last resort, the resulting applications will receive the registration date of the international registration as their filing date.

In 1997, less than half of a percent of international registrations were canceled as a result of central attack. The cost savings which usually result from using the Madrid system may be negated by the requirement to use local agents in the applicable jurisdiction if any problems arise.

Tuesday, July 24, 2012

Patents Registration In India: Procedures, Formalities And Required Documents

Intellectual property rights in India (IPRs in India) consist of trademark, copyright, patents, geographical indication, designs, etc. IPRs in India are adequately protected and efficiently enforced. In this article, Perry4Law and Perry4Law Techno Legal Base (PTLB) would discuss about patents registration in India and their procedures, formalities and required documents.

Patent law of India is incorporated in the Patents Act, 1970 of India. In some countries utility protection is also granted along with the patents. However, utility model protection in India is still not available and only patent protection is extended. So what does the expression “patent” means?

A Patent is a statutory right for an invention granted for a limited period of time to the patentee by the Government, in exchange of full disclosure of his invention for excluding others, from making, using, selling, importing the patented product or process for producing that product for those purposes without his consent.

Patents rights are generally territorial in nature and they do not extent to jurisdictions other than the one that has granted it. However, the applicant who has filed the patent in one jurisdiction, says India, is entitled to file a corresponding application for same invention in convention countries, within or before expiry of twelve months from the filing date in India. Therefore, separate patents should be obtained in each country where the applicant requires protection of his invention in those countries. In short, there is no “international patent” that is valid worldwide. 

It is also possible to file an international application known as PCT application in India in the Patent Offices located at Kolkata, Chennai, Mumbai and Delhi.  All these offices act as Receiving Office (RO) for International application.

Before filing a patent application, the applicant must be aware about the patentable inventions. In India, an invention relating either to a product or process that is new, involving inventive step and capable of industrial application can be patented. However, it must not fall into the categories of inventions that are non- patentable under section 3 and 4 of the Patents Act. 

Once an applicant is satisfied about the patentability of her invention, a patent application can be filed either by true and first inventor or her assignee, either alone or jointly with any other person. Further, legal representative of any deceased person can also make an application for patent.

A patent application can be filed with Indian Patent Office either with complete specification or with provisional specification along with fee as prescribed in schedule I.  In case the application is filed with provisional specification, then one has to file complete specification within 12 months from the date of filing of the application.  There is no extension of time to file complete specification after expiry of said period.
Further, some precautions must be taken before a patent application is made. The application for patent should be filed before the publication of the invention and till then it should not be disclosed or published. Disclosure of invention by publication before filing of the patent application may be detrimental to novelty of the invention as it may no longer be considered novel due to such publication. 

However the Patents Act provides a grace period of 12 months for filing of patent application from the date of its publication in a journal or its public display in a exhibition organised by the Government or disclosure before any learned society or published by applicant.

One of the most important documents of a patent application is the patent specification. A patent specification can be prepared by the applicant himself or his registered and authorised agent. The patent specification generally comprises of the title of the invention indicating its technical field, prior art, draw backs in the prior art, the solution provided by the inventor to obviate the drawbacks of the prior art, a concise but sufficient description of the invention and its usefulness, drawings (if any) and details of best method of its working. The complete specification must contain at least one claim or statement of claims defining the scope of the invention for which protection is sought for.

A provisional specification can also be filed instead of complete specification. This is useful where the applicant wishes to claim a “priority date” for her invention.  Moreover, filing of a provisional application is useful as it gives sufficient time to the applicant to assess and evaluate the market potential of her invention before filing complete specification.  However, it is not necessary to file an application with provisional specification and one can file application directly with complete specification.

Generally, every application for patent is published after 18 months from the date of its filing or priority date whichever is earlier. The applicant can make a request for early publication in Form 9 along with the prescribed fee.  After receiving such request the Patent Office publishes such application within a period of one month provided the invention contained thereon does not relate to atomic energy or defence purpose.    

It must be noted that the patent application is not examined automatically after its filing.  The examination is done only after receipt of the request of examination either from the applicant or from third party. The request for examination can be filed within a period of 48 months from the date of priority or date of filing of the application whichever is earlier.  However, an express request for examination before expiry of 31 months can be made in respect of the applications filed under Patent Cooperation Treaty known as National Phase applications by payment of the prescribed fee.

After examination, the Patent office issues an examination report to the applicant which is generally known as First Examination Report (FER). Thereafter the applicant is required to comply with the requirements within a period of twelve months from the date of FER.  In case, the application is found to be in order for grant, the patent is granted, provided there is no pre-grant opposition is filed or pending.  A letter patent is issued to the applicant.  However, in case a pre-grant opposition is pending, the further action is taken after disposition of the pre-grant opposition.  If the applicant is not able to comply with or meet the requirement within 12 months, or does not submit the documents which were sent to him for compliance within the said period, the application is deemed to have been abandoned. 

If applicant has not complied with the requirements within the prescribed time, and no request for hearing has been made by the applicant, the controller may not provide the opportunity of being heard. However the Controller shall provide an opportunity of being heard to the applicant before refusing his application if a request for such hearing has been made by the applicant at least 10 days in advance before expiry of the statutory period.

In short, after filing the application for the grant of patent, a request for examination is required to be made by the applicant or by third party and thereafter it is taken up for examination by the Patent office. Usually, the First Examination Report is issued and the applicant is given an opportunity to correct the deficiencies in order to meet the objections raised in the said report. The applicant must comply with the requirements within the prescribed time otherwise his application would be treated as deemed to have been abandoned.  When all the requirements are met, the patent is granted and notified in the Patent office Journal. However before the grant of patent and after the publication of application, any person can make a representation for pre-grant opposition.

Once granted, the term of every patent in India is 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification.  However, in case of applications filed under PCT the term of 20 years begins from International filing date. 

Tuesday, July 3, 2012

New GTLDS Objection and Dispute Resolution Procedure Of ICANN

The way brands and trademarks are protected and enforced has been changed drastically forever. With the introduction of new generic top level domain names (GTLDs) by ICANN, the chances of violation of brands and trademarks by GTLDs has increased significantly.

Even ICANN has anticipated this situation and it has put in place a system and procedure that takes care of these circumstances. According to ICANN, the objection period for new GTLDs begins when the applied-for domain names, or strings, are posted and is intended to remain open for approximately seven months.

Once the stipulated objection filing period expires, all objections received will move through the dispute resolution process, estimated to take approximately five months, in the absence of extraordinary circumstances.

An objection-filing period was built into the new GTLD Program as a way for persons to protect certain rights and interests. For example, if someone has applied for your brand or trademark, or perhaps you oppose a GTLD that targets a community in which you are involved, you can formally object to that application. Filing an objection gives you the opportunity to have your objection considered before a panel of qualified experts in the relevant subject area.

Anyone with standing may submit a formal objection on any one of four objection grounds. All objections must be filed directly with the selected Dispute Resolution Service Provider (DRSP), not with ICANN.

The first objection can be raised on the ground of “String Confusion”. For instance, if the applied for GTLD string is confusingly similar to an existing TLD or to another applied-for GTLD string, it can be objected to. If two confusingly similar TLDs are delegated this could cause user confusion. Such objections can be filed before the International Centre for Dispute Resolution as per the prescribed procedure.

The second type of objection is known as “Legal rights Objection”. This category of disputes involves cases where the applied-for GTLD string violates the legal rights of the objector. Legal rights objections can be filed with World Intellectual Property Organization (WIPO) as per the prescribed procedure.

The third category of objection pertains to “Limited Public Interest”. This category can be invoked when the applied-for GTLD string goes against generally accepted legal norms of morality and public order that are recognised under principles of international law. Anyone can file an objection; however the objection is subject to a "quick look" review designed to filter out frivolous and/or abusive objections. Such objections can be filed with the International Center of Expertise of the International Chamber of Commerce by following the prescribed procedure.

The fourth category of objections recognises the “Community Rights”. As per this category, objections can be raised if there is substantial opposition to the GTLD application from a significant portion of the community that the GTLD string is targeting. An established institution associated with a clearly defined community can file its objections with the International Center of Expertise of the International Chamber of Commerce in this regard.

ICANN has also proposed to appoint “independent objectors” who would scrutinise the applied GTLDs for possible violations of IPRs and other rights. An independent objector would be responsible for determining if a new GTLD being applied for is in the best interest of the Internet community. If he/she/it reaches a negative conclusion, he/she/it will file formal objections against a new GTLD application.

If you want to file a formal objection to a new gTLD application you will need to:

(a) Contact the appropriate dispute resolution service provider and file your objection electronically with them.

(b) File your objection in English.
   
(c) File each objection separately. If you wish to object to several applications, you must file a separate objection and pay the accompanying filing fees for each one.

For each objection filed, be sure to include:

(a) Your name and contact information as the objector.
   
(b) A statement of why you believe you meet the standing requirements.
   
(c) A description of the basis for the objection, including:
       
(i) a statement giving the grounds you are objecting on and
      
(ii) a detailed explanation of the validity of your objection and why it should be upheld.
   
(d) Copies of any documents that support your objection.

Objections are limited to 5000 words or 20 pages, which ever is less.

You must pay a filing fee in the amount set and published by the relevant dispute resolution service provider at the time you file your objection. You should refer to the appropriate provider for exact amounts. If the filing fee is not paid, the objection proceeding will be dismissed.

Within thirty days of the closing of the objections filing window, ICANN will post a Dispute Announcement and notify the DRSP to begin the objection proceedings. If you are an applicant and have received notice from a service provider that you have had an objection filed against your application, you will have 30 calendar days to file your response. If you do not respond within 30 days, you will be in default and the objector will prevail.

If your application has been objected to, you have the following options:

(a) You can work to reach a settlement with the objector. This would result in either a withdrawal of the objection or a withdrawal of your new gTLD application;
   
(b) You can file a response to the objection and enter the dispute resolution process; or
   
(c) You can withdraw your new gTLD application, in which case the objector will prevail by default and your application will not proceed.

If you fail to file a response to an objection, the objector will prevail by default.

To file a response to an objection you will need to:

(a) Contact the appropriate dispute resolution service provider and file your response(s) electronically.
   
(b) File your response(s) in English.
   
(c) File your responses separately. If you are responding to several objections you must file a separate response for each and pay the accompanying filing fee for each.

For each response filed be sure to include:

(a) Your name and contact information as the applicant.
   
(b) A point-by-point response to the claims made by the objector.
   
(c) Copies of any documents that support your response.

Responses are limited to 5000 words or 20 pages, whichever is less, excluding attachments.

You must pay a filing fee in the amount set and published by the relevant dispute resolution service provider at the time you file your response. If the filing fee is not paid, the response will be disregarded, which will result in the objector prevailing.

Perry4Law and PTLB believe that this guide would prove useful to all stakeholders.

Friday, June 29, 2012

Is Your Brand And Trademark Violated By New GTLDs?

The wait for the list of applicants for new generic top level domains (new GTLDs) has finally been over. ICANN has now published the list of applicants of new GTLDs at its websites. However, this is the first stage of the entire procedure. The legal issues of new GTLDs applications and registrations would now arise.

The new GTLDs applicants were required to ensure due diligence before applying. If they have failed to do so, their initial investment can be jeopardised. Now the brand owners and trademark holders can analyse the list issued by ICANN and see whether their rights and interests are endangered by the application made by any applicant.

The period for raising legal right objections for new gTLDs began on June 13, 2012 and it would remain open for approximately seven months (i.e., until January 2013).

After the objection filing period closes, all objections received will move through the dispute resolution process. Such dispute resolution process may take approximately five months. In exceptional circumstances, this period may extend beyond five months. 

Perry4Law suggests that the stakeholders must analyse the pros and cons of this situation so that their rights and interests are adequately and timely safeguarded.

Saturday, May 5, 2012

Registration Of Collective Marks Under Trademark Law Of India

In this article Perry4Law and Perry4Law Techno Legal Base (PTLB) would discuss the procedure for the registration of collective marks under the Indian trademark law.

The Trade Marls Act 1999 has made special provisions for the registration of collective marks.  “Collective mark” is defined to mean a trade mark distinguishing the goods or services of members of an association of persons (not being a partnership within the meaning of Indian Partnership Act, 1932) which is the proprietor of the mark from those of others”.

Thus, to be registrable, the collective mark must be capable of being represented graphically and meet other requirements as are applicable to registration of trade marks in India in general.

While examining such application, the Examiner must keep in mind that:

(1) The collective mark is owned by an association of persons not being a partnership.

(2) The collective marks belong to a group and its use thereof is reserved for members of the group.

(3) The association may not use itself the collective mark but it ensures compliance of certain quality standards by its members who may use the collective mark.

(4) The primary function of a collective mark is to indicate a trade connection with the association or organisation who is the proprietor of the mark.

An application for registration as collective mark should be made on form TM-3. Wherever appropriate form TM-66, 64 or TM-67 will be used. The draft regulations governing the use of the collective mark is to be submitted with the application on form TM-49. It shall include –

(a) The name and object of association.

(b) The persons authorised to use the mark and the nature of control the applicant would exercise over the use.

(c) The condition of membership of association.

(d) Conditions of use of the mark.

(e) Sanctions against misuse.

(f) Procedure for dealing with appeals against the use of collective marks.

The Rules 127 to 133 of the Trade Marks Rules, 2002 make special provision in this context. It is expressly provided that provisions of the Trade Marks Act will apply to collective marks subject to the special provisions contained in Chapter 8. Accordingly, the examination of an application for registration of collective mark will also be subject to the same standards as applicable to registration of trade mark in general subject to the additional requirements to scrutinise the draft regulations governing use of the collective mark and statement of case filed under rule 129.

In the case of acceptance of the application subject to conditions or limitations the provisions of rule 38(4), 39, 40, 41 and 42 will be applicable.

Convention Application Under Indian Trademark Law

Perry4Law and Perry4Law Techno Legal Base (PTLB) have already discussed the required documents and formalities for trademark registration in India. The trademark law of India is incorporated in the Trade Marks Act 1999 and the procedure for registration of trademarks in India is governed by the same.

Once a proper trademark application is filed, the examination of trademark application under the trademark law of India begins.

In some cases, the application may contain a declaration claiming priority as per the Paris Convention. In such cases, it should contain the information pertaining to date of the earlier application, number of earlier application, state or country in which the earlier application was filed or where the earlier application is regional or an international application, the office with which it was filed and the country or countries for which it was filed.

If the number of the earlier application is not known to the applicant at the time of filing of the application the applicant may furnish the same within two months from the date of filing of application in India. The Registrar may extend the period if he is satisfied that due to the circumstances beyond control, the applicant could not furnish the particulars within the initial two months period, on a request made on Form TM-56 for the purpose.

Under section 154(2) of the Trade marks Act 1999 of India, where a person has made an application for the registration of the trade mark in the convention country and he makes an application for registration of the trade mark in India within six months after the date on which the application was made in the convention country, the trade mark shall, if registered, under the Trade Marks Act, 1999 be registered as of the date on which the application was made in the convention country. That date shall be deemed to be the date of registration for the purpose of the Act. Under subsection (3) where applications are made in two or more convention countries, the period of six months will be reckoned from the date on which the earlier or earliest of those applications was made.

The above period of six months which is the statutory requirement is to be strictly complied with for giving the benefit of priority date. Where the application is not filed within six months only the actual date of filing in India will be given and no priority date will be admissible.

Where a right to priority is claimed by reason of an application for registration of a trade mark duly filed in a convention country under section 154, a certificate by the Registry or competent authority of that trade marks office shall be included in an application for registration under sub-rule (3), (4), (6), (7)(b), 8(b), (11), (17(b) or (18)(b) of rule 25, as the case may be, and it shall include the particulars of the mark, the country or countries and the date or dates of filing of application and such other relevant particulars as may be required by the Registrar.

Unless such certificate has been filed at the time of the filing of the application for registration, there shall be filed, within two months of the filing of such application certifying or verifying to the satisfaction of the Registrar, the date of the filing of the application, the country or countries, the representation of the mark, and the goods or services covered by the application.

Where a single application under sub-section (2) of section 18 is filed from a convention country for one or more classes of goods or services, the applicants shall establish a sufficient ground to the satisfaction of the Registrar for the date of filing of application in all such classes.

Examination Of Trade Mark Applications Under Indian Trademark Law

Perry4Law and Perry4Law Techno Legal Base (PTLB) have already discussed the required documents and formalities for trademark registration in India. The trademark law of India is incorporated in the Trade Marks Act 1999 and the procedure for registration of trademarks in India is governed by the same.

In this article Perry4Law and PTLB would discuss the process of examination of trademark applications under the Trade Marks act 1999. Once the data entry (including scanning and Vienna codification of non-text trademarks) of application for registration of a trademark is complete the same is sent for examination.

The Examination of Trade Mark application by the Examiner must ensure that the applicant has complied with:

(1) Filing requirements governed by procedure prescribed under the Trade Marks Act and Trade Marks Rules.

(2) Substantive requirements for registrability of the mark

The Examiner must pay a special attention to ascertain:

(1) Whether the application has been filed in the manner as prescribed in the Trade Marks Rules 2002.

(2) Whether any same/similar mark in respect of same/similar goods/services is there on record

(3) Whether the trademark applied for registration can be accepted for registration under the Trade Marks Act 1999

(4) Whether any restriction, condition or limitation is required to be imposed.

The Examiner doing the examination work will give a consolidated “Examination Report” mentioning the objections (if any) as to the acceptance of application for registration; or as the case may be, forward a proposal to accept the application with or without any restriction, condition or limitation on the use of trademark.

A computer generated “Search Report” short listing conflicting marks on record will be attached with the Examination Report. The examiner will mention all existing deficiencies in the application and will raise all applicable objections to the acceptance of application for registration of trademark. The applicant or its authorised agent is required to respond to the examiner’s objection(s) within a period of one month from the date of receipt of Examination Report. The reply to the Examination Report together with evidence of use of the trademark in India and other documents attached with the reply will be duly considered. In case the objections cannot be waived an opportunity of a Hearing will be given to the applicant. The application will thereafter be accepted with or without any restriction, condition or limitation on the use of trademark; or as the case may be, it will be refused for registration. The decision as to acceptance or refusal of the application will be communicated to the applicant. The accepted application will thereafter be advertised in the Trade Mark Journal.

The examination of trade marks for acceptability under the Trade Marks Act 1999 must be by reference to the provisions of that Act and Rules framed there under taking into account the established practice of the Registry and the law as laid down or endorsed by the Intellectual Property Appellate Board (IPAB) and by Courts in India which is binding on the Registrar.

Section 91 of the Trade Marks Act, provides for an appeal against an order or decision of the Registrar to the Intellectual Property Appellate Board (IPAB). In some cases, parties may also invoke the writ jurisdiction of High Courts. It is obvious, therefore, that whenever the Registrar or any officer acting for him passes an order as a tribunal under the Act it should be a reasoned and a speaking order. [See Rule 40 of Trade Marks Rules, 2002].

Procedure For Registration Of Trademarks In India

In this article Perry4Law and Perry4Law Techno Legal Base (PTLB) would discuss the required documents and formalities for trademark registration in India. The trademark law of India is incorporated in the Trade Marks Act 1999.

Applications for registration of trade marks are to be filed in the prescribed manner. Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark.

An application to the Registrar for the registration of a trade mark shall be signed by the applicant or his agent. An application to register a trade mark for a specification of goods or services included in any one class shall be made in Form TM-1. An application to register a trade mark for a specification of goods or services included in any one class from a convention country shall be made in Form TM-2. A single application for the registration of a trade mark for different classes of goods or services from convention country shall be made in Form TM-52. An application to register a textile trade mark (other than a collective mark or a certification trade mark) consisting exclusively of numerals or letters or any combination thereof for a specification of goods included in one item of the Fifth Schedule shall be made in Form TM-22. An application to register of a textile trade mark other than a collective mark or a certification trade mark) consisting exclusively of numerals or letters or any combination thereof for a specification of goods included in one item of the Fifth Schedule from a convention country under shall be made in form TM-45.

An application to register a collective trade mark for a specification of goods or services in any one class shall be made in Form TM-3. An application to register a collective trade mark for a specification of goods or services in any one class from a convention country shall be made in Form Tm-64. An application under section 71 to register a certification trade mark for a specification of goods or services included in any one class shall be made in form TM-4. An application under section 71 to register a certification trade mark for a specification of goods or services in any one class from a convention country shall be made in Form TM-65. A single application for the registration of a trade mark for different classes of goods or services shall be made in Form TM-51.

An application to register a series trade marks for a specification of goods or services included in a class or for different classes shall be made in form TM-8. An application to register a series trade mark for a specification of goods or services included in a class or different classes from a convention country shall be made in Form TM-37.

An application for the registration of a trade mark for goods or services shall -

(a) Explain with sufficient precision, a description by words, of the trade mark if necessary, to determine the right of the application;

(b) Be able to depict the graphical representation of the trade mark;

(c) Be considered as a three dimensional trade mark only if the application contains a statement to that effect;

(d) Be considered as a trade mark consisting of a combination of colours only if the application contains a statement to that effect;

An amendment to divide an application under proviso to section 22 shall be made in Form TM-53. An application, not being a series trade mark shall be in respect of one trade mark only for as many class or classes of goods or services as may be made. In the case of an application for registration in respect of all the goods or services included in a class or of a large variety of goods or services in a class, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the mark which the applicant has made or intends to make if and when it is registered.

The specification of goods or services shall not ordinarily exceed five hundred characters for each class. An excess space fee as prescribed in the First Schedule is payable with each application in Form TM-61.

A single application for the registration of a collective mark -

(a) In different classes shall be made in Form TM-66;

(b) In different classes from a convention country shall be made in Form TM-67.

A single application for the registration of certification trade mark –

(a) In different classes shall be made in form TM-68;

(b) In different classes from a convention country shall be made in Form TM-69.

Where an applicant files a single application for more classes than one and the Registrar determines that the goods or services applied for fall in class or classes in addition to those applied for, the applicant may restrict the specification of goods or services to the class applied for or amend the application to add additional class or classes on payment of the appropriate class fee and the divisional fee. The new class created through a division retains the benefit of the original filing date or in the case of an application from a convention country the convention application date provided the claim was otherwise properly asserted in the initial application.

An application to register a trade mark shall, unless the trade mark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of the goods or services mentioned in the application. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used.
Every application for registration of a trade mark shall, except as hereinafter provided, be made in triplicate and shall be accompanied by five additional representations of the mark. The representations of the mark on the application and each of its copies and the additional representations shall correspond exactly with one another. The additional representations shall in all cases be noted with the specification and class or classes of goods or services for which registration is sought, the name and address of the applicant, together with the name and address of his agent, if any, the period of use, if any, and such other particulars as may from time to time be required by the Registrar and shall be signed by the applicant or his agent.

At any time before the publication of the application in the journal, the applicant may request in Form TM-53 for the division of the application into separate application or applications, as the case may be, in respect of one or more marks in that series and the Registrar shall, if he is satisfied with the division requested conforms with sub-section (3) of section 15, divide the application or applications accordingly.

Where the name or description of any goods or services appears on a trade mark, the Registrar may refuse to register such mark in respect of any goods or services other than the goods or services so named or described. Where the name or description of any goods or services appear on a trade mark, which name or description in use varies, the Registrar may permit the registration of the mark for those and other goods or services on the applicant giving an undertaking that the name or description will be varied when the trade mark is used upon goods or services covered by the specification other than the named or described goods or services. The undertaking so given shall be included in the advertisement of the application in the Journal under Section 20.

A trade mark application is to be filed at the “appropriate office” of the Registry within whose territorial limits, the principal place of business in India of the applicant is situate. In the case of joint applicants, the principal place of business in India of the applicant will be that of the person whose name is first mentioned as having a place of business. If the applicant has no principal place of business in India, he should file the application at that office within whose territorial jurisdiction, the address for service in India given by him is located. No change in the principal place of business in India or in the address for service in India shall affect the jurisdiction of the appropriate office once entered.

Where the trade mark contains a word or words in scripts other than Hindi or English, a transliteration and translation of each word in English or in Hindi should be given indicating the language to which the word belongs, at the time of filing the application to facilitate completion of data entry at the initial stage itself. An endorsement must be entered on the Register for all trade marks containing words in a language other than English/Hindi and/or characters other than Roman/Devnagiri characters Where an applicant has given the translation/transliteration, an endorsement will be entered on the system. Where no translation/transliteration has been provided, the Examiner should request one and enter the appropriate endorsement on the system when the information has been received. Where Chinese or Japanese characters appear in the trade mark the applicant should be requested to provide their transliteration in the Pinyin system in the case of Chinese characters and the Hepburn system in the case of Japanese characters as per UK practice.

Section 15 (3) makes provision for registration of trade mark as series in respect of the same or similar goods /services where the marks, while resembling each other in the material particulars thereof and yet differ in respect of -

(1) Statement of goods or services in relation to which they are respectively used or proposed to be used; or

(2) Statement of number, price, quality or names of places; or

(3) Other matter of a non-distinctive character which does not substantially affect the identity of the trade mark; or

(4) Colour

It is an essential condition of registration that the differences in the “series marks” should be only in respect of non-distinctive matters, such as size, (8 ½” size), description of the goods, (bleached, khaki shades etc), price, quality etc. To qualify for registration as series, the mark should resemble each other in the material particulars but differ only in matters of non-distinctive characters which do not substantially affect or alter the identity of the mark. The test is NOT simply whether the marks in the series would be regarded as confusingly similar to each other if used by unrelated undertakings. Any variation in the non-distinctive features in the marks must leave the visual, aural and conceptual identity of each of the trade marks substantially the same.

Further, it is not enough for marks to share the same conceptual identity if there are substantial differences in the visual or aural identities of the marks. The matter must be assessed by reference to the likely reaction to the marks of an average consumer of the goods/services in question.

The Trademarks Law Of India

In this article Perry4Law and Perry4Law Techno Legal Base (PTLB) would discuss the applicable trademark law of India.

The Trade Marks Act, 1999 (TMA 1999) and the corresponding Trade Marks Rules, 2002 (TMR 2002) regulate the legal framework pertaining to Trade Marks in India. The Preamble to the TMA 1999 explains the purpose of the Act to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks.

Some of the salient features of the TMA 1999 have been outlined in the Statement of Objects and Reasons annexed to the Trade Marks Bill. These are:

(a) Providing for registration of trade mark for services, in addition to goods;

(b) Registration of trade marks, which are imitation of well known trade marks, not to be permitted, besides enlarging the grounds for refusal of registration mentioned in clauses 9 and 11. Consequently, the provisions of defensive registration of trade marks are proposed to be omitted;

(c) Amplifications of factors to be considered for defining a well known mark;

(d) Doing away with the system of maintaining registration of trade marks in Part A and Part B with different legal rights, and to provide only a single register with simplified procedure for registration and with equal rights;

(e) Simplifying the procedure for registration of registered user and enlarging the scope of permitted use;

(f) Providing enhanced punishment for the offences relating to trade marks on par with the Copyright Act, 1957 to prevent the sale of spurious goods;

(g) Providing an Appellate Board for speedy disposal of appeals and rectification applications which at present lie before High Courts;

(h) Transferring the final authority relating to registration of certification trade marks to the Registrar instead of the Central Government;

(i) Providing enhanced punishment for the offences relating to trade marks on par with the present Copyright Act, 1957, to prevent the sale of spurious goods;

(j) Prohibiting use of someone else’s trade marks as part of corporate names, or name of business concern;

(k) Extension of application of convention country to include countries which are members of Group or union of countries and Inter-Governmental Organisations;

(l) Incorporating other provisions, like amending the definition of “trade marks; provisions for filing a single application for registration in more than one class, increasing the period of registration and renewal from 7 to 10 years; making trade mark offences cognizable, enlarging the jurisdiction of Courts to bring the law in this respect on par with the copyright law, amplifying the powers of the Court to grant ex parte injunction in certain cases and other related amendments to simplify and streamline the trade mark law and procedure.

The TMA 1999 is in conformity with two major International Treaties on the subject, namely The Paris Convention for Protection of Industrial Property and TRIPS Agreement to both of which India is a signatory.

All the provisions of the Trade Marks Act, 1999 and the Trade Marks Rules came into effect w.e.f. 15.9.2003 as per notification No. S.O. 1048(E) dated 15.9.2003.

Friday, May 4, 2012

Trademark Registration In India: Documents And Formalities

The consolidated FDI policy of India 2012 by DIPP has brought many significant changes in foreign direct investment (FDI) regime of India. Many companies would be investing in India to strengthen their presence in India.

This would also necessitate protecting their intellectual property rights in India. There are many law firms that are providing world class intellectual property rights services in India.

At Perry4Law and Perry4Law Techno Legal Base (PTLB) we believe that besides protection of intellectual property rights (IPRs), safeguarding online reputation management, online brand protection, domain name protection, etc are also required to be considered seriously.

These issues are also closely related to trademark registration in India. For instance, domain name protection in India is still vindicated under the Indian Trademark Act, 1999. Similarly, brands and online reputation are also related to Trademark in India.

There are certain documents and formalities required for trademark registration in India. If these documents are not filed properly or the formalities are not duly fulfilled, the trademark application can be rejected. So it is of utmost importance that a trademark application must be properly filed by competent lawyers.

Every company that wishes to commercially operate in India must make its trademark policy and strategy very robust and effective. Inadequate trademark protection can result in exploitation of the same. Similarly, if a company uses the trademark of another individual or company, it can be prosecuted in India.

Any person desiring to register a trademark must file an application in the prescribed manner and by paying the requisite fee. The said application, after filing, is examined by the Registrar utilising the database it manages. Depending upon the Registrar’s observations, either the application is accepted or Registrar’s objections are raised.

If the application is accepted, it would be published in the Trade Marks Journal and any person can oppose the grant of registration by filing a notice of opposition within the prescribed period. If an application is opposed, the rights of the applicants and opponents are determined in accordance with the provisions of the Trademark Act and/or the common law rights which the parties may claim. Such determination is made by the Registrar after following the due process of law, procedure and providing an opportunity of being heard to the respective parties.

Saturday, April 28, 2012

Domain Name Dispute Resolution In India

India has for long avoided enactment of laws pertaining to domain name protection. The truth is that domain name protection law in India needed to be enacted as soon as possible. Securing of domain name protection in India is presently undertaken under the Trade Marks Act, 1999.

However, the importance of domain name has increased tremendously especially after the ICANN’s new generic top level domain names (new GTLDs) registration has already begun. With new GTLDs domain names, goodwill and brands would be more closely related. There are good chances that domain name disputes would also increase in future.

Perry4Law and Perry4Law Techno Legal Base (PTLB) strongly recommend that Indian government must formulate a dedicated domain name protection law for India. We cannot drag this issue for by using parallel laws and judicial activism.

Further a domain name, new GTLDs and dispute resolution is not an easy task to manage. We need to develop techno legal expertise in India so that Indian can be a hub for resolving these disputes.

If we continue to redress domain name violations under the existing trademark law, it may be counter productive in the long run. Of course, we use alternative dispute resolution (ADR) mechanism like arbitration to resolve domain name disputes out of the court. Surprisingly, online dispute resolution (ODR) in India has still not been considered to resolve domain name disputes on large scale in India.

In particular, India must be ready to offer services for legal rights objections under ICANN's new GTLD program as legal issues of new GTLDs application, their registration and subsequent litigations would definitely surface. Legal rights objection assistance can also be taken by interested stakeholders.

The phase for independent objections and legal rights objections for ICANN’s new GTLDs would be open very soon. Presently, the application time for new GTLDs has been extended by ICANN due to a software flaw.

India is definitely not ready for these contemporary developments and it must start working in this direction as soon as possible. We must ensure that domain name dispute resolution services in India are world class in order to become a hub for domain name dispute resolution world over.

Tuesday, April 24, 2012

DMCA Notices And US Websites And Intermediaries Response

Copyright and trademark violation is common in cyberspace. You work really hard to generate original and unique contents and unscrupulous individuals and organisations pick up the same without your consent. Either you can remain silent about such blatant copyright violation and violation of your rights or you can fight back against such unscrupulous individuals and organisations.

If such an individual or organisation belongs to India, you are better situated as he/she/it can be hauled as per Indian Copyright Act, 1957 and other laws. However, if such an individual or organisation is located outside India, that make the whole equation complicated. In such cases you have to invoke laws of foreign jurisdictions.

In United States (US), the Digital Millennium Copyright Act (DMCA) and Online Copyright Infringement Liability Limitation Act (OCILLA) primarily cover copyright issues of cyberspace. They confer a “safe harbour” upon US online service providers (OSPs) and intermediaries if they exercise due diligence and remove the offending contents upon proper intimation to them. 

On similar principles, Internet intermediary liability in India has been prescribed through the cyber law of India. The Internet intermediaries in India are required to remove an offending material within 36 hours of sending of the intimation to them in this regard.

Perry4Law and Perry4Law Techno Legal Base (PTLB) have been sending DMCA notices and Intermediary notices to US and Indian websites and companies for long. Till now we have sent more than 100 successful DMCA notices to US websites. All of them have been duly complied with by US websites and companies.

In this article we are discussing about those US websites/companies that have been very supportive and cooperative regarding DMCA notices for alleged copyright violation, trademark infringement and removal of other objectionable contents. We have arranged them in alphabetic order (with no preference or priority).

These US/foreign websites/companies are:

(1) Google/Blogspot

(2) Hostgator

(3) Maars Net

(4) Posterous

(5) Singlehop

(6) Typepad

Further, we also found Facebook very cooperative while resolving a copyright violation matter with a third party.

All you have to do to get desired results is to send the DMCA notice in proper format to the most appropriate person in the best possible manner. We would cover this issue subsequently.

Saturday, April 14, 2012

ICANN’s Software Flaw Jeoparadised Entire Bidding Process Of New GTLDS

The Internet Corporation for Assigned Names and Numbers (ICANN) has recently admitted that a technical issue with the TLD application system software, or TAS, has allowed a limited number of users to view some other users’ file names and user names in certain scenarios.

TAS has been taken temporarily offline by ICANN. Further, in order to ensure all applicants have sufficient time to complete their applications during the disruption, the application period has been extended till 20-04-2012, 23:59 UTC.

Although cyber security incidents like these cannot be avoided absolutely yet keeping in mind the importance of this issue and stakes involved, ICANN should have taken the entire process more seriously.

This is just the beginning and in future many more techno legal issues could also arise. ICANN must revisit its strategy regarding new GTLDs application procedure, the scrutiny stage and finally the awarding of new GTLDs to the most deserving applicants.

Having a knowledge about rival’s bid amount and other crucial details can jeoparadise the chances of the applicant whose details were accessible to others. The confidentiality and integrity of the entire bidding system is doubtful in such circumstances.

This incidence would also affect the legal rights objection and dispute resolution process put in place by ICANN. ICANN must not only come out with a convincing explanation regarding revelation of competitor’s bids but must also ensure that the entire process of new GTLDs allotment is managed in a techno legal manner and free from irregularities and glitches.

Monday, March 12, 2012

Legal Rights Objection Assistance For New GTLDs By Perry4Law

In this article we are discussing the legal rights objection assistance for the new GTLDs applicants. The possibility of legal rights objections stage has been envisaged even by Internet Corporation for Assigned Names and Numbers that has already made arrangements in this regard.

However, this does not mean that the GTLDs applicants, brand owners, trademark owners, domain name holders, etc cannot seek alternative techno legal assistance for others. For instance, independent objections and legal rights objections can be filed by the GTLDs applicants with the assistance of others.

Internet Corporation for Assigned Names and Numbers (ICANN) has started accepting application for the registration of new generic top level domain names (GTLDs). ICANN’s new GTLDs registration is in progress and once the deadline is over, ICANN would analyse the suitability of these applications.

The applicants must make risks and benefits analysis of ICANN’s new GTLDs registrations before making an application. Further, the applicants must also undertake proper and techno legal due diligence regarding new GTLDs applications. Once that is done to the best of an applicant’s knowledge, the ball would be in ICANN’s court.

ICANN would allow filing of legal objections against applications filed for granting of new GTLDs. The legal rights objections under ICANN’s new GTLDs domain registration program could open floodgate for objections against granting of new GTLD to a particular applicant or class of applicants. Brand names, trademarks, intellectual property rights (IPRs), etc are some of the reasons that may be cited by the objector for the refusal to grant of applied GTLD.

A well prepared applicant has greater chances that his/her/its application may be granted. Similarly, a vigilant and genuine objector must make it sure that his objections succeed and the offending GTLD is not allotted to the applicant.

If you wish to analyse your case for your personal reasons or for agitating before any court, tribunal or international organisation providing arbitration or online dispute resolution (ODR) service, you may contact us to get a preliminary analysis of the same.

If you wish to get any dispute or difference resolved through our neutral(s) you may also contact us in this regard. At Perry4Law and Perry4Law Techno Legal Base (PTLB) we provide the exclusive techno legal ADR and ODR services in India and abroad. We would analyse your case from both technological and legal perspectives.

If you think that someone is trying to misappropriate your goodwill, trade name, trademark, brand name, etc, we may assist you in enforcing your rights and intellectual property rights (IPRs), either before or after the GTLDs registration time specified by ICANN expires. We would use Uniform Domain Name Dispute Resolution Policy of ICANN or such other procedure as has been “mutually agreed” between us for analysing, opinion giving and dispute resolution.

We can also help you in determining beforehand whether the potential use of the applied-for GTLD by the applicant:

(i) Takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark (“mark”), or
(ii) Unjustifiably impairs the distinctive character or the reputation of the objector’s mark or (iii) Otherwise creates an impermissible likelihood of confusion between the applied-for GTLD and the objector’s mark.

Perry4Law or its panelists will ordinarily determine the merits of the objection based solely on the parties’ pleadings, and may make reference to a range of non-exclusive consideration factors.

For an objection based on trademark rights, we would consider the following non exclusive consideration factors:

(i) Whether the applied-for GTLD is identical or similar, including in appearance, phonetic sound, or meaning, to the objector’s existing mark.
(ii) Whether the objector’s acquisition and use of rights in the mark has been bona fide.
(iii) Whether and to what extent there is recognition in the relevant sector of the public of the sign corresponding to the GTLD, as the mark of the objector, of the applicant or of a third party.
(iv) Applicant’s intent in applying for the GTLD, including whether the applicant, at the time of application for the GTLD, had knowledge of the objector’s mark, or could not have reasonably been unaware of that mark, and including whether the applicant has engaged in a pattern of conduct whereby it applied for or operates TLDs or registrations in TLDs which are identical or confusingly similar to the marks of others.
(v) Whether and to what extent the applicant has used, or has made demonstrable preparations to use, the sign corresponding to the GTLD in connection with a bona fide offering of goods or services or a bona fide provision of information in a way that does not interfere with the legitimate exercise by the objector of its mark rights.
(vi) Whether the applicant has marks or other intellectual property rights in the sign corresponding to the GTLD, and, if so, whether any acquisition of such a right in the sign, and use of the sign, has been bona fide, and whether the purported or likely use of the GTLD by the applicant is consistent with such acquisition or use.
(vii) Whether and to what extent the applicant has been commonly known by the sign corresponding to the GTLD, and if so, whether any purported or likely use of the GTLD by the applicant is consistent therewith and bona fide.
(viii) Whether the applicant’s intended use of the GTLD would create a likelihood of confusion with the objector’s mark as to the source, sponsorship, affiliation, or endorsement of the GTLD.

After closing the application window (from January 12 to March 29, 2012) and posting all applications, ICANN will announce the opening of the objection filing window. Currently, the objection filing window is anticipated to be seven months, from approximately May 1 to December 1, 2012.

Within 30 days of the close of the objection window, ICANN will publish a "Dispute Announcement" listing all administratively compliant objections. The applicants would be notified of any objections and the applicants will then have 30 days to file a response. Within 30 days of receiving a response, an expert panel would be appointed. Normally the panel will render its determination within 45 days of appointment.

Non-payment of fees by an objector during legal rights objections will result in rejection of the objection, without panel appointment. Non payment of response fees by an applicant during legal rights objections will result in the objection being deemed successful. Obviously, applicants have to defend the legal rights objections as they cannot afford to loose the applied GTLD. Perry4Law and its neutral can assist both objectors and applicants in this regard.

Perry4Law and PTLB believe that applying for and getting new GTLDs requires well planned techno legal strategy. A company or individual desiring to apply for the same need to analyse all the possible strengths and weaknesses of his application well in advance. While the strengths must be further improved special work need to be done upon the weakness of such future application. Perry4Law and PTLB wish all the best to future GTLDs applicants.

Friday, March 9, 2012

Trademark And Brand Protection Under New GTLDs Registration By ICANN

Of late trademark, goodwill and brand protection has become an essential part of corporate strategy. Individuals and organisations are exploring both legal and non legal methods to protect their trademarks, brands and goodwill. Further, information and communication technology (ICT) has raised novel online brand and reputation protection challenges across the globe, including India.

A good and effective brand enforcement policy is needed in India to safeguards the trademarks, brands and goodwill of Indian individuals and companies. This policy must adopt sound and legally sustainable methods alone to protect brands of their owners. For instance, online brand and reputation protection has got nasty in the recent times. Brand owners are using methods that are not legal and for protecting their brands they themselves are violating the laws of various jurisdictions.

A very significant event has recently taken place that may affect the brands of many stakeholders. ICANN’s new generic top level domain names (new GTLDs) registration has begun and is in full progress. It may violate the brands, trademarks, tradenames, etc of many owners in India, both intentionally and unintentionally.

However, we have no dedicated domain name protection law in India. Domain name protection in India is still provided under the trademark law of India. This is not an appropriate situation as a dedicated domain name protection law In India needed. This has become more important as the registration of new GTLDs would create more legal problems in future.

For instance, independent objector and legal rights objections for ICANN’s new GTLDs would be there. This has been done to resolve ownership disputes that may arise during the granting of new GTLDs. Although legal rights objection assistance for new GTLDs by Perry4Law would be provided yet we believe a full fledged and separate legislation for domain name and brand protection in India is urgently required.

The domain names, new GTLDs, ICANN and disputes resolutions require a focused approach on the part of Indian stakeholders in general and Indian government in particular. The sooner we understand this reality the better we would be equipped to safeguard our digital assets.