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.

ICANN’s New Generic Top-Level Domains (GTLDs) Registration In Progress

Internet Corporation for Assigned Names and Numbers (ICANN) has recently streamlined the domain name registration procedure for generic top level domain names (new GTLDs). After much discussion, ICANN approved allotment of new GTLDs. Now brand and trademark owners can register their brands and trademarks as the GTLDs.

Of course, this entire process is not a smooth one but would face many techno legal hurdles and challenges. For instance, issues like cyber squatting and domain names violations, brands violations, trademark violations, ensuring security of new GTLDs, etc would arise. Further, many unforeseen challenges that cannot be anticipated and warned against may also arise during new GTLDs registrations.

In fact, filing of a GTLD application would not be an easy task and it requires thorough planning and management. ICANN is in no mood of allowing “casual filing” and only the applicants “proving bonfide claims” would be granted the new GTLDs.

Further, subsequent to new GTLDs registrations, issues like domain names protection, brands protection, trademarks protection, cybersquatting disputes resolution, cyber law compliances, cyber security requirements, cyber due diligence, etc would also arise. Brand owners and trademark owners must prepare their “strategy” in this regard well in advance.

The process of registration of new GTLDs is in full swing. The new GTLDs application process has started from 12 January 2012 and would end on 29th March 2012. As on 12-02-2012, the applicants have 46 more days to apply for new GTLDs.

Perry4Law and Perry4Law Techno Legal Base (PTLB) recommend a prior and thorough risks and benefits analysis of applying to new GTLDs registration to ICANN. This should include techno legal analysis, new GTLDs due diligence, possible Legal Rights Objections under ICANN's New GTLD scheme, etc.

Google's AdWords And AdSense Trademark Policy And Trademark Violations

A dominant portion of Google Incorporation’s revenue is generated through online advertisements. However, online advertisement is a complicated process that requires sound dealing of both technical and legal issues.

For instance, online advertisements frequently appear on blogs and websites that steal contents of others. At times these advertisements also appear upon spam blogs and content farming blogs who openly violate copyright of others.

Of course, Internet intermediaries like Google cannot be expected to pre screen such contents or keep a close watch upon such contents. However, Internet intermediaries’ liability in India, like other places, requires companies like Google to take down offending contents once Google is sufficiently notified in this regard.

For instance, if Google fails to comply with legally sustainable Indian demands, it would amount to non exercise of cyber law due diligence in India. This would result in the denial of “safe harbour” provisions to Google. Cyber due diligence for Indian companies is now well established and companies, both foreign and Indian, must comply with the same. In this light we have to analyse the trademark violation cases arising in India.

Perry4Law and Perry4Law Techno Legal Base (PTLB) believe that Google must address trademarks violations in India more seriously. Similarly, online advertisements of Google placed on copyright violating contents further raises additions legal obligations upon Google.

Google Incorporation’s Indian strategy to counter legal disputes in India should be formulated that must cover various legal issues. Intellectual property rights (IPRs) violation issues as well as cyber law compliances must be essential part of such strategy. Internet intermediary liability and Indian safe harbour provisions must also be part of the same.

Recently a case has been filed to the competition commission of India against Google citing discriminatory trade practices related to its AdWords program. It has been alleged by the complainant that Google has abused its dominance by engaging in discriminatory and retaliatory practices relating to AdWords.

It is important to analyse Google’s AdWords and AdSense trademark policy in this regard. Google claims to understand the importance of and respect the trademarks of others. Google’s AdWords Terms and Conditions prohibit intellectual property infringement by advertisers. Advertisers are responsible for the keywords they choose to generate advertisements and the text that they choose to use in those advertisements.

Google claims that it takes allegations of trademark infringement very seriously and, as a courtesy, it investigates matters raised by trademark owners. Trademarks are territorial and apply only to certain goods or services. Therefore, different parties can own the same mark in different countries or different industries. Of course, exceptions to this rule are also there and a single person or company may have a trademark in multiple jurisdictions. If you are filing a trademark violation complaint with Google, kindly provide adequate information as to where the mark is valid and for what goods or services it has been registered.

This would help Google in processing complaint in a more effective manner. If you are providing information in a proper manner, chances are great that your trademark violation complaint would be entertained by Google.

Before making a complaint to Google, kindly keep the following in mind:

(1) The trademark owner doesn't need to be a Google AdWords advertiser in order to send a complaint.

(2) Any such investigation will only affect ads served on or by Google.

(3) Google's trademark policy does not apply to search results. Google’s investigations only apply to sponsored links. For trademark concerns about websites that appear in Google search results, the trademark owner should contact the site owner directly.

(4) In the case of an AdSense for Domains trademark complaint, an investigation will affect only the participation of the domain name in question in Google’s AdSense for Domains program.

(5) Because Google is not a third-party arbiter, it encourages trademark owners to resolve their disputes directly with the advertisers, particularly because the advertisers may have similar ads running via other advertising programs.

If you wish to file a trademark violation complaint with Google, you can file the same here. Kindly avoid sending direct mail to Google staff as you would be redirected to the form segment in such cases. It would only cost you time, money and efforts and duplication of labour. We hope stakeholders would find this work useful.

Remedies For Small Copyright Claims In United States

The costs and time of litigating a copyright or trademark violation case in a traditional court is deterrent sufficient enough to avoid the same. This is the reason that a majority of such copyright or trademark violation cases go unreported.

The Unites States Copyright office has started a public discussion and opinion gathering exercise regarding providing remedies for small copyright claims in US. The purpose of this exercise is to empower copyright holders of small claims to enforce their copyright rights effectively and adequately.

Of late, US based websites and companies are increasingly found in legal battles in US and other jurisdictions. For instance, Google and Facebook are already facing criminal trail in India. Similarly, a recent news report suggested that Wordpress should be blocked in India for not following Indian laws.

This is a clear sign that US policy towards foreign IP enforcement needs to be changed. If US websites and companies keep on ignoring Indian intellectual property (IP) laws and cyber law, draconian laws like SOPA and PIPA can be imposed upon them. Even trademark issues in the online environment are required to be tackled by US government. If these US websites and companies keep on ignoring Indian laws and if nothing works, Indian government can and should block such offending websites in India.

Many US websites and companies are not following the requirement of Digital Millennium Copyright Act (DMCA) 1998 (DMCA) that confers a “safe harbour” protection upon them. In the absence of meeting the DMCA requirements, these websites and companies cannot claim immunity from civil and criminal proceedings.

Perry4Law and Perry4Law Techno Legal Base (PTLB) have provided their suggestions to the US Copyright Office regarding remedies for small copyright claims in US. These suggestions recommended adequate compliance with DMCA requirements by US websites and companies, sufficient compliance with DMCA notice conditions, appointment of DMCA agents, registration of DMCA agents with US Copyright Office, etc.

Further, Perry4Law and PTLB have also recommended scrutinizing the role of online advertisement companies that provide their advertisements upon copyright infringing materials. Another suggestion pertains to analysing the feasibility of demand of companies like Google to file a court case to continue to remove copyright offending materials by it upon its platforms and advertisement programs.

We hope the US Copyright Office would find these suggestions useful and would incorporate the same in any new policy, guideline, rules or legislations intending to protect then interests of small copyright and trademark claims makers and their owners.

US OSPs Are Imposing SOPA And PIPA Like Laws Upon Themselves

The tussle between intellectual property (IP) owners and online service providers (OSPs) in US is a continuous one. The IP owners are always looking forward for more stringent online IP protection laws whereas OSPs are more anxious to have a level playing field with no unreasonable liabilities.

Laws like Digital Millennium Copyright Act (DMCA) 1998 were enacted to maintain a balance between these conflicting interests. Online Copyright Infringement Liability Limitation Act (OCILLA) was also passed as a part of the 1998 DMCA. In fact, new laws like Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011 (PIPA) and the "Stop Online Piracy Act (SOPA) have also been proposed.

Obviously, both SOPA and PIPA would have far reaching consequences for OSPs in US. Those supporting laws like SOPA and PIPA believe that the DMCA doesn't work against websites that just ignore the requests. This is a truth as we also have been facing such problems from US websites operators who are openly and repeatedly violating our copyright.

Surprisingly, a majority of such US sites are not entitled to “safe harbour protection” at all as they themselves are not complying with the requirements of the DMCA. They do not understand that they are engaging in serious criminal offences by refusing to take down copyright violating posts, especially once the matter has been brought to their knowledge and they are not in compliance with DMCA requirements.

Naturally, US need to change its policy towards foreign IPRs violations. Either US must implement DMCA in a manner that prevents copyright violations of foreign nationals and organisations or it must devise some other method for foreign IP enforcements. Initially it seemed US has decided to adopt the latter approach by proposing laws like SOPA and PIPA but now it appears to be a national IP protection mechanism of US citizens and corporations and not foreign IP holders. Other countries can also follow this option and this situation has been imposed by US OSPs upon themselves as they are flouting copyright laws across the world with great disregard.

According to proposed laws, foreign websites that are indulging in unethical behaviours like cyber crimes, intellectual property rights (IPRs) violations, etc can be forced to be taken down or blocked in US by US government as the US webhost company would be aiding criminal activities if it refuses to remove copyright violating or offending posts. However, as per the proposed laws, US would not take down domestic websites. This seems to be the real problem and India must analyse this situation from its own perspective and interests.

The foreign websites may be hosted at a server that resides in a foreign territory hence such websites cannot be taken down and blocking of such foreign websites in US remains the only option. There are many US sites that are hosted upon US servers and they openly violate copyrights of others, including India. Can India take down such sites? Obviously India cannot do so and blocking of such websites in India seems to be only other option. By not taking down copyright violating materials of foreign jurisdictions, US OSPs are inviting big troubles and draconian laws for themselves. Of course, Google seems to have a good system at place that forces such unscrupulous online advertisement revenue generators to comply with laws.

However, a question arises what should India do to protect copyright of its citizens and Indian organisations when the DMCA system of US collapses or OSPs do not comply with the same? Here are some options in this regard:

(1) Blocking of copyright violating websites in India by Indian government or its agencies may be the first method .This seems to be a actions worst than DNS redirection but if the attitude of US OSPs do not change, this may be the preferred option in India and other countries. However, blocking of IP violating websites/platforms is definitely better than using distributed denial of service attacks (DDOS) to take down the offending websites/OSPs platform or using DNS cache poisoning attacks to manipulate DNS services.

(2) Blocking of offending websites with the help of judicial orders. This may be a good option provided blocking of offending websites is done in a reasonable manner.

(3) Mutual protection mechanisms at the government department’s level between US and India. This seems to be the best option.

Perry4Law and Perry4Law Techno Legal Base (PTLB) suggest use of a “prima facie violation test” using an “informal communication method”. A majority of OSPs in US are not aware of the requirements of DMCA still they insist upon filing of a DMCA complaint. They do not realise that they are not fulfilling the prerequisites of “safe harbour protection” at all and insisting upon filing a DMCA complaint to remove clear copyright violating contents would not save them from various civil, criminal and financial sanctions.

Under the “prima facie violation test”, the copyright owner or his agent/authorised complainant need not to file a DMCA complaint and a written complaint through e-mail should be sufficient. All that is required is providing of copyright violating links and links of copyrighted materials. This is also sufficient otherwise as well because as per DMCA an OSP that is not complying with the safe harbour requirements is not entitled to its protection and an e-mail mentioning copyright violation is sufficient to impose various liabilities upon it.

We hope US would consider these suggestions of Perry4Law and PTLB while formulating any new legislation or policy for enforcement of foreign IP rights.

Legal Issues Of Entertainment And Media Industry In India

Media and entertainment industry of India is heading towards a big growth rate. Entertainment and media industry growth and challenges in India are also well known. Legal frameworks in this regard are in the process of improvement and modification in India.

Legal issues of media and entertainment industry of India are too diverse and wide to be discussed in a single article. This piece is covering some of the basic level legal issues of media and entertainment industry of India.

Indian media and entertainment industry may face the legal challenges of Intellectual Property rights (IPRs) laws and cyber law of India. IPRs laws like copyright, trademark, etc may be frequently violated and occasionally invoked to redress IPRs violations of media and entertainment industry in India. Similarly, online IPRs issues like domain name disputes may also be agitated in the future. Similarly, media and entertainment industry must keep in mind the mandates like “cyber due diligence” and other provisions of Information Technology Act, 2000.

Media and entertainment industry will also face technological challenges in future. For instance, the issues pertaining to digital preservation of entertainment industry products may assume significance in future.

Dispute resolution of media and entertainment industry is of paramount importance in India. With the growth of media and entertainment industry in India there are also increasing cases of disputes as well. A majority of these disputes pertain to intellectual property rights (IPRs) issues.

Disputes prevention and resolutions in the film and media industry of India is still evolving. We have to device methods like Alternative Dispute Resolution (ADR) and Online Dispute Resolution (ODR) in this regard.

Surprisingly, Asian Film and Media Industry are not considering utilising the Services of WIPO in this regard. Asian companies prefer to utilise tradition litigations methods instead of alternative dispute resolution (ADR) or online dispute resolution (ODR).

Perry4Law Techno Legal Base (PTLB) has opened a techno legal ODR platform where ADR and ODR is used for resolving all sorts of commercial and civil disputes that can be resolved using ADR and ODR. PTLB would cover this issue subsequently in its other posts.