An insight into the Trademarks Law in India

1.What is a trademark?

A trademark (popularly known as brand name) in layman’s language is a visual symbol which may be a word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking.

2.Is ownership of a trademark in India determined on a first- to- file or first-to-use basis?

Ownership of trademark in India is determined by first to use basis. Unlike the law on Patents or Designs the law of Trademark in India mandates the first-to-use rule over the first-to-file rule.

3. What are the legal requirements to register a trademark under the Indian Trademark’s Law:

In order to register a trademark the Indian Law stipulates that:

The selected mark should be capable of being represented graphically (that is in the paper form).
It should be capable of distinguishing the goods or services of one undertaking from those of others.

It should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person.

4. Under which authority does Law relating to Trademarks fall in India?

The Controller General of Patents, Designs and Trademarks is the relevant trade mark authority, overseeing the functions of the ofﬁces of the Trade Marks Registry located in Ahmedabad, Chennai, Delhi, Kolkata and Mumbai.

5. What is the legislation currently in force governing Trade Marks in India?

The law relating to Trademarks in India are covered under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017.

6. How to select a good trademark

According to the definition of a trademark, a mark is registrable if it is capable of being represented graphically and of distinguishing the goods or services of one party from those of another. This can include the shape of goods, their packaging and a colour or combination of colours. If it is a word it should be easy to speak, spell and remember. The best trademarks are invented words or coined words or unique geometrical designs. Please avoid selection of a geographical name, common personal name or surname. No one can have monopoly right on it. Avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super etc.

It is always advisable to conduct a market survey/ trademark search to ascertain if same similar mark is being used in the market.

7.What is the function of a trademark?

A trademark performs four functions:

It identifies the goods/ or services and its origin.
It guarantees its unchanged quality
It markets/ advertises the goods and services with respect of which it is being/ proposed to being used.
It creates a brand value and good will in the mark.

8. Who can apply for a trademark and how?

Any person, claiming to be the proprietor of a trademark used or proposed to be used by him, may apply in writing in prescribed manner for registration of a trademark with the trademark office under whose jurisdiction the principle place of the applicant’s business falls. However, if the principle place of business is outside India, the application should be filed with the trademark office under whose jurisdiction the office of the applicant’s agent or lawyer falls.

9.What are the different types of trademarks that may be registered in India?

Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark.
An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.
Letters or numerals or any combination thereof.
The right to proprietorship of a trademark may be acquired by either registration under the Act or by use in relation to particular goods or service.
Devices, including fancy devices or symbols
Monograms
Combination of colors or even a single color in combination with a word or device
Shape of goods or their packaging
Marks constituting a 3- dimensional sign.
Sound marks when represented in conventional notation or described in words by being graphically represented.

10.What is Trademark Licensing in India?

Trademark licensing refers to the mode of transfer of rights wherein the actual proprietary rights in the trademark vests with the trademark owner and only few stipulated rights to use the trademark is given to a third party for a mutually agreed period of time.

11. How is priority claimed in a Trademark?

Indian law provides a prescribed form for claiming priority. An application with a claim to priority must be ﬁled in India within six months from the date of ﬁling the basic priority application. Such an application should include a statement indicating the complete ﬁling details of the basic priority application. A certiﬁed copy of the priority document should be ﬁled along with the application within two months from the date of ﬁling the Indian application. If the priority document is not in English, it should be accompanied by a veriﬁed English translation.

12. Are any special rights and protection afforded to owners of well- known and famous marks?

The trademark law accords extraordinary protection to trademarks that are well known and safeguards them from infringements or passing off. The Trademarks Registry recognises well- known trademarks in India on the basis of international, national and cross- border reputation. The Trademarks Act, 1999 protects well- known trademarks in two ways, first by an action against the registration of similar mark, and second by an action against the misuse of the well- known mark.

13. Does India recognise collective and certification marks; if yes, under what conditions are they registrable?

Yes, India recognises Collective and Certification marks.

COLLECTIVE MARKS: The Trademarks Act makes special provisions for the registration of collective marks. A ‘collective mark’ is defined as a trademark that distinguishes the goods or services of members of an association of persons (not a partnership within the meaning of Partnership Act 1932) which owns the mark from the goods or services of other parties. Thus to be registrable, the collective mark must be capable of being represented graphically and must meet other general requirements applicable to the registration of trademarks in India.

When examining an application, the examiner must consider whether:

The collective mark is owned by an Association of persons that is not a partnership;
The collective mark belongs to a group and its use is reserved for members of the group;
The association itself cannot use the collective mark; but it ensures compliance with certain quality standards by its members who may use the collective mark; and
The primary function of the collective mark is to indicate a trade connection with the association or organisation which owns the mark.

CERTIFICATION MARKS: A certification trademark is a mark which represents certain qualities, characteristics or standards with which the goods or services bearing the mark must comply. A well- known example of a certification mark is the WOOLMARK, which certifies that the goods on which the mark is used are made of 100% woll. A certification mark can be used by any party which complies with the standards attached to the certification mark. For a manufacturer of woollen sweaters to use the WOOLMARK on its products, the owner or a manufacturer must obtain certification from the relevant certification body, Australian Wool Innovation Limited, which owns the WOOLMARK certification trademark. ISI mark is a certification mark employed on industrial products in India by the Bureau of Indian Standards. “India Organic” will be granted on the basis of compliance with the National Standards for Organic Production (NSOP). AGMARK is a certification mark employed on agricultural products in India, assuring that they conform to a set of standards approved by the Directorate of Marketing and Inspection, an agency of the Government of India. Presence of certification mark known as Standard Mark on a product is an assurance of conformity to certain specifications.

14. On what grounds will a mark be refused registration i.e. absolute and relative grounds of refusal?

Absolute grounds of refusal u/s 9 of the Act.

the trade mark is devoid of any distinctive character, or consists of marks or indications which may serve in trade to designate the kind, quality, intended purpose or other characteristics of the goods or services, or consists of indications which are customary in the current language;
the trade mark is of such a nature as to deceive the public or cause confusion, or contains any matter likely to hurt the religious susceptibilities of the citizens of India, or scandalous or obscene matter.
The Trademark consists of the shape of goods which results from the nature of the goods themselves; and
The trademark is identical to any national symbol, flag etc.

However, a trademark which may initially be refused on absolute grounds can be registered if it acquires a distinctive character or secondary significance as a result of extensive and continuous use.

Relative grounds: Section 11 of the Trademarks Act provides the following for refusal of a trademark on relative grounds of refusal to register a mark:

A mark cannot be registered if there is a likelihood of confusion due to:
Its identity with an earlier mark for similar goods or services; or
Its similarity to an earlier mark for identical or similar goods or services.
A mark cannot be registered if it is identical or similar to an earlier trademark and is to be registered by a different owner for goods or services which are different from those for which the earlier mark is registered if the earlier mark is a well- known mark in India.
A mark cannot be registered if its use in India is liable to be prevented by any law.

15. What is the right of appeal from a decision of refusal of registration from the Intellectual Property Ofﬁce?

An appeal after any adverse decision of the Registrar may be ﬁled before the Intellectual Property Appellate Board.

a. What is the route of appeal?

The route of appeal is as follows:

from the Registrar of Trade Marks to the Intellectual Property Appellate Board
from the Intellectual Property Appellate Board to the High Court by way of a writ petition; and
from the High Court to the Division Bench of the High Court and from the Division Bench to the Supreme Court if there are questions involving substantive issues of law.

b. Are there ways to overcome a relative grounds objection?

Yes, by establishing that the rival marks, read as a whole, are different and distinct from each other; or by establishing prior use of the mark in question; or by establishing that the mark in question is not likely to cause confusion or deception in the course of trade or amongst the members of the trade and public, and that there is no likelihood of confusion vis-à-vis the conflicting mark. In the case that the rival marks and the goods to which they are applied are similar or identical, honest concurrent use may be a good defence.

c. What is the right of appeal from a decision of refusal of registration from the Intellectual Property Ofﬁce?

A decision of refusal of registration from the Intellectual Property Ofﬁce (Trade Marks Registry) should be appealed to the Intellectual Property Appellate Board. The decision may be appealed in its entirety, or in part.

16. Opposition

a. On what grounds can a trade mark be opposed?

A trade mark application can be opposed on relative as well as absolute grounds of refusal.

b. Who can oppose the registration of a trade mark in your jurisdiction?

Any person who is likely to be affected by the grant of registration of the impugned mark may oppose the registration of a trade mark.

c. Procedure for opposition

The opponents are required to ﬁle a Notice of Opposition, detailing the grounds on which the impugned mark is being opposed, within a period of four months from the date on which the mark in question is advertised in the Trade Marks
The Notice of Opposition is then served on the applicants by the Registrar
On receipt of the Notice of Oppositon the applicant is required to file counter statement within a period of two months from the date of receipt of notice of opposition. Failure to ﬁle a Counter Statement will result in abandonment of the The Counter Statement is then served on the opponents by the Registrar.
Within a deadline of two months from the date of receiving the Counter Statement, the opponents are required to ﬁle their evidence in support of the opposition at the Registry and also forward a copy thereof to the applicants. In the case that the opponents do not ﬁle their evidence within time, or do not inform the applicant and the Registrar that they do not wish to ﬁle evidence but wish to rely on the facts stated in the notice of opposition, the opposition is deemed to have been
Within a deadline of two months from the date of receiving the evidence in support of the opposition, the applicants are required to ﬁle their evidence in support of the application and also forward a copy thereof to the opponents. In case the applicants do not ﬁle evidence within time, or do not inform the opponents and the Registrar that they do not wish to ﬁle evidence but wish to rely on the facts stated in the Counter Statement, the application is deemed to have been abandoned.
Within a deadline of one month from the date of receiving the evidence in support of the application, the opponents are required to ﬁle evidence in reply and also forward a copy thereof to the
Thereafter, the Registrar will appoint a hearing on merits and pass appropriate
All the timelines mentioned above are strict and cannot be modified.

17. Registration

a. What happens when a trade mark is granted registration?

Statutory rights are conferred on the proprietor of the trade mark. The certiﬁcate is automatically sent to the proprietor at the address for service indicated on the application form. The Registrar has recently done away with issuing paper certiﬁcates. The certiﬁcates are now forwarded through email.

b. From which date following application do an applicant’s trade mark rights commence?

As soon as the mark is registered, the date of ﬁling is considered the “date of registration”. The right to sue for infringement only commences on the date of registration. However, if a mark is already in use in commerce in India, the proprietor will have a common law remedy of “passing off”.

c. What is the term of a trade mark?

A trade mark is valid for a period of 10 years. Registration may be renewed before the expiry of 10 years for a further period of ten years and so on. The period of 10 years is calculated from the date of ﬁling or the date of priority, as the case may be.

d. How is a trade mark renewed?

A trade mark is renewed by ﬁling an application for the renewal of the trade mark accompanied by a fee of INR 10,000 (approximately USD 145).

18. Registrable Transactions

a. Assignment of Trademark

Transfer of ownership or any other right over a Trademark to any other person or entity is known as Trademark Assignment. An assignment of trademark can happen with or without the goodwill of the business either in respect of all goods and services or a part thereof. Partial assignments or assignments covering specific territories of the Country are also possible. A trademark is usually assigned by the execution of an agreement between the parties known as the Trademark Assignment Agreement. An individual can register a trade mark or any assignment in respect thereof. The assignment is recorded by ﬁling an application on a prescribed form along with the prescribed fee. The application has to be accompanied by an original deed of assignment or a certified or notarized copy thereof.

Although assignment is an agreement between two or more parties; there are certain cases prescribed wherein the restriction to the assignment is provided:

The assignment creates exclusive rights for more than one person with respect to the same goods or services.
If the assigned marks are used simultaneously by different individuals in different parts of the country then the assignment is not permitted as it would deceive or cause confusion.

Types of trademark assignments in India

Complete Assignment: In this case, all the rights that are vested in the registered trademark are assigned to a third party. The assignee then enjoys all the rights that the original trademark owner had. The assignee would then be the sole owner of the trademark having rights to assign, trade, and market it and also to stop others from using it without authorisation.
Partial Assignment: In this type of assignment, the transfer of ownership is restricted only to certain products/services as decided by the parties and expressed in the Trademark Assignment Agreement. For example, if the owner of a trademark named “owa” mentions in the assignment agreement that the assignee can use the assigned trademark for only food products that are suitable for human consumption only. Then he cannot use the mark for any other goods/ services except food products for human consumption. Both the complete and partial assignment can be made with the assignment of goodwill or without goodwill.

b. Licensing of a trade

The trademark licensing is the action or instance of authorizing another person or company for making business usage of any registered trademark for the specified period of time and as per the mutually agreed terms and conditions, by the owner of the trademark. The owner of the registered trademark then derives royalty from the licensee for the agreed commercial uses of the trademark. Here, it must be noted that, only some rights related with a registered trademark are given to the licensee, and the exclusive ownership over the licensed trademark and many vital and critical rights associated with the trademark rest with the registered owner of the trademark. A license may be sole, exclusive or non- exclusive. An individual may record a licence with the Trademark Office. This is achieved by ﬁling a prescribed form with the prescribed fee along with the licence deed. Licensees may record themselves as registered users, although such recordal is not mandatory however it is only on such recordal of registered users with the Trademark Office that the licensee can sue for infringement of a trademark. Likewise an effective license agreement will have quality control clause in it.

For registering a person or company as a registered used of a trademark or a licensee an application should be filed within six months from the date of execution of license agreement with the Registrar of Trademarks. The agreement must cover the specified period of licensing, and the mutually agreed terms and conditions of licensing. Once published in the trademarks journal it is open for objections from other people for a period of two months.

c. Can an individual register a security interest under a trade mark?

No, a security interest cannot be registered under the Trade Marks Act. Having said that, a trade mark is included in the deﬁnition of “property” under the Securitisation and Reconstruction of Financial Assets and Enforcement of Securities Interest (SARFAESI) Act, 2002 and may therefore be registered as a security interest under the SARFAESI Act.

d. Are there different types of security interest?

Yes. A “security interest” can include the right, title and interest of any kind whatsoever upon property (which includes a trade mark) created in favour of any secured creditor, and includes any mortgage, charge, hypothecation or assignment.

19. Revocation

a. Grounds for revocation of a trademark?

Revocation (or rectiﬁcation) of a registered trade mark can be sought on any of the following grounds:

The mark was not distinctive at the time of its registration.
The mark conflicts with an already existing mark.
Use of the mark is likely to cause confusion and deception amongst trade and public.
There is no bona fide intention to use the mark.
There has been no use of the mark for a period of 5 years.

b. Who can initiate rectification/ cancellation proceedings?

Only a ‘aggrieved person’ can initiate the rectification/ cancellation proceedings. An ‘aggrieved person implies any party whose trading interests are affected by the presence of the registration on the register.

c. What is the procedure for revocation of a trade mark?

Proceedings for rectiﬁcation may be initiated by ﬁling a petition before the Registrar of Trade Marks or the Intellectual Property Appellate Board (IPAB). If the rectification is filed with the Registrar, on receipt of the application for rectification, official fees and statement of case the Registrar serves the application and the statement of case upon the registered proprietor calling upon it to file Counter Statement (CS). Once the CS is filed, the matter reaches the evidence stage and the parties are required to file their respective evidence in the form of an affidavit/s deposed by their concerned authorised officer/s. Subsequent to both the parties having filed their respective evidence, the matter is set down for a final hearing giving both parties opportunity to make oral submissions on merits and the order is made in due course.

If the rectiﬁcation is ﬁled before the IPAB, such petition is accompanied by evidence, if any, in support of the rectiﬁcation proceeding. A copy of the Rectiﬁcation Petition is served upon the Registered Proprietors by the IPAB. Within a deadline of two months from the date of receiving the Rectiﬁcation Petition, the Registered Proprietors are required to ﬁle a Counter Statement along with documents, including evidence in the form of afﬁdavits. The Counter Statement is served upon the Petitioners by the Registered Proprietor directly under intimation to the IPAB. Within a deadline of two months from the date of receiving the Counter Statement, the Petitioners may ﬁle a reply along with evidence in the form of afﬁdavits. A copy of the reply shall be served on the Registered Proprietor under intimation to the IPAB. Thereafter, a hearing will be appointed and the matter will be heard on the merits.

d. Is the order passed by the Registrar appealable?

Yes, the order from the Registrar is appealable before the Intellectual Property Appellate Board (IPAB). Appeals can be filed within 3 months from the date such an order is communicated.

The route of appeal is as follows:

From the Registrar of Trade Marks to the Intellectual Property Appellate Board.
There is no provision for appeal against an order of IPAB. However, a writ petition under Article 226 and 227 of the Constitution of India can be filed in the High Court against the order of IPAB. A writ is in the nature of a review and is not an appeal.
An aggrieved person can also invoke the jurisdiction of Supreme Court of India under Article 136 of the Constitution of India where substantive issues of law are involved.

20. Trade Mark Enforcement

a. How and before what tribunals can a trade mark be enforced against an infringer?

A suit for infringement can be ﬁled in a District Court or a High Court having the jurisdiction to try the infringement suit. Jurisdiction is determined by the place where the cause of action arises, or the place where the Defendant resides or has its principal place of business. In the case that the trade mark is registered, the place where the Plaintiff has its principal place of business determines the jurisdiction.

b. What are the key pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?

The pre-trial procedural stages in a Civil Court will normally comprise ﬁling a plaint at the appropriate court along with an application for interim relief, often ex parte relief. In such a case, a notice is not served upon the Defendants. In the case that the court is pleased to grant ex parte relief, which is usually an interim order for injunction, copies of the plaint along with the order of court are served upon the Defendants with a short leave – normally not more than a few weeks to file their defence and show cause as to why the interim order of injunction passed ex= parte should not continue. The Defendants will file their reply alongwith an application for vacation of the interim order. The Plaintiffs will have an opportunity to file their rejoinder, after after which the matter will be heard in order to determine whether the interim order passed should continue or be vacated.

A court will normally pass an interim order of injunction if the Plaintiffs show:

prima facie proof of validity of their trade mark;
prima facie proof of infringement;
balance of convenience in their favour; and
absence of

Depending upon the facts and circumstances of a particular case, the court may choose not to grant ex parte relief but order that a notice be served upon the Defendants to enable them to ﬁle their reply. Once the Defendants ﬁle their reply, the procedure outlined above will follow. After the interim stage, which could last from a few days to a few weeks, the matter proceeds to trial. The trial procedure will comprise:

service of the plaint and accompanying documents on the Defendants;
ﬁling and service upon the Plaintiffs of the Defendants’ reply along with a counter claim for invalidation of the trade mark, if any;
ﬁling of a rejoinder by the Plaintiffs;
hearing of the matter before the Registrar of the court (or in special cases, before a judge) for completion of pleadings and admission and denial of documents, during which directions for the further conduct of the action – including ﬁling of evidence, ﬁling of the list of witnesses, examination and cross-examination of witnesses, ﬁxing of dates of the next hearing, etc. – are given;
framing of issues before the court;
exchange of lists of, and disclosure of, documents relevant to the issues; and
argument of the case on the merits before the

Normally, it takes anywhere from three to seven years for a matter to be completed on the merits. As of now, intellectual property cases are won or lost during the interim stage, although efforts are being made by the courts to “fast-track” intellectual property cases.

c. Are (i) preliminary, and (ii) ﬁnal injunctions available and if so on what basis in each case?

Preliminary (interim) injunctions are available when Plaintiff’s establish:
Prima facie proof of validity of their trade mark;
prima facie proof of infringement or passing off;
balance of convenience in their favour; and
absence of delay
Final/permanent injunctions are granted after hearing both the parties on the merits of the suit. Injunctions may be granted not only where actual infringement or passing off is proved, but also where a threat has been

d. Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so how?

Yes. By an order of the court, a party may be called upon to produce relevant documents under the cover of afﬁdavits.

e. Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?

Yes. Submissions and evidence are presented in writing and are also argued or presented orally. Documentary evidence will have greater evidentiary value. Cross-examination of witnesses will take place during the trial. Examination and cross-examination may be recorded in the form of questions and answers or through videography.

f. Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Ofﬁce?

Yes. However, whether infringement proceedings are to be stayed pending resolution of validity of the trade mark would be a matter of discretion of the court and the facts and circumstances of a case. The factors which would affect such discretion would be the forum before which invalidation proceedings are pending, whether the suit for invalidation was ﬁled prior to or subsequent to the suit for infringement, and whether or not there is an injunction operative against the Defendant. Where the validity of a trade mark has already been called into question prior to the institution of the suit for infringement, the court may be disinclined to grant ex parte relief.

g. After what period is a claim for trade mark infringement time-barred?

The period of limitation for instituting a suit for infringement is three years from the last committed act of infringement. Where the act of infringement is a continuing one, the limitation will not apply. Under the Trade Marks Act, where the proprietor of an earlier trade mark has acquiesced for a continuous period of ﬁve years to the use of a registered trade mark, being aware of the use, he shall not be entitled to oppose use of the latter trade mark.

h. Are there criminal liabilities for Trademark infringement?

Yes, there are criminal liabilities. A proprietor of a trade mark who has been aggrieved by an act of falsifying or falsely applying his/her trade mark, disposing of any instrument for the purpose of falsifying a trade mark, or applying a false description to goods and services, can pursue a criminal prosecution.

i. What, if any, are the provisions for unauthorised threats of trade mark infringement?

The law provides for action against groundless threats of infringement. A declaratory action may be instituted by a person interested in following up groundless threats of infringement.

21. Defences to Infringement

a. What grounds of defence can be raised by way of non-infringement to a claim of trade mark infringement?

A suit for infringement may be defended on the grounds that the Defendants adopted and used their trade mark prior to the date of use or registration of the Plaintiff’s trade mark. The Defendants may show that their trade mark is not the same or similar to the Plaintiff’s trade mark and that no confusion is likely to occur in the minds of the customers in the course of trade.

b. What grounds of defence can be raised in addition to non-infringement?

The Defendant may also plead that the Plaintiff has no title to sue, the registration of the Plaintiff’s mark is not valid, the use by the Defendant is in accordance with honest practices of the trade and is not detrimental to the distinctive character of the trade mark, and that the Defendant has a statutory right to use the mark by virtue of concurrent or prior registration and/or use.

22. Relief

a. What remedies are available for trade mark infringement?

The following remedies are available for trade mark infringement:

preliminary injunction;
permanent injunction;
damages or account for proﬁts;
an order for delivery of the infringing labels and goods;
an order for the preservation of infringing goods, documents or other evidence which are related to the subject matter and destruction thereof after disposal of the suit,
an order restraining the Defendants from disposing of their assets.

b. Are costs recoverable from the losing party and, if so, how are they determined and what proportion of the costs can usually be recovered?

Yes. Damages suffered by the Plaintiffs as a result of the infringement are recoverable. Although reasonable attorneys’ fees may be recovered, actual recovery of costs depends upon several factors and the Indian courts are not normally liberal in this respect. Defendants may also claim compensation due to loss suffered by them on account of an injunction, if it transpires subsequently that the Plaintiff’s right was invalid.

23. Appeal

a. What is the right of appeal from a ﬁrst instance judgment and is it only on a point of law?

There is a right of appeal from a ﬁrst instance judgment. For instance, where the suit is instituted before a District Court, a party aggrieved by the Order of the District Court may ﬁle an appeal before the High Court. Similarly, an Order of the High Court may be appealed to the Division Bench of the High Court. A further appeal may lie before the Supreme Court on special leave where substantial issues of law are involved.

24. Border Control Measures:- mechanism for seizing or preventing the importation of infringing goods or services:

a. What is the procedure for recordation of IP rights with the Customs authorities under the IP Rules?

Procedure for recordation of IP rights:

The application for recordation of a trademark, patent, design, copyright or geographical indication of a rights- holder along with required documents has to be submitted online.
As a first step the Right Holders representative will create a unique id and password on the website and thereafter, submit the relevant documents/ fill in the online forms. The information will be saved and may be edited/ amended later (subject to the Customs authorities approving any post- recordal edits/ amendments);
Separate forms must be completed for each IP right sought to be recorded, viz’, Copyright, Trade Mark, Design and Geographical Indication;
A unique temproray registration number will then be generated;
The Physical copies of the documents which were uploaded along with a print out of the application form filed online are required to be filed at the Customs Office of the Right holder’s choice which has an IPR cell along with a demand draft towards payment of the official fee of INR 2000;
The applicable IPR Cell of the relevant customs office will scrutinize the documents, register the notice of the Right holder and thereafter issue a Unique Permanent Registration Number (UPRN). This may take upto 30 days;
After the UPRN is generated, design, trademark, copyright or geographical indication is formally recorded with the Customs authorities. This information will be simultaneously available at all ports.

Documents needed for making the above application under the IPR Rules?

1. Proof of ownership of the intellectual property rights and a scanned copy of the registration certificate of the intellectual property rights.
2. Serial number of the demand draft of INR 2000/-. The demand draft must be issued by any nationalised or scheduled bank in India and made out in favour of the Commissioner of Customs of the opted location.
3. Scanned copy of power of attorney in favour of counsel/ advocate/ agent who is filing the application.
4. A statement of exclusivity outlining the scope of the IP right sought to be recorded.
5. Digital images of genuine goods (for trademarks and designs)
6. Statement of grounds of suspension of infringing goods.
7. Digital images of infringing goods (if applicable. Available).
8. Differentiating features of genuine and infringing goods (not mandatory but advisable for trademarks and design).
9. The IEC code of the rights holder and/ or other authorised importers (not mandatory but advisable for trademarks and design).
10. Customs Tariff headings of the applicable goods (if available).
11. In case of geographical indications, description of the geographical indications, geographical area of production and map.
12. The General bond or the Centralised Bond.

b. Does a brand owner need to file multiple applications for all ports or will a single application suffice?

A single application covers multiple ports.

c. What is the process followed by Customs, once goods are detained by the Customs Authorities?

Once goods have been detained, notice is given by Customs to both the importer and the Rights holder, inviting them to join the proceedings. At this stage, the right holder, or its authorized representative, must furnish a bond of an amount equivalent to 110% of the value of the detained goods, along with security, in the form of a Bank Guarantee or fixed deposit, equivalent to 25% of the bond value. At the time of registration, the Right holder may opt to submit a General Bond undertaking that he will submit consignment wise security bond at the time of interdiction of infringing goods. Alternatively, he may file a centralized bond with security which will be uploaded online and applicable to all the ports in India with an online facility of debit and credit. The rights holder is also required to execute bond indemnifying the Custom authorities from any liability arising of suspension of clearance of infringing goods on the basis of information provided by the IPR holder.

Once the above procedure is completed, the Right holder’s authorized representative is provided with photographs/ serial numbers of the products/ samples of the products for examination, testing and analysis to assist in determining whether or not they are infringing.

d. What action is to be taken after suspension of goods suspected to be violating IPRs relating to patents, design and geographical indications?

Para 4 of the Circular No. 41/2007-Cus dated 29/10/2007 clearly states that ‘while it is not difficult for Customs officers to determine Copyright and Trade Marks infringements at the Border based on available data/inputs, it may not be so in the case of the other three violations, unless the offences have already been established by a judicial pronouncement in India and the Customs is called upon or required to merely implement such order. In other words, extreme caution needs to be exercised at the time of determination of infringement of these three Intellectual Property Rights’. – In case of Copyrights, the Customs officers may proceed to take appropriate decision in the light of documentation regarding registration with parent authority or the information about Title, Author and Copyright Declaration on the original copies of work as the case may be, the physical examination of the goods, expert opinion, test report etc. – In case of Trademarks also the Customs Officer may proceed to take appropriate decision in the light of the documentation regarding registration with parent authority, the physical examination of the goods, expert opinion, test report etc. – However in case of remaining three IPRs, viz. Patents, Designs and Geographical Indications, the Customs Officers should exercise extreme caution.

25. Current Developments

a. What have been the signiﬁcant developments in relation to trade marks in the last year?

The Government has simpliﬁed and streamlined the trade mark registration process by introducing the Trade Marks Rules, 2017. The new rules have substantially accelerated the trade mark registration process. The key changes introduced by the new rules are outlined below:

Filing of a trade mark application: Introduction of one form (“Form TM-A”) for all types of trade mark A rebate has been given to individual/start-up/small enterprises.
Sound marks: An application for registration of a sound mark requires the sound mark to be submitted in MP3 format, not exceeding 30 seconds in length, together with sound
Well-known marks: Any person may request the Registrar for determination of a trade mark, whether pending or registered, as well-known. Such request must be accompanied by evidence and documents supporting the claim. The Registrar may invite objections from the general public before determining a trade mark as “well-known”. Upon determination of a trade mark as well-known, it will be published in the Trade Marks Journal and included in the list of well-known trade
E-service of documents/correspondence: Service of ofﬁcial correspondence and documents will be made electronically via email and will be deemed to be a valid

The Trade Marks Ofﬁce, today, has a robust integrated automated “Trade Marks System” for all functions related to processing of applications, disposal of notices of opposition, maintenance of the Register of Trademarks, and disposal of applications for cancellation/removal of registration. All functions of the Trade Marks Ofﬁce are performed through the aforesaid System and actions are recorded in the central server on a real- time basis.