IPINDIA working, adjourned trademark deadlines COVID-19

The Controller General of Patents, Designs and Trade Marks Office (IPINDIA) remains open for filings. Currently, as it has been for years, nearly all filings are made online.

Under authority from the advisory issued by Ministry of Health and Family Welfare, Govt. of India, The Controller General of Patents, Designs and Trade Marks Office (IPINDIA) has extended many trademark deadlines.

Trademark

In view of advisory issued by Ministry of Health and Family Welfare, Govt. of India and the concerned raised by stakeholders in this regard, all hearings relating to trademarks matters scheduled between 17/03/2020 to 15/04/2020 have been adjourned and these cases will be rescheduled in due course of time.

It may further be noted that hearing scheduled after 15 April, 2020 will remain as it is.

The extended deadlines include:

Show cause hearings related to trademark

For more details on Show cause hearings, please review this link.

Opposition cases hearings related to trademark

For more details on Opposition cases hearings, please review this link.

S K SINGH & ASSOCIATES is dedicated to keeping our clients fully informed during the COVID-19 crisis.

Role of Trademark agent in Trademark in India ?

Role of Trademark agent in Trademark in India 

Trademark Certificate holder enables trademark owner's to establish their right to the mark or brand or trademark  in the court of law. Registered trademark holder also discourage piracy and prevents from use of same or similar packing,  packaging, insignia, phrase, series of words, device, brand, heading, label, ticket, name, signature, word, tagline, letter, sound, a voucher, or on the product from being registered by other business owner's or entrepreneur's. You can conduct a Trademark Search, International Trademark Search, Public Search, Trademark Journal, find domain registration details, domain registration database, Check Company Name at Ministry of Corporate Affairs, in India for company already registered or Company pending for registration, Local Search, Internet based data search, also search other data bases, there are several trademark attorney or Trademark agents in India to conduct trademark search for you to check if your brand name conflict with Registered Trademark or pending trademarks. In India, you could get a ™ same day, but generally it takes up to 6 to 8 months without objection from the Registrar of Trademark or Opposition from any third party for it to be registered, so that you can use the ® symbol. Once you apply trademark Application online or offline a money receipt allotted by the Trademark Registry. You are now advised to write ™ on the Right Hand top corner inside the Circle prominently but don’t mark ® till you receive the Registration Certificate/s.

A trademark the most precious Intangible Asset. Selection of a good Trademark will distinguishes the goods & services from the other's. A poor trademark may lead to Trademark infringement and dull your efforts. However, selecting a strong trademark plays a vital role to get Trademark Registration certificate 6 to 8 months without objection from the Registrar of Trademark or Opposition from any third party.

Always  prefer Fanciful or Arbitrary trademarks

• Fanciful Marks (Mark that have no relation to the goods being described (e.g, "ANGIRA" for Ear Phones in class 9).

• Arbitrary Marks (Mark that have no meaning to the goods being described (e.g., APPLE for Mobile Phones in class 9).

Role of Trademark attorney or Trademark Agent

Trademark attorney and Trademark agents in India are the professionals who offer different types of services from selecting trademark to getting registered for and to enforce trademark that is selected, so that it does not get infringed by others.

Several trademark get rejected each month due to selection of weak trademark. It is advisable to hire a licensed and reputed Trademark attorney and Trademark agents in India, who can to conduct trademark search for you to check if your brand name conflict with Registered Trademark or pending trademarks. In India, you could get a ™ same day, but generally it takes up to 6 to 8 months without objection from the Registrar of Trademark or Opposition from any third party for it to be registered.

To become a trademark attorney or agent in India?

Presently there are two ways for the individuals available at  Indian Trademark Registry or intellectual property registry in India

1. Eligible criteria is through professional qualification for practicing before Trade Mark Registry.

1. Qualifying examination conducted by Indian Trademark Registry or intellectual property registry in India to become a Trademark agent in India.

Qualification criteria is prescribed under Trademarks Act of 1999 and Trademark Rules of 2017.

There is a exceptions to above if advocates having enrolled under Advocates Act and the qualified Company Secretaries having qualified the exam conduct by Company Secretaries are licensed to represent the clients before Trademarks Registry, without having appeared in Trademark Agent examination conducted by Indian Trademark Registry or intellectual property registry in India.

Well known trademark Made Simple A Step by Step Guide

Well-known trademark play a vital marketing weapons in the hands of entrepreneur's. on the perspective of the consumer trademarks act gives the exclusive right to the registered proprietors of the trademark due to which  one can identify the goods and service they want to consume.

Earlier to the trademark rule 2017 only the court of law or Intellectual Property Appellate Board (IPAB) has a power to decide a trademark as a well-known trademark. But after the amendment in the trademark rules, the trademark rule 2017 has given a power to the registrar of Trademark to declare a trademark as a well-known trademark as per rule 124 of the trademark act,1999 .

Determination of a trademark to be Well Known by Registrar.

1.Any person may, on an application in Form TM-M and after payment of prescribed fees, make a request to the Registrar of trademark for determination of a trademark as well-known.

What are documents accompanied with an application in Form TM-M and after payment of prescribed fees for determination of a trademark as well-known?

An application in Form TM-M and after payment of prescribed fees shall be accompanied by a user affidavit along with all the evidence and documents relied by the applicant in support of his claim.

The documents and evidence required to be submitted while filing a well-known trademark application

a)Statement of case – details of  the applicant right on the trademark and describing the claim of trademark.

b)Details of successful enforcement of rights in case the trademark has been recognized as well-known by the court in India or Trademark Registry in India.

c)Copy of judgment of any court of law or the territorial jurisdictions of trademark offices recognised as well-known.

d)Evidences justifying the claimant's right. Such evidences shall include documents

e)The duration, concurrent use of trademark, or any details about pending or registered trademark.

f)Year wise sales figures with supported documents in the form of tax Invoices.

g)List of Actual or potential consumers of the goods or services under the said trademark.

h)Year wise details advertisement along with the expenses incurred on advertisement with supported documents in the form of tax Invoices raised by Advertisement agency on the Applicant or the Company.

i)Recognition of the trademark in general public across the globe.

While determining the trademark as well-known by the registrar of trademark take in to account the other provisions trademark.

3.While determining the trademark as well-known by the registrar of trademark, the Registrar may call such documents as he thinks fit.

4.Before determining a trademark as well-known, registrar of trademark may invite objections from the general public to be filed within 30 days from the date of invitation of such objection.

5.After determining the trademark as well-known by the registrar of trademark, the trademark shall be published in the trademark Journal and included in the list of well-known trademarks maintained by the registrar of trademark.

6.The Registrar may, at any time, remove  the  trademark  from  the  list  of well-known after  providing  due opportunity of hearing to the concerned party if it is found that a trademark has been erroneously or inadvertently included or  is  no  longer  justified  to  be  in  the  list  of  well-known  trademarks.

Trademark can be declared well known through an application filled in the court of law or with the registrar by form TM-M.

What is Requisite for establishing well-known trademark ?

What is the criteria for determining a Well-Known Trademark?

While determining the trademark as well-known by the registrar of trademark take in to account all the facts which he considers relevant for determining a trade mark as a well-known trade mark including the following factors:

a) The trademark should be well-known to the public at large in India by consuming those goods or services or due to Advertisement & marketing activities are done by Applicant of well-known mark. 

b) The duration, concurrent use of trademark, extent for which that trademark is being used in the business & trade or geographical area of any use of such trade mark

c) The number of actual, genuine or potential consumers of the goods or services;

d) The business circles dealing with those goods or services to which the trademark applied by Applicant of well-known mark.

Section 11(10) in The Trade Marks Act, 1999 clearly states that the registrar is under an obligation to

(i) protect a well-known trade mark against the identical or similar trademarks;

(ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.

while a pending application for registering trademark has been filed with the court or with the registrar of Trademark or Trademark Registry in India.

In simple language well-known trademark means no one can use the term well-known trademark and if done so would lead to infringement proceedings against him/her/them. Therefore, the consequences of being declared a ‘well known’ trademark are open a new opportunities for the company.

Remedies available for infringement of well-known trademark

Advantages of attaining a status of the well-known trademark

After determining a trademark as well-known by the court of law, Intellectual Property Appellate Board (IPAB) or Registrar of Trademark; the act restrict to not register any trademark that is identical or similar with well-known trademark in any class or classes. Well-known trademark will be protected across all classes of goods and services on Request the identical or similar trademark will be removed from the register of the well-known of infringing mark.

Prevent use of the trademark in form of name/logo/word mark etc.

Punitive and compensatory damages:-  means compensatory damage to the plaintiff for the use of the well-known trademark.

For more details visit our website: https://sksinghassociates.com/blog

Advance Public Search Only 5 Minutes to get Trademark

Top Questions on Trademark Registration in India 2020

Q. Is there a time frame for the trademark registration?

Ans. The average time frame for the registration approval is 6 -7 months, if no objections or oppositions arise.

Q. If I register my trademark in the India, do I have protection in other country?

Ans. When you register your trademark in the India, it will be protected in India. Although while making an application for Trademark in global country you can priority claim.

Q. Do I need to sign a Power of Attorney or TM-M?

Ans. Yes. If It is being filed by a Trademark Agent or Attorney and will be needed. It is not a filing requirement, if it is being filed by Applicant of the Trademark in India.

Q. Are there any benefits from a pre-filing use of the trademark?

Ans. Yes.

    There are a number of benefits from pre-filing use:

    Show distinctiveness of mark

    Dismiss oppositions based on non-distinctiveness

    Invalidate a similar registered mark if use is earlier than the date of its application

    Establish reputation and obtain better protection

Q. Will there be problems in case I don’t use my trademark after registration?

Ans. Yes. Not using your trademark makes it vulnerable to cancellation or revocation.

Q. What are the types of trademark that can be registered in the India?

Ans. Registrable marks are those that can be interpreted graphically and can make the business distinct from its competitors: words, slogans, names, devices, sounds, scents, holograms, motions, touch, taste, 3-dimensional shapes and colors.

Q. What are the phases of application after a trademark has been filed in the India?

Ans. The application will go through 4 phases:

Application:

Examination – The application must comply with respect to formalities, classification, descriptiveness, distinctiveness and clarity.

Publication in Trademark Journal– The filing details will be posted online including the mark itself, goods/services involved, applicant’s name and address, date and number of application, information about priority claim, and the trademark’s representation.

Registration – After the prosecution, and if no opposition was filed, the issuance of registration will come next.