TRADEMARKS
PATENTS
DESIGNS
COPYRIGHT
GEOGRAPHICAL INDICATIONS
TRADEMARKS
What are the Enactments regarding Trademark Law In India?
The Trademark Act, 1999 and The Trademark Rules, 2002. In India. Under the Trademark Act, Applicants can file Multi-class Applications for the Trademarks and or Service Marks.
What is Meaning of Trademark under Indian Trademark Act, 1999?
A trademark is any word, name, symbol, or device capable of distinguishing the goods or services of one person from those of others, and may include shape of goods, their packaging and combination of colours. Trade Mark includes a brand name, a house mark, and a service mark. A trademark may be an insignia, label, name, sign, logo, device, signature, numerals, packaging, shape of goods, colour combination etc. Smell Mark, Sound Mark and other complex marks are also available in India for Registration. India is following the NICE Classification of Trademarks.
What is Classification of Goods and Services for the purpose for registration of trademark?
India employ a classification system in which goods and services have been grouped into classes for registration. India follow International Classification of Goods and Services, which consists of 34 classes of goods and 8 classes of services. (The WIPO recently revised the Nice Classification, adding three service classes (43, 44, 45) and restructuring Class 42, retaining certain services. This provision has not yet been implemented in India, however, all types of service which are not covered from 35-41 can be registered in Class 42 as per Indian Trademark Rules, 2002.
Who can apply for a trademark?
Any person can apply for registration of a trademark to the Trademark Registry under whose jurisdiction the principal place of the business of the applicant in India falls. In case of a company about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company's favor.
Is it advisable to conduct a trademark search before filing an application?
Before making an application for registration it is prudent to make an inspection of the already registered trademarks to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one.
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Whether Prior use is required to file an application in India?
No, Prior use is not required to file an application in India.
How do I obtain a trademark?
An application for trademark may be made on Form TM-1 with prescribed fee at Trade Marks Registry. The application is examined to find out whether it is distinctive and/ or does not conflict with existing registered or pending trademarks and examination report issued. If Registrar of Trademarks accepts the application then, it publishes in the Trademark Journal for inviting the oppositions from the public at large, if any. If no opposition received against the publication application within four months from the date of publication then the mark is registered and a certificate of registration is issued. If the applicant's response does not overcome all objections, the Registrar will issue a final refusal. The applicant may then appeal to the Appellate Board, an administrative tribunal.
What are the common grounds for refusal of trademark registration?
A common ground for refusal is likelihood of confusion between the applicant's mark with registered mark or pending prior mark. Marks, which are merely descriptive in relation to the applicant's goods or services, or a feature of the goods or services, may also be refused registration. Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well.
What is the Approximate time frame for obtaining Registration?
Generally it takes 1.5 to 2 years from the date of application, if no opposition is filed by any third party or refused by the Registrar of Trademarks.
Can Priority be claimed in India?
Yes, Priority can be claim within 6 months from the date of Convention Country Application date.
What is the duration of a trademark registration?
The term of a trademark registration is for a period of ten years. The renewal is possible for further period of 10 years each. Unlike patents, copyrights or industrial design trademark rights can last indefinitely if the owner continues to use the mark. However, if a registered trademark is not renewed, it is liable to be removed from the register.
If Well Known Marks are specifically protected under Indian Trademark Act, 1999?
Yes, well known marks have given special protection under Section 11 (10) of the Trademark Act. 1999, whether or not used in India, if taken as ground during opposition stage.
Whether Legalization of Documents are required for filing Trademark application in India?:
No, simply signed documents are required.
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What Documents are required for filing an Application in India?
- Full name and address of Applicant.
- Specification of goods or services specified in terms of individual names.
- Class; International Class of goods and services.
- Mark-character, device, figure, three-dimensional mark, logo and/or color.
- Details of Convention Priority, if any-first filed country, filing number and date; the term of priority is six(6) months.
- Power of Attorney(neither notarization nor consular legalization required) to be executed by an individual or a representative of a corporation.
- Certified copy of the application which is the basis of the Convention priority (if applicable) may be filed within three(3) months from the Indian filing date.
Scanned copy of a clear print of the mark.
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DESIGN
What is meant by ‘Design’ under the Designs Act, 2000 ?
‘Design’ means only the features of shape, configuration, pattern or ornament or composition of lines or colour or combination thereof applied to any article whether two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye, but does not include any mode or principle or construction or any thing which is in substance a mere mechanical device.
What is meant by an article under the Designs Act, 2000 ?
Under the Designs Act, 2000 the "article" means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately;
What is the object of registration of Designs?
Object of the Designs Act to protect new or original designs so created to be applied or applicable to particular article to be manufactured by Industrial Process or means.
What are the essential requirements for the registration of ‘design’ under the Designs Act, 2000?
(1) The design should be new or original, not previously published or used in any country before the date of application for registration. The novelty may reside in the application of a known shape or pattern to new subject matter. (2) The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article. (3) The design should be applied or applicable to any article by any industrial process. (4) The features of the design in the finished article should appeal to and are judged solely by the eye. (5) Any mode or principle of construction or operation or any thing which is in substance a mere mechanical device, would not be registrable design. (6) The design should not include any Trade Mark or property mark or artistic works as define under the Copyright Act, 1957.
Is marking of an article compulsory in the cases of article to which a registered design has been applied?
Yes, it would be always advantageous to the registered proprietors to mark the article so as to indicate the number of the registered design except in the case of Textile designs. Otherwise, the registered proprietor would not be entitled to claim damages from any infringer unless the registered proprietor establishes that the registered proprietor took all proper steps to ensure the marking of the article, or unless the registered proprietor show that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.
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What is meant by priority claim?
Ans. India is one of the countries party to the Paris Convention so the provisions for the right of priority are applicable. On the basis of a regular first application filed in one of the contracting state, the applicant may within the six months apply for protection in other contracting states, latter application will be regarded as if it had been filed on the same day as the first application.
Why is it important for filing the application for registration of design at the earliest possible ?
First-to-file rule is applicable for registrability of design. If two or more applications relating to an identical or a similar design are filed on different dates only first application will be considered for registration of design.
Can the same applicant make an application for the same design again, if the prior application has been abandoned ?
Yes, the same applicant can apply again since no publication of the abandoned application is made by the Patent Office, provided the applicant does not publish the said design in the meanwhile.
When does the Applicant for Registration of Design get the registration certificate?
When an application for registration of a Design is in order, it is accepted and registered and then a certificate of registration is issued to the applicant. Normally, it takes 6- 9 months to complete the Registration Procedure.
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What is the effect of registration of design?
The registration of a design confers upon the registered proprietor ‘Copyright’ in the design for the period of registration. ‘Copyright’ means the exclusive right to apply a design to the article belonging to the class in which it is registered.
What is the duration of the registration of a design? Can it be extended?
The duration of the registration of a design is initially ten years from the date of registration, but in cases where claim to priority has been allowed the duration is ten years from the priority date.
What is the date of registration?
The date of registration except in case of priority is the actual date of filing of the application. In case of registration of design with priority, the date of registration is the date of making an application in the reciprocal country.
Whether it is possible to transfer the right of ownership?
Yes, it is possible to transfer the right through assignment, agreement, transmission with terms and condition in writing or by operation of law. However, certain restrictive conditions not being the subject matter of protection relating to registration of design should not be included in the terms and condition of the contract/agreement etc.
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How it is possible to restore the lapse design due to non-payment of extension fee within prescribed time ?
A registration of design will cease to be effective on non-payment of extension fee for further term of five years if the same is not paid before the expiry of original period of 10 years. However, new provision has been incorporated in the Act so that lapsed designs may be restored.
What is meant by classification of goods mentioned in the Third Schedule?
Ans.: In the third Schedule of Design Rules, 2001 the classification of goods has been mentioned. The classification is based on Locarno Agreement. Only one class number is to be mentioned in one particular application. It is mandatory under the Rules. This classification has been made on the basis of Articles on which the design is applied.
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PATENT
What is a Patent?
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.
Does Indian Patent give protection worldwide?
Patent protection is territorial right and therefore it is effective only within the territory of India. However, filing an application in India enables the applicant 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. There is no patent valid worldwide.
Is it possible to file international application under Patent Cooperation Treaty (PCT) in India?
It is possible to file an international application known as PCT application in India with in 31 months from the date of Priority.
What can be patented?
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 Act.
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Who can apply for a patent?
A patent application can be filed either by true and first inventor or his assignee, either alone or jointly with any other person. However, legal representative of any deceased person can also make an application for patent.
How can I apply for a 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.
What are the criteria of patentability?
An invention to become patentable subject matter must meet the following criteria -
i) It should be novel. ii) It should have inventive step or it must be non-obvious iii) It should be capable of Industrial application. iv) It should not fall within the provisions of section 3 and 4 of the Patents Act 1970.
Should application for patent be filed before or after, publication of the details of the invention?
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, under certain conditions, there is grace period of 12 months for filing application even after publication.
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Can any invention be patented after publication or display in the public exhibition?
Generally, a patent application for the invention which has been either published or publicly displayed cannot be filed. 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 subject to conditions.
When an application for patent is published?
Every application for patent is published after 18 months from the date of its filing or priority date whichever is earlier.
Is there any provision in the law for early publication?
Yes, 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.
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Is patent application once filed is examined automatically?
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.
When the request for examination can be filed?
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. For more details kindly refer to rule 24B of the Patents Rules 2003 as amended upto 2006.
Is there any provision for early examination?
There is no provision for filing a request for early examination. The applications are examined in the order in which requests for examination are filed. 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.
What happens to a patent application once it is examined?
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.
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What are the various stages involved in the grant of patent?
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.
What is time limit for filing the representation for pre-grant opposition?
A representation for pre-grant opposition can be filed within six months from the date of publication of the application or before the grant of patent.
What is the time limit for filing post-grant opposition in the patent office?
The time for filing post-grant opposition is 12 months from the date of publication of the grant of patent in the official journal of the patent office.
How can one find out that an invention is already patented?
The person concerned can perform a preliminary search in the Indian patent data base of granted patent or Patent Office journal published every week.
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What is the term of patent?
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.
What are obligations of the patentee after the grant of patent?
After the grant of patent, every patentee has to maintain the patent by paying renewal fee every year as prescribed in the schedule I. For first two years, there is no renewal fee. The renewal fee is payable from 3rd year onwards. In case the renewal fee is not paid the patent will be ceased.
Can the patentee pay renewal fee at a time or has to pay every year?
The patentee has choice to pay the renewal fees every year or he can pay in lump sum as well.
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GEOGRAPHICAL INDICATIONS
What the Enactments of Geographical Indications in India?
In December 1999, the Parliament had passed the Geographical Indications of Goods (Registration and Protection) Act,1999. This Act seeks to provide for the registration and better protection of geographical indications relating to goods in India. The Act would be administered by the Controller General of Patents, Designs and Trade Marks- who is the Registrar of Geographical Indications. The Geographical Indications Registry would be located at Chennai.
What is a Geographical Indication?
It is an indication. It originates from a definite geographical territory. It is used to identify agricultural, natural or manufactured goods. The manufactured goods should be produced or processed or prepared in that territory. It should have a special quality or reputation or other characteristics
What are examples of possible Geographical Indications.?
Scotch Whiskey, Kanchipuram Silk Saree. Alphanso Mango, Nagpur Orange, Kolhapuri Chappal, Bikaneri Bhujia, Agra Petha, Basmati Rice, Darjeeling Tea.
How a geographical indication is different from a trade mark?
A trade mark is a sign which is used in the course of trade and it distinguishes goods or services of one enterprise from those of other enterprises. Whereas a geographical indication is an indication used to identify goods having special characteristics originating from a definite geographical territory.
What is the benefit of registration of geographical indications?
It confers legal protection to Geographical Indications in India. Prevents unauthorised use of a Registered Geographical Indication by others. It provides legal protection to Indian Geographical Indications which in turn boost exports. It promotes economic prosperity of producers of goods produced in a geographical territory.
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Who can apply for the registration of a geographical indication?
Any association of persons, producers, organisation or authority established by or under the law can apply:-The applicant must represent the interest of the producers, The application should be in writing in the prescribed form, The application should be addressed to the Registrar of Geographical Indications alongwith prescribed fee.
Who is a registered proprietor of a geographical indication?
Any association of persons, producers,organisation or authority established by or under the law can be a registered proprietor. Their name should be entered in the Register of Geographical Indication as registered proprietor for the Geographical Indication applied for.
How long the registration of Geographical Indication is valid?
The registration of a geographical indication is valid for a period of 10 years. It can be renewed from time to time for further period of 10 years each.
What is the effect if a Geographical Indication if it is not renewed?
If a registered geographical indication is not renewed it is liable to be removed from the register.
Can a registered geographical indication be assigned, transmitted, etc?
No. A geographical indication is a public property belonging to the producers of the concerned goods. It shall not be the subject matter of assignment, transmission, licensing, pledge, mortgage or such other agreement However, when an authorised user dies, his right devolves on his successor in title.
Can a registered geographical indication or a registered authorised user be removed from the register?
Yes. The Appellate Board or the Registrar of Geographical Indications has the power to remove the geographical indication or an authorised user from the register. Further, on application by an aggrieved person action can be taken.
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COPYRIGHT
What is Copyright?
Copyright is a legal right, given exclusively to the creator/originator (or assignee) to make further copies for publication and public performance.
What can be copyrighted?
Copyrights provide protection to authors of original works that are produced in a tangible form of expression. The tangible form of expression need not be directly perceptible, so long as it may be communicated with the aid of a machine or device. It protects original artistic, literary (including computer programmes, compilations and databases)and musical and cinematographic works produced through ones own skill, labour, intellectual efforts and creativity. Copyright protection is available to both published and unpublished works.
Does the copyright law protect the ideas of the author and the future commercial expressions of the same idea?
No. The copyright law does not protect the idea and protects only the method of expression of idea. If an idea can only be expressed in a single way, such expressions cannot be protected under the Law of Copyright. Future commercial expressions of the idea cannot be protected under the Law of Copyright and it can be protected only under the Law of Patent.
What type of creative work does copyright protect?
Categories of works of authorship can include but are not limited to; Literary, Dramatic (including accompanying music) and Musical (including accompanying words or lyrics), Choreographic (including Pantomimes), Pictorial, Graphic, Sculptural, Computer Programs, Motion Pictures, Audiovisual and Sound recordings and Architectural works.
Can a company be considered the author? Can an author and owner be different from one another?
A company can never be considered as an author of a work. However, it can become the owner, if the author creates the work within the scope of an employee's duties.
Who is an author?
Under the copyright law, the creator of the original expression in a work is its author.
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What are the rights of an author?
If the owner of the work is different from the author, the author will be eligible for the “moral rights” of the author. These rights include the right to be identified as an author and the right against the mutilation of the copyrighted work.
Who can apply the Copyright?
Author or its assignee can file the Copyright Applications.
How long does copyright last?
The duration of the protection depends on the type of copyright. In case of :-
- ‘literary work’ Copyright lasts for the life span of the author and for sixty years after the author's death.
”photographs” subsists for sixty years from the next calendar year of publication.
”cinematographic films” will be sixty years from the next calendar year of publication.
”Sound recording” will be sixty years from the next calendar year of publication.
What are the various international Treaties relating to the Copyright?
There are various international copyright conventions including (i) Universal Copyright Convention at Geneva in 1952 (ii) Universal Copyright Convention as revised at Paris on 24th July 1971. (iii) Berne Convention for the Protection of Literary and Artistic Works, Paris Act of 24th July 1971 as amended on September 28th 1979 (iv) WIPO World Intellectual Property Organization Diplomatic Conference Geneva, December 2 to 20, 1996. (v) WIPO Copyright Treaty of December 20th 1996 (vi) WIPO Performances and Phonograms Treaty of December 20th 1996 (vii) The World Trade Organization Agreement on Trade Related Aspects of Intellectual Property Rights, Final Act Marrakech on 15th April 1994.
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What work should I protect?
You should protect everything that you create and which you consider to be of value to you, or yours, now or in the future. If it is worth creating and if others would find it worthy of copying then it is worth protecting.
What is the benefit of protecting my work?
Once your creation has been fixed in a tangible medium of expression the copyright on your work is protected by copyright law. By registering your copyright you will have irrefutable proof of first ownership of your intellectual property. This proof can be used in a court of law in alleged cases of copyright infringement. When faced with an alleged case of copyright infringement you need this proof. Proving the date of creation can be a problem. Copyright registration can make the proof on this point a lot easier. By registering it you will have an individually numbered certificate of registration of copyright relating to that particular copyright work.
Can I transfer my copyright?
Copyright can be 'assigned' (sold or given away) by the execution of a written document signed by the copyright owner. It is also possible for you to grant a copyright license.
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