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The Intellectual Property Office (IPO) of Pakistan has announced that there will be an amendment to the official fee for all the procedures related to Trademarks by amending the Trademarks Rules, 2014. The amendment for the official fee was notified vide an Official notice dated March 04, 2019 and it will be entered into effect as of March 9, 2019 and constituted a massive escalation in the fee of approximately 50%.

Some of the prominent changes in the fee are listed below:

For what fee is payable Old fee (USD) Updated fee (USD)
Official fee for filing trademark 15 22
Official fee for grant of registration 43 64
Official fee for filing renewal 71 107

It is pertinent to note that Pakistan accepts only single-class trademark applications; therefore, all fees are indicated accordingly.

Keeping aside the escalation in fee, the amendment is a strategic move by the IPO of Pakistan to create a more efficient and structured intellectual property protection system. Following the need to maintain an up to date IP infrastructure, the IPO of Pakistan may utilise the increase in official fees to benefit applicants by investing further into new initiatives.

The IPO is taking all necessary steps to evolve digitally. One of the most recent examples is an initiative allowing for the filing of online trademark applications. The e-filing system is presently underway and will be available to nationals for direct filings through the system. Foreign applicants will have the option to file a Power of Attorney for their representatives who, in their turn, will access the system. The pilot project of the service, in its initial run, will allow only for filing procedures, however, it is set to deliver faster trademark services in the future.

The post Pakistan IP Office announces increase in the Official Fee for filing & prosecution of Trademarks appeared first on Selvam & Selvam.

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The Government of India has approved the proposal for the accession of India to

  1. The Nice Agreement concerning the International Classification of Goods and Services for the purposes of registration of marks,
  2. The Vienna Agreement establishing an International Classification of the figurative elements of marks, and
  3. The Locarno Agreement establishing an International classification for industrial designs.

Accession to the Nice, Vienna and Locarno Agreements will help the Indian Intellectual Property Office to harmonise the classification systems for examination of trademark and design applications, in line with the classification systems, followed globally.

It would give an opportunity to include Indian designs, figurative elements and goods in the international classification systems.

The accession is expected to instil confidence in foreign investors, applicants, businesses in relation to the protection of their Intellectual Property in India. The accession would also facilitate in exercising rights in decision-making processes regarding review and revision of the classifications under the agreement.

More often than not, the Indian IP office has been raising objections with respect to classifications especially in respect of goods or services that do not fall under standard classification and this move would help to harmonise the practice and reduce objections raised by the IP offices in India.

The post India approves the proposal for accession to The Nice Agreement, The Vienna Agreement & The Locarno Agreement appeared first on Selvam & Selvam.

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The following are the significant changes which were brought about by the Patent (Amendment) Rules, 2018 and subsequently published in the Official Gazette. It came into force on December 4, 2018.

  • Procedure for Filing International Applications
  • Expedited Examination of Patent Application
  • Proviso included during the case of non-compliance of requirements under expedited examination [Rule 24C(4)]:
  • Constitution of Controller under Rule 55 for Opposition
  • No transmittal fee payable
  • No fee payable if the preparation of certified copy is through WIPO DAS
  • The inclusion of applicants under Form 18A

 Procedure for Filing International Applications:

The filing of all the documents by the Patent Agents shall be made only by the mode of electronic transmission which has to be duly authenticated.

The time period for the submission of these documents is no more than fifteen days, after which it is deemed as not filed.

Expedited Examination of Applications:

Applicants for an Expedited Examination of Applications shall also include:

  • A small entity as defined in rule 2(fa) of the principle Act.
  • Female applicant(s) or if at least one of the applications is a female, provided it is a case of natural persons.
  • A Government Undertaking:
  1. Indian Applicant: If in accordance with clause (h) of sub-section (1) of section 2 of the Act.
  2. Foreign Applicant: If it is a similar entity.
  • An applicant who will be eligible under an arrangement for processing an international application pursuant to an agreement between Indian Patent Office with another participating patent office. The patents filed under this category will be in accordance with the relevant provisions of the Act.

Proviso included in the case of non-compliance of requirements under expedited examination of applications [Rule 24C(4)]:

The proviso states that if the requirements are met before the issuance of FER, the application shall be processed for expedited examination in accordance with the provisions of rule 24-C.

Constitution of Controller under Rule 55 for Opposition:

Sub-rule 2A has been inserted under Rule 55 which states that the Controller shall, by order, constitute a bench comprising two members, who will take decisions in a joint manner. However, if the members of the bench differ in opinion on any issue, the Controller shall nominate a third member to the bench and subsequently the majority decision will be treated as final.


No transmittal fee payable:

 48A states that no transmittal fee is applicable if the filing is done electronically.


No fee payable if the preparation of certified copy is through WIPO DAS:

49A states that there is no fee applicable if the preparation of a certified copy of priority document and e-transmission through WIPO DAS.


The inclusion of applicants under Form 18A:

Paragraph 3 of Form 18A shall also include options as to whether the applicant is:

  1. A small entity.
  2. A Government undertaking.
  3. A female or at least one of them is a female provided it is a case of natural persons.
  4. Eligible under an arrangement for processing an international application pursuant to an agreement between the Indian Patent Office with another participating patent office.

It is pertinent to note that in a country like India, where the corporate world is still patriarchal, steps are taken to encourage women inventors to shine in the field of science & technology.

This article has been authored by Pooja Veerabahu, pursuing law at the School of Law, Sastra University.

The post Significant changes brought about by the Indian Patent Amendment Rules, 2018 appeared first on Selvam & Selvam.

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Number 9 of 2002 on Trademarks, Trade Names, Geographical Indications and Industrial Designs governs the procedure for application and registration of a trademark in Qatar.

Marks that can be registered as a trademark in Qatar:

All distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices and any combination of these which are depicted as trademarks, service marks and collective marks are eligible for registration. It must be distinctive and not descriptive and shall not be prohibited by the law. Three dimensional (3D) trademarks and holograms are also eligible for registration in Qatar.

Who can file for Trademark Registrations in Qatar:

  1. Natives engaged in any of the commercial, industrial, professional, or service business;
  2. Foreigners engaged in any of the commercial, industrial, professional, or service business in the State of Qatar or in any state having reciprocity of treatment with Qatar;
  3. Public legal persons; and
  4. Owners of well-known trademarks.

Classification of Goods & Services for Trademark Registration:

Qatar follows the International Classification of Goods and Services for the Purposes of the Registration of Marks which has 42 classes, yet classes 1, 4 to 7, 10 to 14, 16 to 22, and 31 are not granted entirely under the trademarks law. Products covered by class 33, alcoholic drinks and beverages in class 32 and pork meat in class 29 are not registrable in Qatar.

Application for registration of a trademark in Qatar:

An application for registration of a trademark has to be filed before the trademark office in Qatar. If a foreign applicant is applying for registration, a local agent must apply on behalf of the Applicant and a power of attorney legalized by a Qatari consulate in the Applicant’s country is necessary. There is no multi-class trademark application in Qatar.

Required Information for registration of a trademark in Qatar:

  • The name, address, nationality and legal status of the Applicant and the nature of the business of the Applicant.
  • The list of the goods to be covered by the application with mention of the class under which the Applicant intends to register the trademark.
  • Information about the trademark such as the colour, design etc. The prints of a trademark originally in colours can be submitted in black and white but should specify the colours to be claimed.
  • Applications are currently accepted in Arabic language only.
  • Details of the use of the mark in Qatar

Required documents for registration of a trademark in Qatar:

  • Duly filled-in trademark application form
  • Five copies of logo or specimen (6×6 cm)
  • Letter of request
  • Duly legalised Power of attorney
  • Copy of the certificate of incorporation
  • Certified copy of priority document, if priority is claimed (may be submitted within 6 months from the date of filing Application)

For Corporate entities:

  • Copy of commercial registration
  • Certificates and extracts of logo image
  • Signature of the authorised signatory
  • Copy of power of attorney.

For Foreign companies:-

  • Power of attorney duly legalised, attested and authenticated before Embassy of Qatar
  • Authentication before Ministry of Justice and Ministry of Foreign Affairs in Qatar
  • Certificate of incorporation and
  • A copy of the logo.

Costs for registration of a trademark in Qatar:

On submission of an application for the registration of a trademark prescribed fee of 1,000 Qatari Riyals must be paid.

Procedure for registration of a trademark in Qatar:

Once a trademark application is filed, it is examined by the Industrial Property Protection (IP) office for distinctiveness and a search for prior trademarks is conducted. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use or if there is a registration in a foreign country. If the IP Office finds that the application for registration does not comply with the requirements of the Trademarks Law, it shall refuse or impose restrictions for the mark to be registered and shall notify the applicant, of its justified decision within 30 days from the date of filing the application. To this regard, the applicant must satisfy restrictions or modifications within 6 months from the date of the notification otherwise the application shall be deemed as abandoned. The applicant has the possibility of appealing against the Trademark Office’s decision within a period of 60 days. If the registration of the mark is accepted, the IP Office shall publish the mark in the official gazette for any third party to file an opposition.

Opposition against the registration of a trademark in Qatar:

Once the mark has been published in the official gazette, any concerned person may, within 4 months, oppose the trademark application stating the grounds forthwith in writing. However, the opposition must be filed within a period of 4 months from the announcement in the official gazette. The applicant shall be required to reply to such opposition within 2 months from receiving the notification, failing which the application will be considered abandoned. Upon the issuance of the final judgement, the mark will consequently be registered and entered in the trademark register. Similarly, the registration will have effect as from the date of filing the application. In the absence of opposition, a published trademark is registered, and a registration certificate is issued.

The time frame from filing to obtaining registration for a trademark in Qatar is between 12 to 15 months in a straight forward matter without opposition.

Period of protection of trademark and renewal of trademark in Qatar:

A trademark registration is valid for 10 years from the date of application. It can be renewed every 10 years perpetuity. Subsequent to the expiry of the registration period, a 6-month grace period is allowed within which a late renewal application can be filed, but such a late renewal application is subject to payment of additional fees.

Assignment of a trademark in Qatar:

The ownership of a registered trademark can be assigned with or without the goodwill of the business concern. Unless an assignment has been recorded in the register and published in the Official Gazette of Trademarks, it shall have no effect as against third parties.

Cancellation of a Registered trademark in Qatar:

If the trademark has not been used in Qatar for a period of 5 years from issue of the date of registration or has not been used later for a continuous period of 5 years, it may be subject to cancellation by any interested party through the civil court, unless the owner of the mark submits a justification for such non-use.

Benefits of registration of a trademark in Qatar:

Under the law, the owner of a registered trademark is granted the exclusive right to prevent all third parties from using their trademark. According to the local law, a registered mark can be cancelled only for non-use for a period of five years after registration. Registration of trademark results in protection against unfair competition, the imposition of penalties in national law on competitors who infringe the legitimate intellectual property rights and obtain appropriate compensation for infringement. Registration also helps in registering with the Customs authorities to stop the import/export of infringing/counterfeit goods into/outside Qatar.

The post Guide on trademark registration, renewal and trademark opposition in Qatar appeared first on Selvam & Selvam.

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Introduction on Domain name

As per Blacklaw’s dictionary Domain Name refers to the words and characters that website owners designate for their registered internet addresses. The Internet Corporation for Assigned Names and Numbers (ICANN) manages the internet’s global domain name system. A domain name consists of a two-level hierarchy. The top-level domain name include .com, .net. org etc. This will indicate the nature of the enterprise. In addition to it, each country has been given unique domain names. For example .in indicate India, .ca indicates Canada etc. The second level domain name represents the tradename/ trademark of the business/ entity /organization etc. For example, in google.com, Google represents the second level domain name. Generally, a dispute over domain name arises in relation to the second level domain. Two identical second-level domain names cannot co-exist under the same top-level domain name.

In order to register a domain name, one has to register it with ICAAN through a Registrar. These Registrars are accredited by ICAAN. For example, GoDaddy is one such Registrar. The Registrars allocate the domain name on first come first serve basis to the applicant. Therefore, there are chances of parties getting a domain name registered without the bonafide or legitimate intention of using it.

Domain Name Dispute

Domain names play a vital role in business as it has been used by the common public to identify the business. A dispute in relation to the domain name arises when any party registers an earlier trademark as their domain name. It is necessary that the trademark of the complainant must be identical or confusingly similar to the second level domain of the disputed domain name. This requirement rules out complaints raised by an owner of the unregistered trademark. Domain names can also be registered and protected as trademarks at the national and international level, however the same has to satisfy the criteria as required for a valid trademark.

Dispute Resolution Policy

In the case of domain name disputes, all the registrars must follow Uniform Domain Name Dispute Resolution Policy (UDRP), this will deal with the dispute arising out of any domain name. A holder of a registered trademark may initiate a complaint with the UDRP. The rules of procedure will govern how to initiate and conduct the proceeding under the UDRP.

In India, the Indian Dispute Resolution Policy (INDRP) deals with domain names registered in .in Internet registry. The disputes involving registration of .in domain name are resolved as per INDRP Rules. INDRP Rules of Procedures approved by National Internet Exchange of India (NIXI), which is a non-profit company to facilitate the exchange of domestic internet traffic, mandates that the disputes relating to domain names registered with NIXI accredited registrar shall mandatorily adopt arbitration proceeding in accordance with Arbitration and Conciliation Act, 1996. By registering the disputed domain with the NIXI accredited registrar, the owner of the domain name has agreed to the resolution of the domain name disputes pursuant to the INDRP and Rules framed thereunder. The procedures under these dispute resolutions policies are administrative proceedings.

 Legal Remedies

In order to successfully challenge domain name, the owner of the trademark must prove that the domain name registrant has used the identical or confusingly similar trademark of the complainant. Secondly, the complainant must prove that the registrant of the domain name has no legitimate interest in the domain and the same has been registered in bad faith.

In order to overcome a complaint on the domain name, the registrant must prove that the owner of the domain name is using the domain name in connection to any goods or service; or if the owner of the domain name or his goods and services have been commonly identified with the second level domain name; or if he is using the domain name for fair and non-commercial use with a bonafide intention.

In case if the challenge were successful the domain name will be suspended or all the rights over it would be transferred to the legitimate owner. In order to obtain injunction or compensation, the owner of the trademark can file a suit at the civil court.


Due to the expansion of business over the internet, it has become extremely important to safeguard the trademark of a business on the internet. Domain name disputes have evolved more like internet trademark infringement. However, it has become easier to identify trademark infringement over the internet for the proprietors of the trademark rather than identifying physical infringement as the website can be accessed across the globe. The arbitral tribunal or the court has favored the owner of the trademark in its majority of the decisions.

The post Understanding Domain Name Disputes and Dispute Resolution Mechanism appeared first on Selvam & Selvam.

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The Indian Trademark Law grant exclusive rights to the trademark owner. The exclusivity here indicates that the trademark owner has the liberty to utilize his/her trademarks without any external interferences. The Indian Trademark Laws grants bundle of rights to the trademark holders and the rights of every trademark owner includes the right to commence and prosecute a legal action against infringement of his/her rights in a trademark. It is important that the action taken by the trademark owner is bona fide and the proprietor has taken due diligence in initiating the proceedings.

Infringement proceedings include high costs of litigation and any injunction granted may lead to irreparable loss such as loss of revenue and reputation. Thus, considering the serious consequences of an infringement proceeding no person should be dragged to courts based on groundless threats of infringement. At times infringement proceedings are used by the large, powerful companies to intimidate or harass smaller companies. The small entities which do not have the required economies to fight the legal battle may give-up on the usage of the mark which they are genuinely entitled to.  Such threats of infringement, lacking any legal basis are termed as Groundless or baseless legal threats. It can also be coined as Trademark bullying. The United States Patent & Trademark Office (USPTO) has defined Trademark bullying as the act where the “trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.”

In India, Intellectual Property laws are designed to provide protection from the groundless threat of infringement and also to prevent IP owners from making wrongful threats of an infringement action against other parties. With specific reference to the Trademark Act 1999, Section 142 of the Trademark Act deals with the Groundless threats of legal proceedings. The section provides that when a person by means of circulars, advertisement or otherwise threatens another person with an action or proceeding for infringement of a registered trademark or alleged to be a registered trademark, a person aggrieved may bring a suit against such former person and obtain a declaration to the extent that such threats are unjustified. The legal remedy available for such threats is that the aggrieved party can get an injunction in his favor to restrain the other person from the continuance of such threats and may also recover damages. Similar provisions are also available in other Intellectual Property laws such as Copyright Act, Patents Act, Design Act and Geographical Indications of Goods (Registration and Protection) Act.  Section 142 of the Trademark Act exempt any act done by the legal practitioners and agent on behalf of the client in his professional capacity from their liability.  Although the law grants protection to those who become victims of such threats, the law does not define what constitutes a baseless/ groundless legal threat. The word baseless legal threat has been coined by the Judiciary at several instances while considering various cases, but this is not sufficient enough to set right the lacuna in giving a definition to a groundless legal threat. The judiciary has extended its protection to infringement threats which are unjustifiable.

The scope of the protection conferred under the Trademark Act includes protection from the groundless threats of legal proceedings for alleged infringement. The legislation extends to the protection even against threats from those who don’t claim to be the proprietor, licensee, assignee or a registered user of the registered trademark.

In the case of Bata India Limited Vs Vitaflex Mauch GmbH, the Plaintiff instituted a suit against the Defendant for restraining the Defendant from making groundless threats of legal proceeding to the Plaintiff. Moreover, the Plaintiff also claimed damages from the Defendant for issuing groundless threats to the Plaintiff. The major issue before the Delhi High Court was whether the legal notice amounted to legal threat and whether the Plaintiff is entitled to claim injunction and damages for the same. The Hon’ble High Court held that the threats made by the defendant to the Plaintiff are groundless, unjustifiable and wrongful. Therefore, the Defendant was ordered to restrain from in any manner issuing any groundless threats in whatsoever manner.

To conclude, it is very important that any person who sends any legal notice or Cease and Desist letter or initiates any other legal proceedings should exercise caution and ensure that the action taken is within the rights granted to them under the law.

The post Groundless/Baseless legal threat of infringement of trademarks in India appeared first on Selvam & Selvam.

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  1. What are the laws which govern the protection of trademarks in the Maldives?

There is no specific law that governs the trademark protection or trademark registration in the Maldives.

  1. If there is no specific law governing trademarks, how does one protect their trademark rights in the Maldives?

In the Maldives, the trademarks are protected by the publication of the Cautionary notice in the newspaper in English and a local language.

  1. Does the trademark filing in the Maldives undergo examination?

Protection of trademarks in the Maldives does not include filing, examination and advertisement but is merely on the basis of the publication of a Trademark Cautionary Notice.

  1. What is a Trade Mark Cautionary Notice?

Cautionary Notice is a mere publication of a notice in the newspaper to inform the general public about the legal rights of the trademark owner.

  1. What are the documents required to publish the Cautionary notice in the Maldives?

There are no documents required to publish the Cautionary notice in the Maldives.

  1. What are the information required to publish the Cautionary Notice in the Maldives?

To publish a Cautionary notice the following information about the marks are required:

a. Name, address, status and nationality of the proprietor;

b. JPEG image of the mark, in case mark is a device/logo mark;

c. Classes and specification of goods & services.

  1. What language should the Cautionary notice be published in?

The publication can be done in either English or local vernacular language (Dhivehi). However, it is highly recommended to publish the same the in both the languages.

  1. Can we publish multi class applications on a single Cautionary Notice?


  1. How do you renew a trademark in the Maldives?

Renewal is done by way of re-publication of the Cautionary Notice from time to time.

  1. How often should a mark be re-published to keep it protected in the Maldives?

Trademark owners republish the Cautionary notice at a frequency that they choose. In general, trademark owners re-publish their Cautionary notices every 3 or 5 years

  1. Do we necessarily have to publish the specification of the goods? Is it enough to publish just the classes?

It is advisable to publish the entire specifications of goods and services along with the classes.

  1. How do we record a change in name, change in proprietorship change in address or the colour scheme of the mark?

The recordal of the name change, assignment or address change is done by way of re-publishing the Cautionary notice.

  1. Is it possible to publish different trademarks owned by different companies in one Cautionary Notice?


  1. In the Cautionary Notice, what color should the mark be published in?

The mark can be published in any color. However, it is highly recommended that the mark should be published in the same color as it is used.

  1. How much is the official fee for the publication of the Cautionary notice?

There is no official fee for publication of the mark except the creation of the printing blocks, translations, postage and printing costs towards publication of the trademark in the newspaper.

  1. How long would it take to publish the Cautionary Notice?

Publication of the Cautionary notice depends on the availability of the slot in the newspaper and can range between 3 to 15 business days.

  1. What is the recommended size of the publication of the Cautionary Notice?

The size of the publication will depend on the nature of the mark and the specifications of goods & services for which protection is sought. There is no limitation to the size of the notice.

  1. How much does it cost to publish a standard cautionary notice?

The charges of the caution notice vary depending on the number of classes, specifications and the trademark.

The post All you need to know about trademark registration in the Maldives appeared first on Selvam & Selvam.

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The Ministry of Corporate Affairs has recently notified that it would be conducting Know Your Customer (KYC) verification for all the Directors of all companies by linking it to a mobile number and email address so as to verify the identity of each Director. The notification is as follows:

“As part of updating its registry or rather tightening the noose, Ministry of Corporate Affairs would be conducting Know Your Customer (KYC) of all Directors of all companies annually through a new e-form viz. DIR-3 KYC (to be notified and deployed shortly).

Accordingly, every Director who has been allotted Director Identification Number (DIN) on or before 31st March 2018 and whose DIN is in ‘Approved’ status would be mandatorily required to file form DIR-3 KYC on or before 31st August 2018.

While filing the form, the Unique Personal Mobile Number and Personal Email ID would have to be mandatorily indicated and would be duly verified by One Time Password (OTP).

The DIR-3 KYC form should be filed by every Director using his own DSC and should be duly certified by a practicing professional (CA/CS/CMA). Filing of DIR-3 KYC would be mandatory for Disqualified Directors also.

Effect of Non – Compliance: After expiry of the due date by which the KYC form is to be filed, the MCA21 system will mark all approved DINs (allotted on or before 31st March 2018) against which DIR-3 KYC form has not been filed as ‘DEACTIVATED’ with reason as ‘Non-filing of DIR-3 KYC’.

After the due date, the filing of DIR-3 KYC in respect of such deactivated DINs shall be allowed only upon the payment of a specified fee only, without prejudice to any other action that may be taken.

New digital signatures shall be obtained if existing digital signature has already expired.

In case of obtaining fresh digital signatures: For the resident directors, self-attestation of the identity and address proof is sufficient. However for the Non-resident foreign directors, the attestation requirements (Both Apostille and Notary on the digital signature application, identity & address proofs) shall be complied with. ”

This is a welcome step from the Ministry of Corporate Affairs towards its efforts to systematically weed out fake companies and Directors.

The post MCA tightens the noose – Mandatory eKYC for all Directors with Form DIR-3 KYC appeared first on Selvam & Selvam.

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A trademark/service mark, is a word, name, symbol or device that is used in trade in respect of goods/services to indicate the source of the goods/services and to differentiate them from the goods/services of others. With the development of knowledge and information technology era, intellectual capital has achieved substantial importance. As a result, Intellectual Property (IP) and rights attached to it have become precious commodities and are being protected. There are well-established statutory, administrative, and judicial frameworks for protecting Intellectual Property Rights (IPRs) in India. It becomes appropriate to mention here that India has complied with its obligations as per the Agreement on Trade-Related Intellectual Property Rights (TRIPS) by enacting necessary Statutes and amending the existing ones. Well-known international trademarks have gained protection in India in the past by judicial rulings even though these trademarks were not registered in India.

Infringement of Trademarks:

Registration of a trademark is a prerequisite for initiating an infringement action. The following essential conditions should prevail for starting an infringement action:

  • The allegedly infringing mark must be either identical or deceptively similar to the registered trademark;
  • The goods/services in relation to which the infringing mark is used must be specifically covered by the registration of the registered trademark;
  • The use of the infringing mark must be in the course of the trade; and
  • The use must be in such a manner as to render the use likely to be taken as being used as a trademark.

A registered trademark is also infringed by use of a mark when because of:

  • Its identity with registered trademark and similarity with goods/services covered by registration; or
  • Its similarity with registered trademark and identity with goods/services covered by registration; or
  • Its identity with registered trademark and identity with goods/services covered by registration.
  • Identity with registered mark having reputation.
  • Similarity of Trade Name with registered Trademark.
  • Application of Registered mark on labelling, packaging, etc with knowledge that such application is without authorisation.
  • Use of registered Trademark in advertising, when such use takes unfair advantage, is detrimental or against the reputation of registered Trademark.

Under the Trademarks (TM) Act, the following acts would also amount to infringement of a registered Trademark:

  • Use of the registered trademark as a trade name or part of the trade name dealing in same goods or services for which the registered trademark is registered;
  • Use of the trademark in advertising if such advertising takes unfair advantage of and is contrary to the honest practice in industrial or commercial matters, or is detrimental to its distinctive character; or against the reputation of the trademark;
  • Under the TM Act, even oral use of the mark can constitute infringement.

Who can sue for infringement?

The registered proprietor, his legal heirs and the registered user(s) can sue for infringement. An assignee of a registered trademark can also sue for infringement. A passing off suit can be converted into a combined action of infringement and passing off, if the registration of the trademark is obtained before the final hearing of the passing off suit.

Remedies for Infringement

  1. Civil remedies: When instances of infringement occur, the Court of competent jurisdiction, not lower than the District Court can be moved for grant of an interlocutory injunction, Anton Pillar Orders, damages and account of profits.
  2. Criminal proceedings: Complaint may be made against the person causing infringement. (Both the actions under Civil law and Criminal law can be initiated simultaneously. Under the Civil proceedings, the plaintiff seeks relief for himself while under the criminal proceedings, the complainant seeks an award of punishment to the infringer).
  3. Administrative remedies: Opposing the registration of a deceptively similar trademark when the Trademark Registry is in the process of considering registering it can protect the earlier trademark. The Registry can also be moved for removal of a deceptively similar trademark if registered.

Burden of proof: It is a well-settled position in law that the plaintiff must prove that the essential features of his registered mark have been copied. The onus to prove ‘deception’ is on the part of the plaintiff who alleges infringement.

Vigilance: The Need of the Hour

To sum up, over time, the Trademarks law has changed and now it provides protection to trademarks at every stage. With the development of technology and communication, the law expects that users are reasonably aware of other trademarks before registering their own trademark. No one can use a similar mark which creates deception or confusion for the customers. The trademark owners must be more vigilant about similar marks in existence, in certain cases, including well-known marks beyond national boundaries.

The post Infringement of trademarks and its remedies in India appeared first on Selvam & Selvam.

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With the advancement of technology and the expansion of the grey-market, India is currently facing large-scale infringement issues which are drastically affecting the Indian Economy. Playing the vivid role of a gatekeeper the Customs Department of India has adopted the Customs Recordal system in furtherance of its aim to forestall the cross-border movement of counterfeit or infringing goods. In exercise of the powers conferred by sub-section (1) of section 156 of the Customs Act, 1962 (Act 52 of 1962), the Central Government formulated the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 consonance with the TRIPS and World Customs Organisation Model.

The aim of recording IP rights with the Customs is to prevent trade in counterfeit or infringing goods. According to Section 2(a) of the 2007 Rules, “infringing goods” means any goods which are made, reproduced, put into circulation or used in breach of the intellectual property laws and without the consent of the right holder or any authorised person.

To record an IP right with the Customs, a right holder must submit an application in writing with the necessary documents and information. In order to submit an application electronically, an Applicant must register on the Indian Customs IPR Recordation Portal www.ipr.icegate.gov.in. A unique id and a password will be generated and relevant documents must be submitted along with duly filled-in online forms. A Unique Temporary Registration Number is then generated, which along with a physical copy of the documents must be submitted to the IPR cell of the Custom House. Within 30 days a Unique Permanent Registration Number will be issued which serves as conclusive proof of recordation of the IP right.

Documentation required

  • A copy of the registration certificate of the intellectual property right as proof of the existence of such right
  • Power of Attorney in favour of the person who is filing the Application, if required
  • Images of genuine goods (for trademarks, product patents, and designs)
  • Images of infringing goods (if applicable/ available)
  • Hard copies of the complete set of documents uploaded online to be submitted to the Customs Office of the opted location.
  • A demand draft of INR 2000/- in favour of the Commissioner of Customs of the opted location.
  • An Indemnity Bond: The right holder must execute an indemnity bond with the Commissioner of Customs indemnifying the Customs authorities against all liabilities and expenses on account of suspension of clearance of allegedly infringing goods.
  • General Bond or Centralised Bond: The right holder or his authorised representative must execute a bond with the Commissioner of Customs to bear the costs towards destruction, demurrage and detention charges incurred for the destruction or disposal of infringing goods.

Information required

  • Name and contact details of the Applicant
  • The serial number and details of the demand draft in favour of the Commissioner of Customs.
  • Details regarding the scope of the IP right which the right holder is intending to register
  • Details regarding the differentiating features of genuine and infringing goods
  • The IEC code of the right holder and other authorized importers
  • In case of geographical indications – description of the GI, the area of production.
  • Grounds for the notice of suspension of the release of the goods allegedly infringing intellectual property rights
  • A detailed description of the goods with Customs Tariff Heading in respect of which an intellectual property right applies, together with a sample, model or photograph  of a genuine product
  • Product code of the goods been imported/exported

If any of the required information is not provided, the Deputy Commissioner of Customs or Assistant Commissioner of Customs may require the right holder to provide the same within 15 days, which may be extended for sufficient reasons. Within 30 working days from the date of receipt of the notice, the Commissioner shall notify the Applicant whether the notice has been registered or rejected along with validity period of the registration during which assistance by Customs shall be rendered. After the grant of the registration, the import of allegedly infringing goods into India shall be deemed as prohibited under Section 11 of the Customs Act, 1962.

In a notice for suspension, where clearance of the said infringing goods has been suspended and the right holder or his authorised representative does not join the proceedings within a period of ten working days from the date of suspension of clearance leading to a decision on the merits of the case, the goods shall be released. If the right holder or his authorised representative does not join the proceedings within a period of ten working days, the goods shall be released. This time-limit of ten working days may be extended by another ten working days in appropriate cases by the Commissioner or an officer authorized by him in this behalf. In the case of perishable goods suspected of infringing intellectual property rights, the period of suspension of release shall be three working days which may be extended by another four days.  In case the right-holder or his authorized representative joins the proceedings, the Deputy Commissioner of Customs or Assistant Commissioner of Customs, as the case may be,  having reasons to believe that the goods are infringing and  liable to confiscation under section 111 (d) of the Customs Act, may seize the same under section 110 of the Customs Act.

The Commissioner or the officer duly authorized in this behalf shall allow a right holder and the importer or their duly authorized representatives to examine the said infringing goods. Whereupon determination by the Deputy Commissioner of Customs  or Assistant Commissioner of Customs, as the case may be,  it is found  that the goods detained or seized have infringed intellectual property rights, and  have been confiscated under section 111 (d) of the Customs Act, 1962 and no legal proceedings are pending in relation to such determination, the  Deputy Commissioner of Customs  or Assistant Commissioner of Customs, as the case may be,  shall, destroy the goods or dispose  them. The costs toward destruction, demurrage and detention charges incurred at the time of destruction or disposal shall be borne by the right holder. However, goods of a non-commercial nature contained in personal baggage or sent in small consignments intended for personal use of the importer are exempted from the application of the Customs Recordal rules.

The post Customs Recordal in India – Averting the cross-border movement of infringing goods appeared first on Selvam & Selvam.

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