Problems With Self-Filed Trade Mark Applications

With the growing need for business enterprises to create and maintain a solid brand image, there is a sharp rise in trade mark applications being filed by the owners themselves. This marked increase in ‘self-filed’ applications is more prevalent in the small and medium enterprise (SME’s). Though this method might seem cost effective to many, creates a lot of complications in the long run.

The major problem faced by the owners opting for self-filed applications in the prosecution stage is the caused due to the applicants not opting for a pre-filing search. A search is extremely essential as it gives the proprietor an idea about the possible objections and oppositions which might come his way in the process of registration. Seeking professional help in this stage not only gives the owner an idea about the existence of any deceptively similar mark subsisting in the registry but also a professional’s opinion and suggestion on modifying or altering the mark in order to make sure it faces minimal deterrents in the passage of registration. Another grave problem with applications being filed by owners themselves is the lack of knowledge on the classification of goods and services, which results in applications being filed in the wrong class. The most common problem confronted by such applicants is the objection stage, where the Examiner of Trade Marks has to be satisfied with the reply to the objections under Section 9 and 11 of the Trade Marks Act, 1999. Drafting a reply to the objections, for a person who is not well-versed with the provisions and concepts is unmanageable. Now the most challenging part of the entire procedure, the Opposition stage. The Opposition stage allows a third party to challenge the mark proposed for registration after it has been advertised in the Trade Marks journal. The owner has no option but to call for professional help at this stage and chances are that the number of oppositions could have been pre-determined or minimized had the owner engaged an Attorney in the first place. The other problems encountered include missing the deadline to renewal applications, difficulty in filing amendment to alter details etc.

Hence it is advisable for business owners to seek professional help while laying the foundation for a brand they want to establish as it will not only relieve them of the burden and help them concentrate on other areas of business development but also pave a way to a  strong, stable brand with right professional strategies and approaches.

Poulomi Paul

The Battle for Names

The trademark infringement tussle between the luxury clothing line ZARA of Spain and the Chennai based Zara Tapas Bar resulted in the Delhi High Court deciding in favour of the clothing brand not because it was a well-known name across the world but to simply protect its trademark rights.

ZARA, the internationally reputed luxury clothing brand, the plaintiff, sued Zara Tapas Bar, the defendant for trademark infringement and sought an injunction to restrain the defendant from passing off and infringement of its mark. The plaintiff had started conducting its business in India in 2010 through its associate company Inditex Trent Retail India Private Limited, which is a joint venture between the plaintiff and the Tata Group Company. The plaintiff contended that the trademark was conceptualized in the year 1975 and the domain name was registered in 1997 and since then the plaintiff has been using the mark continuously and extensively. It was in 2005 that the plaintiff became aware of the defendant’s use of the name Zara, which the plaintiff immediately opposed. However, in 2012, the plaintiff came across another application by the defendant, which was also opposed by the plaintiff.

The court in deciding the dispute looked into the way the mark was being used by the defendants. The defendant’s website focused on the word “ZARA” and “TAPAS BAR” was barely readable. It repeatedly described itself as only ZARA making it a dishonest and fraudulent adoption of the mark by the defendants. The court also quashed their argument as it stated that it is the choice of the plaintiff to sue infringers. If the plaintiff does not choose to sue certain infringers, it does not disentitle them to sue other infringers.  

The court stated that the defendants wanted to ride on the reputation and goodwill of the plaintiff. The court granted an ad interim order to the plaintiff’s mark irrespective of the goods and services dissimilarity as the court was of the view that such blatant unauthorized use of the plaintiff’s mark could discredit their reputation. The court added that the clothing brand had acquired a cross-border reputation and directed the defendant to remove the signage and all promotional material using the name ‘Zara’.  

Nayanika Singhal

The Myth of Surnames

Starting a business in India in the name or surname of a person isn't a new concept. Several businessmen associate their businesses with their names. Though the protection of surnames as trademarks is difficult, we still have several examples of the same, viz., Dabur, Tata, Goenka, Khaitan, HP, Jimmy Choo, Honda all around the world.

The Trade Mark and Merchandise Act, 1958 under Section 9 refused to afford surnames the protection of trademarks. However, the Trademarks Act, 1999 has no provision to allow or disallow the use of surname of personal names. The definition of the term “trademark” under Section 2(zb) provides that it is a mark capable of being represented graphically and which is capable of distinguishing goods and services of one person from that of others. The definition of the "mark" doesn't explicitly include or exclude surnames and personal names. Thus it is assumed that such registration is allowed, and hence, even applied for.

Though it is generally assumed that surnames may be registered as trademarks since the new Act doesn’t disallow it specifically, it may not be registered unless proof of distinctiveness is shown. This is done to prevent differentiation among the goods of proprietors of same names. Thus, a person cannot claim monopoly over a surname that is common to others.

The Courts has held in the cases of Mahindra and Mahindra v. Mahendra and Mahendra [2003 (26) PTC 434 (Guj)] and Dr Reddy Laboratories v. Reddy Pharmaceuticals [2004 (29) PTC 434 (Del)] that where the word has a better known meaning, other than as a surname it may be regarded as a non-ordinary one for being accepted for registration as a trade mark. A surname is of “ordinary significance” when the word has no other significance except that of a surname, however rare or unique the surname may be.

The other practice regarding surnames as trademarks in India is; where the word propounded for registration has a “better known” meaning attached to it, then it is regarded as a non-ordinary one, then registration may be granted even if no proof of distinctiveness is shown.

Thus, we have several surnames like Tata, Honda, Mahindra and Mahindra who have acquired the required protection under the Act and are infact well known trade marks under Section 11. The key to protection of surnames is in the ‘acquired distinctiveness’ which doesn’t provide exclusive rights to the owner but does make it tougher for another person to register it as a mark.

Nayanika Singhal

Role of Customs Authoritity in IP protection

In the wake of globalization and rise in international trade, intellectual property has gained immense significance. The best way to deter infringing goods from entering into a particular country is by confiscating the goods at the border itself. The Custom Authorities have started playing an active and role in obstructing the flow of infringing goods into the country by employing various border control measures.

The provisions under Section 11 of Customs Act, 1962 are as follows:  If the Central Government is satisfied that it is necessary so to do for any of the purposes specified in sub-section (2), it may, by notification in the Official Gazette, prohibit either absolutely or subject to such conditions (to be fulfilled before or after clearance) as may be specified in the notification, the import or export of goods of any specified description-(n) the protection of patents, trademarks and copyrights; (u)  the prevention of the contravention of any law for the time being in force;

Section 111 and 113 of the Act empowers the Customs to confiscate improperly imported and exported goods respectively.

According to the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007  vide[ Notification No. 47/2007-Cus. (N.T.), dated 8-5-2007 ] it is stated that”

 (a) “ goods infringing intellectual property rights"  means any goods which are made, reproduced, put into circulation or otherwise used in breach of the intellectual property laws  in India or outside India and without the consent of the right holder or a person duly authorized to do so by the right holder

(b) "intellectual property"  means a copyright as defined in the Copyright Act, 1957, trade mark as defined in the Trade Marks Act,1999, patent  as defined in the Patents Act, 1970, design as defined in the Designs Act, 2000 and geographical indications as defined in the  Geographical Indications of Goods (Registration and Protection) Act, 1999;

(c) “ Intellectual  property  law”  means the Copyright Act, 1957, the Trade Marks Act,1999, the Patents Act, 1970, the Designs Act, 2000 or  the  Geographical Indications of Goods (Registration and Protection) Act, 1999 ;

(d) " right holder” means a natural person or a legal entity, which according to the laws in force is to be regarded as the owner of protected intellectual property right, its successors in title, or its duly authorized exclusive licensee as well as an individual, a corporation or an association authorized by any of the aforesaid persons to protect its rights.

3.  Notice by the right holder. –

(1) A right holder may give notice in writing to the Commissioner of Customs or any Customs officer authorised in this behalf by the Commissioner, at the port of import of goods infringing intellectual property rights in accordance with the procedures and under the conditions as set out in these Rules, requesting for suspension of clearance of goods suspected to be   infringing intellectual property right.

(2) The notice in respect of goods infringing intellectual property rights shall be given in the format prescribed in the Annexure to these Rules.

(3) Every such notice shall be accompanied by a document as specified by the Commissioner, evidencing payment of application fee of Rs. 2000 (two thousand rupees only). (4)      If any of the information as required in the format under sub-rule (2) is not provided, the Deputy Commissioner of Customs or Assistant Commissioner of Customs may, as the case may be, ask the right holder or his authorised representative to provide the same within 15 days, which may be extended on sufficient reasons being shown.(5) The right holder shall inform customs authority when his intellectual property ceases to be valid or if he ceases to be the owner of such intellectual property right

Prohibition for import of goods infringing  intellectual property rights.-  After the grant of the  registration of the notice  by the Commissioner on due examination, the import of allegedly infringing goods into India shall be deemed as prohibited within the meaning of Section 11 of the Customs Act, 1962.   

Disposal of infringing goods. - (1). Where upon 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 under official supervision or dispose  them outside the normal channels of commerce after obtaining 'no objection' or concurrence of the right holder or his authorized representative.

Poulomi Paul