Trade Marks & Copyright 2024 Comparisons

In India, trade marks are primarily governed by the Trade Marks Act 1999 and the Trade Marks Rules 2017, forming a comprehensive regulatory regime coupled with common law provisions.

In addition to the statute, official guidelines issued by the Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM), such as the Trade Marks Manual, court precedents and decisions of the Trade Marks Office (TMO) govern several aspects of trade mark law in the country. Further, the decisions of High Courts are binding on lower courts in their respective jurisdictions and they form an important source of trade mark law.

There are also ancillary laws which impact trade marks: for example, the Copyright Act 1957, the Companies Act 2013 and, in limited cases, the Designs Act 2000.

Further, there are certain government guidelines or acts – such as the Ministry of Ayurveda, Yoga, Naturopathy, Unani, Siddha, Sowa-Rigpa and Homoeopathy (AYUSH), and the Emblems and Names (Prevention of Improper Use) Act 1950 – which impact trade marks law in the country.

Copyright is governed by the Copyright Act 1957 and the allied rules.

As a common law country, common law rights are recognised in India.

India is a signatory to the Paris Convention on Industrial Property, the WIPO Madrid Agreement Concerning the International Registration of Marks 1891 (the “Madrid Agreement”), the WIPO Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks 1989 (the “Madrid Protocol”) and the Nairobi Treaty.

India further abides by the Nice Agreement on the International Classification of Goods and Services, and the Vienna Classification, established by the Vienna Agreement.

For copyright, predominantly, India is a member of the Berne Convention of 1886, the Universal Copyright Convention of 1952 and the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement of 1995.

Foreign trade mark or copyright owners are subject to the same provisions as Indian proprietors. Specifically for copyright, India is a member of the Berne Convention of 1886, the Universal Copyright Convention of 1952, and the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement of 1995.

A “trade mark”, as defined by the Trade Marks Act 1999, is a mark capable of being graphically depicted and capable of differentiating one person’s goods or services from those of others, and may include the shape of goods or their packaging, as well as colour combinations. This definition of trade mark is inclusive and evolving.

The following are examples of trade marks that can be registered in India:

• any name (including the applicant’s or predecessor’s in business personal name or surname, or the person’s signature), which is not unusual for trade to use as a mark;
• letters or numerals, or any combination thereof;
• an invented word or any arbitrary dictionary word(s), which are not directly descriptive of the character or quality of the goods/services;
• devices, including fancy devices or symbols;
• slogans, domain names and monograms;
• combinations of colours or even a single colour in combination with a word or device;
• the shape of goods or their packaging;
• marks constituting a three-dimensional sign;
• sound marks when represented in conventional notation or described in words by being graphically represented;
• certification and collective trade marks; and
• service marks or trade dress.

As a first-to-use country, unregistered trade marks with prior usage can be protected under common law in India. The passing off of trade marks is a tort actionable under common law and is mainly used to protect the goodwill associated with a mark.

Statutory Trade Marks

The Indian trade mark statute provides special protection to certain marks: for instance, the Olympic Symbol, the Olympic motto, and the phrases Olympic(s), Olympian(s), and Olympiad(s) are not to be registered as trade marks in India without prior permission from the Olympic Committee.

On the basis of international, national and cross-border repute, the TMO also recognises well-known trade marks in India. Such trade marks that are “well known” are given greater protection under the law, which protects them from infringement and passing off in all the classes.

There are certain trade marks governed by charters, such as the one developed by the Scotch Whisky Association (SWA) and its members, which protects the SWA trade mark.

Similarly, a mark is prohibited for registration as a trade mark under the following conditions.

• It comprises any matter that is likely to offend the religious sensibilities of any class or segment of Indian residents.
• It “comprises or contains scandalous or obscene matter”.
• Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950 (12 of 1950).
• The registration of a word as a trade mark which is the commonly used and accepted name of any single chemical element or compound in respect of chemical substances or preparation is prohibited. Also, the law prohibits registration of a word which is declared by the World Health Organization and notified by the Registrar as an international non-proprietary name, or which is deceptively similar to such name.
• If an international non-proprietary name is erroneously accepted for registration in respect of pharmaceutical preparations, or if a prohibited or non-registrable trade mark is erroneously accepted for registration, the necessity to revoke/withdraw the acceptance of the application may arise.

Well-Known Trade Marks

Beyond jurisdictional protection of trade marks, Indian courts have taken into consideration factors such as transborder reputation and goodwill in protecting a trade mark that is used or registered in foreign countries, its reputation in foreign jurisdictions, and knowledge and information of the same within the public at large in India due to spill-over of its reputation through travel, the internet, advertisement or any other means.

Indian courts have consistently objected to the unlawful gain or profit from the reputation built by third parties around the world. Further, Indian courts have also objected to passing off of unregistered trade marks, including foreign trade marks.

In addition to declaration of trade marks as well-known through courts, the Trade Marks Act 1999 has special provisions which allow for declaration of trade marks basis evaluation of evidence by the TMO.

Distinctiveness

A mark is prohibited for registration as a trade mark under the following conditions.

• It comprises any matter that is likely to offend the religious sensibilities of any class or segment of Indian residents.
• It “comprises or contains scandalous or obscene matter”.
• Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950 (12 of 1950).
• The registration of a word as a trade mark which is the commonly used and accepted name of any single chemical element or compound in respect of chemical substances or preparation is prohibited. Also, the law prohibits registration of a word which is declared by the World Health Organization and notified by the Registrar as an international non-proprietary name, or which is deceptively similar to such name.
• If an international non-proprietary name is erroneously accepted for registration in respect of pharmaceutical preparations, or if a prohibited or non-registrable trade mark is erroneously accepted for registration, the necessity to revoke/withdraw the acceptance of the application may arise.

The Trade Marks Office can object/refuse an application on either absolute or relative grounds. Absolute grounds, which disqualify a mark from being registered (according to Section 9, Trade Marks Act), include:

• the mark is not distinctive;
• the mark is descriptive of associated goods and services;
• use of the mark has become customary and is bona fide used in established practices;
• the mark is deceptive and will cause confusion;
• use of the mark can offend the religious views of persons in India;
• the mark contains obscene or scandalous elements;
• the shape of a mark is a result of the nature of the goods themselves or is required for functional use.

In order to overcome Trade Mark Office objections raised under Section 9(1), the applicant may submit that the mark has acquired a distinctive character by virtue of its prior use. The use of a trade mark must be established by adequate evidence.

Relative Grounds of Refusal

Relative grounds for refusal of registration (according to Section 11, Trade Marks Act) include:

• deceptive similarity of the mark in question with the opponent’s registered mark;
• similarity of the mark in question with a mark which has prior use; and
• adoption of the mark in bad faith.

Objections raised under Section 11 can be overcome by the applicant by:

• removing the conflicting goods/services by way of amendment;
• obtaining consent from the proprietor of the cited mark(s) under Section 11(4);
• filing evidence to establish honest concurrent use to secure registration under Section 12;
• securing rectification of register excluding such goods/service of the same description from the specification of the cited mark, under Section 57; and
• dividing the application and allowing the objections-free part of the application to proceed further.

Section 28 of the Trade Marks Act 1999 states as follows.

“28. Rights conferred by registration

(1)       Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.

(2)       The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.

(3)       Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.”

Section 65A and Section 65B of the Copyright Act, 1957 allow for the same and the sections are replicated below.

“65A. Protection of technological measures

(1) Any person who circumvents an effective technological measure applied for the purpose of protecting any of the rights conferred by this Act, with the intention of infringing such rights, shall be punishable with imprisonment which may extend to two years and shall also be liable to fine.

(2) Nothing in sub-section (1) shall prevent any person from –

(a) doing anything referred to therein for a purpose not expressly prohibited by this Act:

Provided that any person facilitating circumvention by another person of a technological measure for such a purpose shall maintain a complete record of such other person including his name, address and all relevant particulars necessary to identify him and the purpose for which he has been facilitated; or

(b) doing anything necessary to conduct encryption research using a lawfully obtained encrypted copy; or

(c) conducting any lawful investigation; or

(d) doing anything necessary for the purpose of testing the security of a computer system or a computer network with the authorisation of its owner; or

(e) operator; or

(f) doing anything necessary to circumvent technological measures intended for identification or surveillance of a user; or

(g) taking measures necessary in the interest of national security.”   

“65B. Protection of Rights Management Information – Any person, who knowingly –

(i) removes or alters any rights management information without authority, or

(ii) distributes, imports for distribution, broadcasts or communicates to the public, without authority, copies of any work, or performance knowing that electronic rights management information has been removed or altered without authority, shall be punishable with imprisonment which may extend to two years and shall also be liable to fine:

Provided that if the rights management information has been tampered with in any work, the owner of copyright in such work may also avail of civil remedies provided under Chapter XII against the persons indulging in such acts.”

A trade mark can be registered on a “proposed-to-be-used” basis. There is no requirement for the mark to have been used in India to make it eligible for registration in India. If, however, use of the trade mark is not commenced for a period of five years, it can be a ground for removal of the trade mark from the Register of Trade Marks.

Having said that, the Honourable Supreme Court of India stated in a judgment that “use of a mark in regard to the goods is to be considered as a reference to the usage of the mark upon, or in any physical, or in any other relation whatsoever, and is not necessarily limited to physical use on goods or to the sale of goods bearing the trade mark”.

Predominantly there are three kinds of trade mark symbols:

• the unregistered trade mark, represented by the letters TM;
• the service trade mark, represented by the letters SM,  typically used by service sector brands; and
• the registered trade mark, represented by the symbol ®.

The TM and SM symbols can be used with a mark by anyone who is claiming rights to that mark, regardless of having an actual trade mark registration in place.

Trade mark also be protected by copyright or related rights. In India, the TMO is contacted prior to the registration of a copyrightable artistic work that can also be used as a trade mark for certification that there are no trade marks on record that are similar to the copyrightable artistic work. The artistic work copyright can be filed for registration only when the TMO confirms and certifies that there are no similar or identical trade marks on record. Likewise, a trade mark cannot be registered if it is in conflict with a copyrighted work.

While India’s trade mark and copyright regulations take into account potential conflicts, there is currently no practical mechanism either established by trade mark law or used by trade mark authorities in India to examine copyright records while assessing trade mark applications.

Section 13 of the Copyright Act, 1957 states as follows

“13.  Works in which copyright subsists

(1) Subject to the provisions of this section and the other provisions of this Act, copyright shall subsist throughout India in the following classes of works, that is to say –

(a) original literary, dramatic, musical and artistic works;

(b) cinematograph films; and

(c) sound recording.

(2) Copyright shall not subsist in any work specified in sub-section (1), other than a work to which the provisions of section 40 or section 41 apply, unless –

(i) in the case of a published work, the work is first published in India, or where the work is first published outside India, the author is at the date of such publication, or in a case where the author was dead at that date, was at the time of his death, a citizen of India;

(ii) in the case of an unpublished work other than a [work of architecture], the author is at the date of making of the work a citizen of India or domiciled in India; and

(iii) in the case of a work of architecture, the work is located in India.

Explanation – In the case of a work of joint authorship, the conditions conferring copyright specified in this sub-section shall be satisfied by all the authors of the work.

(3) Copyright shall not subsist –

(a) in any cinematograph film if a substantial part of the film is an infringement of the copyright in any other work;

(b) in any sound recording made in respect of a literary, dramatic or musical work, if in making the sound recording, copyright in such work has been infringed.

(4) The copyright in a cinematograph film or a record shall not affect the separate copyright in any work in respect of which or a substantial part of which, the film, or, as the case may be, the sound recording is made.

(5) In the case of a work of architecture, copyright shall subsist only in the artistic character and design and shall not extend to processes or methods of construction.”

Originality is the most vital qualification for copyright protection in India and it must be expressed in a tangible medium.

Section 17 of the Copyright Act provides information on who can be called as the first owner of copyright.

“17. First owner of copyright

Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein:

Provided that –

(a) in the case of a literary, dramatic or artistic work made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first owner of the copyright in the work in so far as the copyright relates to the publication of the work in any newspaper, magazine or similar periodical, or to the reproduction of the work for the purpose of its being so published, but in all other respects the author shall be the first owner of the copyright in the work;

(b) subject to the provisions of clause (a), in the case of a photograph taken, or a painting or portrait drawn, or an engraving or a cinematograph film made, for valuable consideration at the instance of any person, such person shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;

(c) in the case of a work made in the course of the author’s employment under a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;

(cc) in the case of any address or speech delivered in public, the person who has delivered such address or speech or if such person has delivered such address or speech on behalf of any other person, such other person shall be the first owner of the copyright therein notwithstanding that the person who delivers such address or speech, or, as the case may be, the person on whose behalf such address or speech is delivered, is employed by any other person who arranges such address or speech or on whose behalf or premises such address or speech is delivered;

(d) in the case of a Government work, Government shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;

(dd) in the case of a work made or first published by or under the direction or control of any public undertaking, such public undertaking shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;

Explanation –

For the purposes of this clause and section 28A, “public undertaking” means –

(i)       an undertaking owned or controlled by Government; or

(ii)       a Government company as defined in section 617 of the Companies Act, 1956 (1 of 1956); or

(iii) a body corporate established by or under any Central, Provincial or State Act;

(e) in the case of a work to which the provisions of section 41 apply, the international organisation concerned shall be the first owner of the copyright therein:

Provided that in case of any work incorporated in a cinematograph work, nothing contained in clauses (b) and (c) shall affect the right of the author in the work referred to in clause (a) of sub-section (1) of section 13.”

India also recognises the concept of joint authorship.

Section 14 of the Copyright Act, 1957 grants exclusive rights as follows.

“14. Meaning of copyright

For the purposes of this Act, copyright means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely –

(a) in the case of a literary, dramatic or musical work, not being a computer programme –

(i) to reproduce the work in any material form including the storing of it in any medium by electronic means;

(ii) to issue copies of the work to the public not being copies already in circulation;

(iii) to perform the work in public, or communicate it to the public;

(iv) to make any cinematograph film or sound recording in respect of the work;

(v) to make any translation of the work;

(vi) to make any adaptation of the work;

(vii) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in sub-clauses (i) to (vi);

(b) in the case of a computer programme –

(i) to do any of the acts specified in clause (a);

(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer programmer:

Provided that such commercial rental does not apply in respect of computer programmes where the programme itself is not the essential object of the rental;

(c) in the case of an artistic work –

(i) to reproduce the work in any material form including –

(A) the storing of it in any medium by electronic or other means; or

(B) depiction in three-dimensions of a two-dimensional work; or

(C) depiction in two-dimensions of a three-dimensional work;

(d) in the case of a cinematograph film –

(i) to make a copy of the film, including –

(A) a photograph of any image forming part thereof; or

(B) storing of it in any medium by electronic or other means;

(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the film;

(iii) to communicate the film to the public;

(e) in the case of a sound recording –

(i) to make any other sound recording embodying it including storing of it in any medium by electronic or other means;

(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the sound recording;

(iii) to communicate the sound recording to the public.

Explanation – For the purposes of this section, a copy which has been sold once shall be deemed to be a copy already in circulation.”

Moral rights are recognised in India and the provisions of Section 21 of the Act regulate that.

Sections 22–29 of the Copyright Act provide the terms for copyright protection as follows.

• For published literary, dramatic, musical and artistic works – life of the author and 60 years after the death of the author.
• For literary, dramatic, musical and artistic works (other than a photograph) which are published anonymously and pseudonymously – life of the author and 60 years after the death of the author.
• For posthumous works (literary, dramatic, musical works or engravings) – life of the author and 60 years after the death of the author.
• For cinematograph works – life of the author and 60 years after the death of the author.
• For sound recording – life of the author and 60 years after the death of the author.
• In case of government works – life of the author and 60 years after the death of the author.
• In case of works of public undertakings – life of the author and 60 years after the death of the author.
• In case of works of international organisations – life of the author and 60 years after the death of the author.

Use of the copyright symbol © can be made; however, it is not mandatory.

Currently, India has the Indian Reprographic Rights Organisation (IRRO), the Indian Singers Rights Association (ISRA) and the Indian Performing Rights Society Limited (IPRS), among others. Section 33 of the Copyright Act 1957 recognises the collection societies in India. Such societies may issues licences, collect fees for licences and distribute such fees among authors or other stakeholders.

It is not mandatory to seek copyright registration; however, securing a registration is beneficial in enforcement actions and also in controlling counterfeiting. A copyright register is available for inspection with the Copyright Office. Any person claiming to be the author of a work can seek protection. Foreign applicants require a local attorney.

The information required for filing a copyright application is as follows:

• name of the applicant;
• address of the applicant;
• nationality of the applicant;
• title of the work;
• language of the work;
• copy of the work;
• name of the creator/inventor/singer/composer of the work;
• address of the creator/inventor/author of the work;
• nationality of the creator/inventor/author of the work;
• NOC of the author/developer;
• POA (draft to be provided);
• whether the work is published; and
• if the work is published –
1. year of first publication;
2. country of first publication;
3. name, address and nationality of the publisher; or         
• if the work is published more than once, then –
1. year of subsequent publications;
2. countries of subsequent publications;
3. names, addresses and nationality of the publishers.

The government fee for filing a copyright action is as follows:

• artistic work: approx. USD25;
• software: approx. USD8;
• literary work: approx. USD8;
• cinematographic work: approx. USD61; and 
• sound recording: approx. USD25.

Incorrect information can be corrected; the relevant authority for this is the Copyright Office.

At the time of filing, barring a declaration, there is no other mechanism followed by the Copyright Office to assess originality and thereafter issue a refusal. The exception to this is an artistic work, as, prior to filing a copyright application for artistic work, a clearance is taken from the Trade Marks Office on similarity of the artwork with third-party trade marks.

No response is available for this jurisdiction.

In India, ownership of a trade mark is determined based on the first-to-use principle, and passing-off of any mark can be asserted regardless of registration status. Provided a mark lacks distinctiveness, it can nevertheless be registered under Section 9 of the Trade Marks Act if it has acquired distinctiveness and/or a secondary meaning through usage.

In India, the CGPDTM controls trade mark registrations and registered trade marks. On its website, the Trade Marks Registry offers a free online trade mark search. All trade mark applications submitted to the TMO in India, including all registered, applied, challenged and expired trade marks, are included in the database.

Although it is not required, conducting a trade mark search before applying to register a trade mark is advisable. Accessing the online trade marks database, as well as Registrar of Company records, domain searches and a basic internet search, can be used to do trade mark searches in India for word marks and device marks.

Where a person claiming to be the owner of several trade marks in respect of like goods/services – which, while substantially resembling each other in the material particulars thereof, yet differ in respect of matter of a non-distinctive character which does not substantially affect the identity of the trade mark – seeks to register those trade marks, they may be registered as a series in one registration.

The registration of a trade mark is valid for a period of ten years and renewable every ten years, in accordance with the provisions of the Trade Marks Act and Trade Mark Rules.

Any natural person, legal person or other organisation that claims to be the owner of a trade mark can apply for trade mark registration. According to the definition of a “trade mark”, a mark is registrable if it is capable of being represented graphically and of distinguishing the goods or services of one party from those of another. This can include the shape of the product, its packaging, and a colour or colour combination. If the mark is in the form of a label or device, at least one clear print of the mark would be required.

An exclusive number and a date are assigned to a trade mark application after it is submitted. It is taken in turn and analysed based on the priority of filing. The examination process includes assessing inherent registrability, acquired distinctiveness and prior rights. If no objections are raised, the trade mark is published in the Trade Marks Journal in order to invite public opposition. The registration certificate is issued if no objections are received within four months of the publication.

The following information and documentation must be submitted in a trade mark registration application:

• applicant’s name and address;
• state or country of incorporation;
• a description of the trade mark;
• a representation of the trade mark;
• a list of the relevant goods or services;
• the power of attorney;
• the dates of first use – if use is claimed, an affidavit of use and documentary evidence must be filed electronically;
• a statement of intention to use;
• the official filing fee;
• a priority claim and documents, where priority of an earlier application is claimed; and
• if the applicant is not domiciled in this jurisdiction, a local service address must be provided.

An agent filing to register a mark on behalf of the owner requires a simple executed power of attorney. Multi-class trade mark applications are allowed in India.

A trade mark can be registered on a “proposed-to-be-used” basis. There is no requirement for the mark to have been used in India to make it eligible for registration in India. If, however, use of the trade mark is not commenced for a period of five years, it can be a ground for removal of the trade mark from the Register of Trade Marks.

A trade mark can be denied registration under Section 11(1) of the Trade Marks Act 1999 if there is a likelihood of public confusion with an earlier trade mark, including the likelihood of association with the earlier trade mark, and if any of the following relative grounds (based on prior rights) apply:

• the mark is identical to or comparable to an earlier trade mark in the same or similar goods or services sector; or
• the mark is similar to an earlier trade mark in the same or similar goods or services sector.

However, one way to overcome such objections on prior similar marks in the register is by obtaining consent from the proprietor of the cited mark(s).

Third parties are not allowed to file observations during the registration process, but they can file oppositions once the mark is published in the Trade Marks Journal, within a period of four months. This opposition proceeding can only be filed before the TMO and cannot be taken to the court directly. If the opposition is successful, the registration of the trade mark will be refused.

A notice of opposition to the registration of a trade mark may be filed by “any person” regardless of any commercial or personal interest in the matter or a prior registered trade mark owner, on absolute or relative grounds. The question of bona fides of the opponent does not arise.

A correction of any errors in the application of any amendment in the application is permitted by the Trade Marks Act. However, no request for correction/amendment shall be allowed which seeks substantial alteration in the application for registration of a trade mark.

The Trade Marks Act 1999 facilitates the provision of filing a division application to the applicant. This request to divide the trade mark application can be made by the applicant, following which each divided application is treated as a separate application, with the same filing date. A separate new serial number is allotted to the divided application and they are linked by cross-reference with the initial application.

The Trade Marks Act 1999 enumerates numerous offences in relation to falsifying and falsely applying a trade mark, making or possessing instruments for falsifying trade marks, applying false trade descriptions and so on. The punishments for these offences vary, but the maximum punishment can be as severe as imprisonment for up to three years, with or without a fine.

It is possible to correct the information, except in the trade mark if it is considered as substantial alteration.

The Trade Marks Office can object/refuse an application on either absolute or relative grounds.

Absolute grounds, which disqualify a mark from being registered (according to Section 9, Trade Marks Act), include:

•       the mark is not distinctive;

•       the mark is descriptive of associated goods and services;

•       use of the mark has become customary and is bona fide use in established practices;

•       the mark is deceptive and will cause confusion;

•       use of the mark can offend the religious views of persons in India;

•       the mark contains obscene or scandalous elements; and

•       the shape of a mark is a result of the nature of the goods themselves or is required for functional use.

Relative grounds for refusal of registration (according to Section 11, Trade Marks Act) include:

• deceptive similarity of the mark in question with the opponent’s registered mark;
• similarity of the mark in question with a mark which has prior use; and
• adoption of the mark in bad faith.

In order to overcome Trade Mark Office objections raised under Section 9(1), the applicant may submit that the mark has acquired a distinctive character by virtue of its prior use. The use of a trade mark must be established by adequate evidence.

Objections raised under Section 11 can be overcome by the applicant by:

• removing the conflicting goods/services by way of amendment;
• obtaining consent from the proprietor of the cited mark(s) under Section 11(4);
• filing evidence to establish honest concurrent use to secure registration under Section 12;
• securing rectification of register excluding such goods/service of the same description from the specification of the cited mark, under Section 57; or
• dividing the application and allowing the objections-free part of the application to proceed further.

The appeals from the Registrar’s orders will have to be filed before the respective Intellectual Property Divisions.

India is a signatory to the WIPO Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks 1989 (the “Madrid Protocol”).

The applicant must be an Indian national, domiciled in India, or have a real and effective business or commercial establishment in India in order to obtain an international trade mark registration in India.

Furthermore, the applicant must have an application for a national (Indian) trade mark or a trade mark registration with the Indian TMO. The international application will be based on this national trade mark application/registration.

The opposition window remains open for a period of four months from the date of advertisement of trade mark application in the Trade Marks Journal. This time period cannot be extended under any circumstance.

There are no specified grounds of opposition under the statutory law, but an opposition is broadly based on absolute or relative grounds as stated under the Trade Marks Act 1999. Besides this, an opponent could also raise objection with regard to the proprietorship of the trade mark opposed, prohibitions contained in Section 13, absence of consent in writing in Section 14, etc.

Any person may give a notice of opposition to the registration of a trade mark, regardless of the opponent having any commercial or personal interest in the matter or being a prior registered trade mark owner. The question of bona fides of the opponent does not arise. The official government fee to file an opposition against any advertised mark prescribed fee is INR2,700.

Once a notice of opposition is filed, the procedure is as follows:

• the TMO will serve a copy of the notice of opposition to the applicant;
• following the service of the notice of opposition, the applicant is given two months to file a counterstatement outlining its position in order to overcome the grounds of opposition;
• the applicant’s trade mark is deemed abandoned for non-prosecution if it fails to file a counterstatement within two months of receiving the opposition;
• alternatively, post-filing of the counterstatement, the opposition will proceed to the evidence stage; and
• upon completion of the evidence stage, a hearing notice date is generated and, after hearing the parties and considering the evidence, the TMO then gives its verdict on whether the trade mark is accepted for registration or refused.

If the parties are not satisfied with the TMO’s decision in opposition proceedings, then the decision can be challenged by either of the parties by filing an appeal before the Intellectual Property Division.

There is no statutory limitation or time period within which a revocation/cancellation action must be filed.

A revocation/cancellation of a trade mark can broadly be filed under the following circumstances:

• non-use – under Section 47, a trade mark which is not used within five years three months of its registration becomes liable for removal, either completely or in respect of those goods or services for which the mark has not been in use; or
• contravention of provisions – under Section 57, revocation/cancellation can be commenced against a trade mark on the ground of any contravention or failure to observe the conditions entered on the register, or by absence or omission from the register of any entry or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register.

Any aggrieved person may make an application before the TMO or the Intellectual Property Division for removal of a registered trade mark or for cancelling the registration of the trade mark and for rectification of the Register, as such.

Persons aggrieved are generally persons who are in some way or another substantially interested in having the mark removed from the register, or persons who would be substantially damaged if the mark remained on the register, perhaps as it would affect their own rights in a trade mark or any like reason. Hence, in a cancellation/revocation petition, the person aggrieved needs to file a statement of case establishing the reason behind the petition.

An application for cancellation/rectification of a registered trade mark can be filed before the TMO or the Intellectual Property Division in the prescribed manner and with the requisite fee.

A partial revocation/cancellation of a trade mark application is also possible in certain cases. For instance, if the registration of a trade mark covered a wide specification of goods and it is found that the trade mark has been actually used only in relation to some of those goods, it is open to the TMO to require the specification of goods or services for which the trade mark was registered to be rewritten in order to achieve the required degree of rectification.

There is no explicit provision for amendment given in revocation/cancellation proceedings. However, in case of a partial revocation/cancellation petition – as explained in 6.5 Partial Revocation/Cancellation – amendment to limit the specification could be directed.

Under Section 124 of the Trade Marks Act, the defendant in an infringement suit can seek a stay of the infringement proceedings. For this, the defendant must contest the registration of the mark that is the subject of infringement proceedings in order to obtain a stay.

If any trade mark is registered without any sufficient cause (ie, if registration was obtained by fraud or misrepresentation of facts or the mark registered was similar to an already registered trade mark), then cancellation proceedings can be initiated for the impugned mark under Section 57 of the Trade Marks Act 1999.

The Trade Marks law states that if the validity of an assignment is disputed, the TMO has the authority to refuse to register the assignment until the parties’ rights are established by a competent court.

The assignment or transmission where multiple exclusive rights would be created in more than one person is restricted, as is the separation of rights on a territorial basis and the creation of rights in various individuals in different parts of India. The TMO, on the other hand, has the authority to allow assignment if it is considered to be in the public interest.

Where there is an assignment without goodwill of business, it will not take effect unless the assignor obtains directions of the TMO and advertises the assignment as per directions. Furthermore, certification trade marks can only be assigned subject to consent of the TMO.

Before recording an assignment that involves the transmission of money outside India, the consent of an authority specified in any law for the transmission of money overseas must be produced.

A licence does not have to be registered with the Trade Marks Office. However, it is advisable to do so since registering the licence gives the licensee statutory rights of action in the event of violation. There are two types of licences: exclusive and non-exclusive.

Quality control monitoring, trade mark usage, grant, indemnity and termination are clauses that must be included in a licence agreement to ensure that the licensor maintains quality control.

A trade mark can be assigned or transmitted with or without goodwill in respect of all or some of the goods or services for which it was registered. Such an assignment must be recorded in the Trade Marks Register in the case of a registered trade mark.

Any person who acquires rights to a registered trade mark by assignment or transmission should apply for registration of the assignment/transmission in the manner stipulated by the Act and Rules. Furthermore, registering a licence with the Trade Marks Office is optional.

No response is available for this jurisdiction.

The Trade Marks Act 1999 does not require the filing of a document that creates trade mark security. A procedure or precise form for documenting a security interest, such as a mortgage, is not specified under the Act. However, if necessary, a document with a simple cover letter can be filed with the TMO for evidentiary purposes. If the owner of the trade mark under the security or charge changes, the change must be registered with the TMO. If no trade mark application has been filed or no trade mark registration has been secured in India, no papers are required.

It is usually a better practice to submit the paperwork with the Registrar of Companies as part of board resolutions authorising the creation of security or vested interests. In fact, there have been many cases in India where banks have afforded advance money on the basis of the creation of security interest in a trade mark.

The Limitation Act 1963 sets out the statute of limitations for filing infringement actions. In most civil cases, the statute of limitations runs for three years from the date of the first breach of rights. An infringement proceeding, on the other hand, necessitates the use of a deceptively similar mark by the defendant. Because each instance of usage of such a mark gives rise to a new cause of action, the three-year limit does not apply in such cases (Timken Company v Timken Services Private Ltd, 2004 (28) PTC 121 SC).

Based on the level of infringement, various strategies could be devised on a case-by-case basis, which could include obtaining and executing legal proceedings, serving the opposite party with cease-and-desist notices, and/or initiating pre-litigation mediation proceedings.

The trade mark owner can pursue infringement actions or passing off in the competent court for civil relief such as:

• an interlocutory, temporary or ad interim injunction;
• a permanent or perpetual injunction;
• a Mareva injunction (freezing injunction);
• an Anton Piller order;
• a John Doe order;
• damages or accounts of profits; and
• delivery up and destruction.

Criminal and administrative reliefs are also available under the Act.

Section 29 of the Trade Marks Act provides an exhaustive list of situations in which a registered mark can be infringed. Similarly, unregistered trade marks are protected as part of India’s common law regime. An action for passing off can always be instituted against the misuse of an unregistered trade mark.

Section 27 of the Trade Marks Act specifically reinforces this common law remedy by stating that the right to invoke a claim for passing off remains undisturbed by the statute.

The Trade Marks Act, Section 29, gives a comprehensive list of scenarios in which a trade mark can be violated. One of the essential requirements of infringement is that the infringing mark is used in the course of business by a third party.

Further tests for infringement include the following:

• use of an identical or deceptively similar mark on goods or services which are the same as those covered by the scope of the former trade mark’s registration;
• use of an identical or similar mark on goods and services that are identical or similar to the goods/services associated with the registered trade mark, in a way that is likely to confuse the public into thinking that the original mark and the offending mark are associated with one another;
• use of a mark, even in relation to goods or services which are not covered in the scope of the registration, provided that the registered trade mark has a reputation in India – the reputation also must be such that misuse by the third party denigrates the distinctiveness of the mark; and
• use of mark, or a part of the mark, as part of the corporate name/trading name of an entity.

A trade mark infringement action can be initiated by either the registered proprietor or the registered user of the trade mark. Primarily, the registered proprietor of a trade mark has the supreme right to institute lawsuits for infringement against third parties in its name. Further, an entity recognised as having the right to file infringement lawsuits is a registered user of a trade mark. A registered user can file a lawsuit in its own name, subject to an agreement with the registered proprietor.

A registered user’s status must be documented by the filing of a joint application by the user and the proprietor (Section 49, Trade Marks Act). The exclusive or non-exclusive licensee’s status as a registered proprietor will not be recognised if they do not register with the TMO.

India’s legal system permits representative/class actions. If the parties with the same cause of action are numerous, such parties may recommend a representative or representatives to participate in the action. A registered trade mark holder can institute a lawsuit and claim a joint cause of action, which includes a claim for infringement, as well as passing off/unfair competition. There is also a new procedure in India, wherein, if a trade mark is pledged or there are NLCAT/bankruptcy proceedings going on against a proprietor, a consortium of lenders can take action.

While there are no mandatory requirements before initiating a lawsuit, issuing a demand letter/cease-and-desist notice to a suspected infringer might assist the infringement without resorting to litigation, thus accelerating the process. Before taking action, it is also a good idea to perform necessary investigations.

Section 142 of the Trade Marks Act, on the other hand, protects a person from unjustified and groundless threats of infringement by allowing courts to declare that the claims (threats) of infringement and breach of rights are unjustified and groundless.

In India, lawsuits for infringement and passing off, among other claims, can be filed before District Courts and cannot be heard in any court lower than a District Court. Further, a suit relating to trade mark dispute can also be brought before a High Court having original jurisdiction (ie, the High Courts of Delhi, Mumbai, Chennai and Kolkata). Legal practitioners (registered under the Central Advocates Act 1961) or registered trade mark agents can represent parties. Parties can also present their cases in person (Section 145, Trade Marks Act).

The Indian legal system does not employ a jury system. Judges adjudicate all issues, from the issuance of ex parte orders to the ultimate decision.

In general, the stages of a trade mark infringement proceeding are the same as those of any civil commercial litigation:

• ex parte orders and filing/service of summons to the opposite parties;
• both parties must file pleadings (written statement, replication, responses to applications, etc);
• interim application arguments (including application seeking injunction);
• the framing of issues that parties must prove during trial;
• trial; and
• the closing arguments.

At the court of first instance, a single judge oversees all phases. However, in order to alleviate the load on judges and clear the backlog of ongoing cases, the court might appoint commissioners (who are usually former judges) who can help ensure a smooth trial.

Section 142 of the Trade Marks Act protects a person against groundless threats of infringement by enabling courts to declare that the claims (threats) of infringement and violation of rights are unjustified and groundless.

No response is available for this jurisdiction.

The development of trade mark law in India is heavily inspired by judicial pronouncements. High Court decisions (with appellate and writ jurisdiction) bind lower courts in their respective jurisdictions and are an important source of trade mark law. Decisions of the TMO also have a major role to play.

As with other trade mark policies, the enforcement of trade mark counterfeiting laws serves to safeguard potential consumers. The Customs Act of 1962, read with the Intellectual Property Rights (Imported Goods) Enforcement Rules, make it illegal to import goods that infringe on intellectual property rights. Counterfeit goods are intrinsically prohibited under the Customs Act, so there is authority for customs to halt the clearance of goods on their own initiative, as well as where there are prima facie evident or reasonable grounds to believe that the import of specific goods may infringe on intellectual property rights.

Trade mark counterfeiting is not defined or addressed in the Trade Marks Act of 1999. However, Section 102 of the Act, which deals with “falsifying and falsely applying trade marks”, covers such counterfeiting.

In addition to trade mark infringement and passing off activities, a trade mark owner may seek criminal action against trade mark counterfeiting (civil actions). Sections 103 and 104 of the Trade Marks Act of 1999 make it illegal to use and sell goods and services under false trade marks. The sentence might range from six months to three years in prison, with a fine.

Further, even a quia timet action can be taken against counterfeits to restrain them in case of an anticipated risk.

In a landmark decision, with effect from April 2021, the country abolished the Intellectual Property Appellate Board (IPAB) and transferred jurisdiction of adjudicating appeals to the High Courts. Subsequently, the Delhi High Court formed a dedicated IP Division to formalise and hear IP matters that had been pending before the IPAB. The Intellectual Property Division of Delhi High Court deals with matters relating to intellectual property rights, and aggrieved parties can file their proceedings there.

A trade mark registration establishes a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration.

In accordance with the Commercial Courts Act 2015, trade mark litigation is governed by the same rules that apply to commercial disputes. At the time of filing the suit, all essential documents must be filed with the claim. In a civil suit for infringement, a plaintiff can seek to obtain information, documentation and other material from the adversary. A party may request:

• interrogatories – litigants can issue interrogatories to third parties with the court’s authorisation;
• inspection – parties have the right to examine any documentation evidence used in the case, and if this is refused then the denying party may lose the right to rely on the document in question; and
• document production – any party can demand that a party produce document(s) that are relevant to any issue in the suit, and if certain documents are not produced then the court may draw a negative inference.

There is no statutory regulation or administration of survey evidence. To support their positions on consumer confusion, secondary significance, etc, the parties have relied on survey evidence. The judge may appoint amicus curiae technical experts or scientific advisers. Such specialists, on the other hand, serve simply as consultants or expert witnesses and are not members of a judging panel.

Survey evidence should not be relied upon unless interviewees are cross-examined (PP Hamsa v Syed Agencies (1990 (2) KLJ 555)). Survey evidence assists the court, particularly during preliminary/interlocutory injunction proceedings (Ayushakti Ayurved Pvt Ltd v Hindustan Lever Ltd 2004 (28) PTC 59 Bom).

Investigation fees, attorneys’ fees and expenditures, notarisation fees, translation fees and court fees are all examples of usual costs. After a first instance decision, litigation costs, including attorneys’ fees, are recoverable. However, there is no guarantee that a party against whom an injunction is obtained will have to bear the expenses of litigation. The court has complete discretion over whether or not to award expenses.

Criminal Remedies

The Trade Marks Act 1999 criminalises certain actions that violate rights in a trade mark and provides for stringent remedies against such offences. For example:

• fabricating and falsely applying a trade mark;
• manufacturing or having instruments for falsifying trade marks;
• applying a fake trade description; and
• applying a false indication of country of origin.

Trade mark infringement is a non-bailable offence and it is punishable with imprisonment of at least six months, extendable to three years; it can also be imposed with a fine.

Administrative Remedies

Opposition to a similar mark, rectification of a registered mark, and recordal with customs to prevent the import or export of products carrying the infringed trade mark are among the administrative remedies available.

Defences available against infringement claims include the following:

• delay and laches;
• acquiescence;
• honest and good-faith adoption and use;
• differences in goods and services;
• the nature of the product;
• pricing; and
• the absence of confusion or deception.

Acquiescence may be considered a form of delay although it has a more active element of knowledge of third-party rights coupled with delay.

Section 52 of the Copyright Act details the provisions that allow for fair use.

“52. Certain acts not to be infringement of copyright

(1) The following acts shall not constitute an infringement of copyright, namely –

(a) a fair dealing with any work, not being a computer programme, for the purpose of –

(i) private or personal use, including research;

(ii) criticism or review, whether of that work or of any other work;

(iii) the reporting of current events and current affairs, including the reporting of a lecture delivered in public;

Explanation – The storing of any work in any electronic medium for the purposes mentioned in this clause, including the incidental storage of any computer programme which is not itself an infringing copy for the said purposes, shall not constitute infringement of copyright;

(aa) the making of copies or adaptation of a computer programme by the lawful possessor of a copy of such computer programme, from such copy –

(i) in order to utilise the computer programme for the purpose for which it was supplied; or

(ii) to make back-up copies purely as a temporary protection against loss, destruction or damage in order only to utilise the computer programme for the purpose for which it was supplied;

(ab) the doing of any act necessary to obtain information essential for operating interoperability of an independently created computer programme with other programmer by a lawful possessor of a computer programme provided that such information is not otherwise readily available;

(ac) the observation, study or test of functioning of the computer programme in order to determine the ideas and principles which underline any elements of the programme while performing such acts necessary for the functions for which the computer programme was supplied;

(ad) the making of copies or adaptation of the computer programme from a personally legally obtained copy for non-commercial personal use;

(b) the transient or incidental storage of a work or performance purely in the technical process of electronic transmission or communication to the public;

(c) transient or incidental storage of a work or performance for the purpose of providing electronic links, access or integration, where such links, access or integration has not been expressly prohibited by the right holder, unless the person responsible is aware or has reasonable grounds for believing that such storage is of an infringing copy:

Provided that if the person responsible for the storage of the copy has received a written complaint from the owner of copyright in the work, complaining that such transient or incidental storage is an infringement, such person responsible for the storage shall refrain from facilitating such access for a period of twenty-one days or till he receives an order from the competent court refraining from facilitation access and in case no such order is received before the expiry of such period of twenty-one days, he may continue to provide the facility of such access;

(d) the reproduction of any work for the purpose of a judicial proceeding or for the purpose of a report of a judicial proceeding;

(e) the reproduction or publication of any work prepared by the Secretariat of a Legislature or, where the legislature consists of two Houses, by the Secretariat of either House of the Legislature, exclusively for the use of the members of that Legislature;

(f) the reproduction of any work in a certified copy made or supplied in accordance with any law for the time being in force;

(g) the reading or recitation in public of reasonable extracts from a published literacy or dramatic work;

(h) the publication in a collection, mainly composed of non-copyright matter, bona fide intended for instruction use, and so described in the title and in any advertisement issued by or on behalf of the publisher, of short passages from published literary or dramatic works, not themselves published for such use in which copyright subsists:

Provided that not more than two such passages from works by the same author are published by the same publisher during any period of five years;

Explanation – In the case of a work of joint authorship, references in this clause to passages from works shall include references to passages from works by any one or more of the authors of those passages or by any one or more of those authors in collaboration with any other person;

(i) the reproduction of any work –

(i) by a teacher or a pupil in the course of instruction; or

(ii) as part of the question to be answered in an examination; or

(iii) in answers to such questions;

(j) the performance, in the course of the activities of an educational institution, of a literary, dramatic or musical work by the staff and students of the institution, or of a cinematograph film or a sound recording if the audience is limited to such staff and students, the parents and guardians of the students and persons connected with the activities of the institution or the communication to such an audience of a cinematograph film or sound recording;

(k) the causing of a recording to be heard in public by utilising it –

(i) in an enclosed room or hall meant for the common use of residents in any residential premises (not being a hotel or similar commercial establishment) as part of the amenities provided exclusively or mainly for residents therein; or

(ii) as part of the activities of a club or similar organisation which is not established or conducted for profit;

(l) the performance of a literary, dramatic or musical work by an amateur, club or society, if the performance is given to a non-paying audience, or for the benefit of a religious institution;

(m) the reproduction in a newspaper, magazine or other periodical of an article on current economic, political, social or religious topics, unless the author of such article has expressly reserved to himself the right of such reproduction;

(n) the storing of a work in any medium by electronic means by a non-commercial public library, for preservation if the library already possesses a non-digital copy of the work;

(o) the making of not more than three copies of a book (including a pamphlet, sheet of music, map, chart or plan) by or under the direction of the person in charge of a non-commercial public library for the use of the library if such book is not available for sale in India;

(p) the reproduction, for the purpose of research or private study or with a view to publication, of an unpublished literary, dramatic or musical work kept in a library, museum or other institution to which the public has access:

Provided that where the identity of the author of any such work or, in the case of a work of joint authorship, of any of the authors is known to the library, museum or other institution, as the case may be, the provisions of this clause shall apply only if such reproduction is made at a time more than sixty years from the date of the death of the author or, in the case of a work of joint authorship, from the death of the author whose identity is known or, if the identity of more authors than one is known from the death of such of those authors who dies last;

(q) the reproduction or publication of –

(i) any matter which has been published in any Official Gazette except an Act of a Legislature;

(ii) any Act of a Legislature subject to the condition that such Act is reproduced or published together with any commentary thereon or any other original matter;

(iii) the report of any committee, commission, council, board or other like body appointed by the Government if such report has been laid on the Table of the Legislature, unless the reproduction or publication of such report is prohibited by the Government;

(iv) any judgment or order of a court, tribunal or other judicial authority, unless the reproduction or publication of such judgment or order is prohibited by the court, the tribunal or other judicial authority, as the case may be;

(r) the production or publication of a translation in any Indian language of an Act of a Legislature and of any rules or orders made thereunder –

(i) if no translation of such Act or rules or orders in that language has been previously been produced or published by the Government; or

(ii) where a translation of such Act or rules or orders in that language has been produced or published by the Government, if the translation is not available for sale to the public:

Provided that such translation contains a statement at a prominent place to the effect that the translation has not been authorised or accepted as authentic by the Government;

(s) the making or publishing of a painting, drawing, engraving or photograph of a work of architecture or the display of a work of architecture;

(t) the making or publishing of a painting, drawing, engraving or photograph of a sculpture, or other artistic work falling under sub-clause (iii) of clause (c) of section 2, if such work is permanently situate in a public place or any premises to which the public has access;

(u) the inclusion in a cinematograph film of –

(i) any artistic work permanently situate in a public place or any premises to which the public has access; or

(ii) any other artistic work, if such inclusion is only by way of background or is otherwise incidental to the principal matters represented in the film;

(v) the use by the author of an artistic work, where the author of such work is not the owner of the copyright therein, of any mould, cast, sketch, plan, model or study made by him for the purpose of the work:

Provided that he does not thereby repeat or imitate the main design of the work;

(w) the making of a three-dimensional object from a two-dimensional artistic work, such as a technical drawing, for the purposes of industrial application of any purely functional part of a useful device;

(x) the reconstruction of a building or structure in accordance with the architectural drawings or plans by reference to which the building or structure was originally constructed:

Provided that the original construction was made with the consent or licence of the owner of the copyright in such drawings and plans;

(y) in relation to a literary, dramatic, artistic or musical work recorded or reproduced in any cinematograph film, the exhibition of such film after the expiration of the term of copyright therein:

Provided that the provisions of sub-clause (ii) of clause (a), sub-clause (i) of clause (b) and clauses (d), (f), (g), (m) and (p) shall not apply as respects any act unless that act is accompanied by an acknowledgment –

(i) identifying the work by its title or other description; and

(ii) unless the work is anonymous or the author of the work has previously agreed or required that no acknowledgment of his name should be made, also identifying the author;

(z) the making of an ephemeral recording, by a broadcasting organisation using its own facilities for its own broadcast by a broadcasting organisation of a work which it has the right to broadcast; and the retention of such recording for archival purposes on the ground of its exceptional documentary character;

(za) the performance of a literary, dramatic or musical work or the communication to the public of such work or of a sound recording in the course of any bona fide religious ceremony or an official ceremony held by the Central Government or the State Government or any local authority;

Explanation – For the purpose of this clause, religious ceremony includes a marriage procession and other social festivities associated with a marriage;

(zb) the adaption, reproduction, issue of copies or communication to the public of any work in any accessible format, by –

(i) any person to facilitate persons with disability to access to works including sharing with any person with disability of such accessible format for private or personal use, educational purpose or research; or

(ii) any organisation working for the benefit of the persons with disabilities in case the normal format prevents the enjoyment of such works by such persons:

Provided that the copies of the works in such accessible format are made available to the persons with disabilities on a non-profit basis but to recover only the cost of production:

Provided further that the organisation shall ensure that the copies of works in such accessible format as used only by persons with disabilities and takes reasonable steps to prevent its entry into ordinary channels of business;

Explanation – For the purposes of this sub-clause, “any organisation” includes and organisation registered under section 12A of the Income-tax Act, 1961 (43 of 1961) and working for the benefit of persons with disability or reorganised under Chapter X of the Persons with Disabilities (Equal Opportunities, Protection or Rights and full Participation) Act, 1995 (1 of 1996) or receiving grants from the government for facilitating access to persons with disabilities or an educational institution or library or archives recognised by the Government;

(zc) the importation of copies of any literary or artistic work, such as labels, company logos or promotional or explanatory material, that is purely incidental to other goods or products being imported lawfully.

(2) The provisions of sub-section (1) shall apply to the doing of any act in relation to the translation of a literary, dramatic or musical work or the adaptation of a literary, dramatic, musical or artistic work as they apply in relation to the work itself.”

No response is available for this jurisdiction.

The Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules 2021 regulate online intermediaries. The Rules stem from the Information Technology Act 2000.

Online intermediaries are granted safe harbour protection under Section 79 of the Act if they comply with specific obligations and due diligence requirements set forth in the Rules. If these Rules are violated, or if the intermediaries choose to act in defiance of a court or government order, they lose their safe harbour protection and become liable, along with the true source of the infringing content.

The Guidelines mandate that all intermediaries exercise due diligence, which includes due diligence in the event of a trade mark or proprietary rights infringement. Further, where a claim of infringement is brought to an online intermediary’s knowledge, the Rules require the intermediary to remove any restricted/infringing content.

In India, parallel importation is intricately linked to the principle of exhaustion of rights under the Trade Marks Act 1999. Only if the parallel imported products are materially different from those sold directly can a trade mark owner file suit, including for passing off, falsification and infringement.

No response is available for this jurisdiction.

Civil remedies can be pursued by bringing a complaint in a competent court for infringement or passing off. There are several types of civil remedy available, such as:

• a Mareva injunction (freezing injunction);
• an Anton Piller order;
• a John Doe order;
• a permanent or perpetual injunction;
• damages or accounts of profits; and
• delivery up and destruction.

Preliminary or temporary relief is available and is frequently requested in trade mark infringement lawsuits.

The Code of Civil Procedure (1908) makes it easier to file an application for an injunction prohibiting a defendant from using a mark that infringes on a claimant’s rights, for example. A claimant must show:

• a prima facie case;
• irreparable harm and injury to its activities in order to obtain a preliminary or temporary injunction (good will, market share, etc) – the injury must be severe enough that monetary compensation from the defendants would not be enough to compensate the victim;
• the balance of convenience dictates that issuing an injunction is more equitable than refusing to do so.

The following are defences available to infringers:

• delay and laches;
• acquiescence;
• honest and good-faith adoption and use;
• distinctions in products and services;
• the nature of the product;
• pricing; and
• the absence of confusion or deception.

Acquiescence may be considered a form of delay although it has a more active element of knowledge of third-party rights coupled with delay.

Various factors are used to evaluate and provide monetary remedies. In general, damages are granted in trade mark litigation in one of three ways, as detailed below.

• Actual/compensatory damages are based on the actual loss suffered/actual profits gained as a result of the infringement and must be proven by the claimant.
• Punitive damages, as defined under the Act, are issued in the form of fines. Where the court decides that the amount of compensatory damages awarded is not appropriate to the magnitude of the defendant’s actions, punitive damages are issued. In such cases, the court awards damages in addition to compensatory damages that have previously been calculated.
• Token/minor damages are awarded in the event that a dispute is resolved quickly.

Court expenses, length of arguments, duration of trial, use of senior lawyers, and other factors all affect costs. After a first instance decision, litigation costs, including attorneys’ fees, are recoverable. However, there is no guarantee that a party against whom an injunction is obtained will have to bear the expenses of litigation. The court has complete discretion over whether or not to award/impose costs of the proceedings.

Courts sometimes require parties to give an estimate of costs they intend to incur throughout trial and subsequent phases of the case, since costs play such an important role in defining the parties’ strategy to litigation. This also makes determining the amount of fees to be paid easy for the court.

Even if a defendant has not been given prior notice of the suit or the claimant’s grievance, a temporary ex parte injunction can be granted (Section 135(2) of the Trade Marks Act).

Claimants obtain ex parte injunctions only in exceptional situations and not as a matter of right. The court must be convinced that the claimant’s interests will be severely harmed if the request is denied. The behaviour of a claimant, on the other hand, is a key aspect in assessing whether or not an injunction can be granted. Temporary injunctions are likely to be denied if the claimant takes too long to allege a violation of its rights.

Customs officers can enforce IP rights over imported goods under the IP Rights (Imported Goods) Enforcement Rules 2007. The Rules provide a step-by-step process for rights-holders to register their IP with customs officials. This registration imposes an administrative duty on customs to protect the rights-holders against violation of their IP rights.

Rights-holders can also seek remedies aimed at preventing unlawful product imports and exports. The Customs Act 1962 recognises the government’s authority to prohibit the import and/or export of products in order to preserve rights protected by the Trade Marks Act. In accordance with the TRIPS Agreement, India has also established the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007, which authorise customs officers to enforce IP rights over imported goods.

In 2016, the Trade Marks Office’s CGPDTM launched a pilot programme to deal with oppositions and rectification processes, with the goal of settling existing issues through mediation/conciliation.

A referral to the TMO can be made, which would then assign the matter to the relevant authority for mediation. Broadly speaking, mediation can be employed in the following situations:

• disputes over the licensing of IP rights;
• disputes over infringement of IP rights;
• prosecutions for trade mark opposition and invalidation; and
• disputes over trade mark ownership.

Although most matters involving intellectual property rights are addressed through court action, alternative dispute resolution mechanism is also becoming an effective and appropriate method of settling IP disputes.

Mediation has become a popular alternative since it gives both parties’ interests equal weight and gives them control over the settlement process. Other benefits include confidentiality and a faster resolution without jeopardising either party’s reputation.

The Delhi High Court Mediation Centre has been proactive in resolving disputes through mediation. An example of settlement through ADR was witnessed in the case of Bawa Masala v Baba Masala Co Pvt Ltd, where disputes were resolved via mediation.

Under Section 124 of the Trade Marks Act, the defendant in an infringement suit can seek a stay of the infringement proceedings. To do this, the defendant must contest the registration of the mark that is the subject of infringement proceedings. The alternatives are as follows.

• Pre-suit challenge – the suit must be stayed if the defendant began the rectification processes before the infringement suit was filed.
• Post-suit challenge – if the defendant intends to pursue rectification after being sued, it must first satisfy the court (on a prima facie basis) that the registration should be invalidated. Once the court is satisfied that the challenge to validity has been established, the court will issue a stay of proceedings and allow the defendant to commence rectification within a defined timeframe.

Appeals lie with the Intellectual Property Division.

Within three months of the TMO’s rejection order being issued, an appeal must be lodged with the competent court of jurisdiction.

For trade mark proceedings, the District Court is the court of first instance. An appeal therefrom lies to the High Courts of relevant jurisdiction; as a last resort, an appeal by way of special leave petition can be brought before the Supreme Court wherein a substantial question of law is concerned.

In the High Courts, questions of law or fact can be taken up; in the Apex Court, only a question of law can be raised.

Personality rights are not recognised as distinct legal rights in India, but they have been recognised through the Right to Privacy and the Right to Publicity, the elements of which (character likeness, name, setting, event, etc) may be protected under various statutes such as the Copyright Act 1957 and the Trade Marks Act 1999.

Commercial use of one’s name and likeness is protected in India under the umbrella of personality rights, as well as trade mark and copyright laws. Several famous actors and athletes, including Mr Amitabh Bachchan, Mr Dilip Kumar, Mr Anil Kapoor, Mr Sachin Tendulkar, Mr Kapil Dev and Ms Aaradhya Bachchan have either registered their names as trade marks to protect them from commercial abuse or taken action against third parties to enforce their personality rights.

One of the primary objectives of the IP law regime is to safeguard against unfair competition, which is defined as any act of competition that is contrary to fair practices in industrial or business affairs. The Competition Act of 2002 and the Consumer Protection Act of 2019 are two Acts that ensure fair competition in Indian markets by safeguarding consumers’ rights against exclusive IP rights-holders.

Unfair trade practices include trade mark infringement, passing off, and even disparagement. Trade mark law is a part of the wider arena of unfair trade practice. As a result, trade mark law and unfair trade practice must be viewed as complementary to each other rather than conflicting.

With the upcoming digital switch to the metaverse, NFTs, cryptos, etc, it is imperative that there is transition in the existing trade mark classifications. It will be interesting to see how the next edition of the Nice Classification handles these new intangibles.

As detailed in 9.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings, in June 2021, the country abolished the IPAB and transferred jurisdiction of adjudicating appeals to the High Courts. Subsequently, the Delhi High Court formed a dedicated IP Division to formalise and hear IP matters that had been previously pending before the IPAB. The Delhi High Court created the Intellectual Property Division to deal with matters relating to intellectual property rights; aggrieved parties can now file their proceedings with the aforementioned Division.

The Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules 2021 regulate online intermediaries. The Rules stem from the Information Technology Act 2000.

Online intermediaries are granted safe harbour protection under Section 79 of the Act if they comply with specific obligations and due diligence requirements set forth in the Rules. If these Rules are violated, or if the intermediaries choose to act in defiance of a court or government order, they lose their safe harbour protection and become liable, along with the true source of the infringing content.

The Guidelines mandate that all intermediaries exercise due diligence, which includes due diligence in the event of a trade mark or proprietary rights infringement. Further, where a claim of infringement is brought to an online intermediary’s knowledge, the Rules require the intermediary to remove any restricted/infringing content within 36 hours of obtaining actual knowledge of its existence.

In general, adopting/using a generic or deceptively similar name is discouraged for a brand because it creates confusion among stakeholders. Using deceptively similar names without first conducting a trade mark clearance search could violate the rights of the rightful proprietor, cause market confusion, and amount to piggy-backing on another brand’s goodwill.

Furthermore, other factions are increasingly being included in the protection of trade marks, such as the registrar of companies, which has regulations prohibiting the registration of company names that contradict with trade mark owners’ previous rights. The procedure to be followed in this regard is already laid forth in the Companies Act.