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Alert 381 - India - trade mark registration procedures further streamlined
With an eye on India joining the Madrid Protocol system of international trade mark registration, the Trade Mark Registry has further streamlined its operations. A number of changes made in the New Year will be of interest to brand owners. These changes are discussed briefly below.
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The Trade Mark Registry database will be made available for on-line searching, without the need for prior registration or payment of search fees. Previously, in order to carry out an on-line search it was necessary to register and pay a fee of approximately US$10. The link to access the Trade Mark Registry website is www.ipindia.nic.in. Improvements have also been made to the ‘Registered Trade Mark and Application Status information’ available on the website. In particular, the Trade Mark Registry will now be scanning and uploading registration certificates, which will be able to be downloaded by brand owners.
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A list of ‘well-known’ marks has been uploaded onto the Trade Mark Registry’s website. This is an interesting development. The list currently contains 52 marks, including well-known marks such as INTEL, MARS, HORLICKS, PEPSI to name just a few. The basis for selection of the marks has not, however, at this stage been disclosed. Although the Indian Trade Marks Act lays down elaborate criteria, similar to those adopted by WIPO and Paris Union members in 1999, for establishing ‘well known mark’ status, it does not contain any procedure pursuant to which brand owners can apply to the Trade Mark Registry for a declaration that their mark is ‘well-known’. Brand owners can, however, ask the Courts and/or the Registrar for such a declaration in the context of trade mark infringement actions or opposition proceedings. The publication of a list of ‘well-known’ marks is a positive development; its operation will, no doubt, be clarified over the coming months.
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Official fees for filing a trade mark application have been increased from Rs2500 (approx. US$60) to Rs3500 (approx. US$80). The increase is retrospective from 29 December 2010. Brand owners who filed applications between 29 December 2010 and 13 January 2011 (when the increased fees were notified to the public) will have until 28 February 2011 to pay the additional fees.
Our Comment
The amendments facilitating online searching and the downloading of registration certificates should improve the process of trade mark registration in India. These amendments, together with the introduction of a list of ‘well-known’ marks, will be welcomed by brand owners.
