FAQ's

Questionnaire

On Trademark

• What are trademarks?

Trademarks are words, names, symbols, or devices used by manufacturers of goods to identify their goods, and to distinguish their goods from goods manufactured and sold by others. A person who sells his goods under a particulate trademark acquires a sort of limited exclusive right to use the mark in relation those goods. Trademark law protects this right of the owner of a mark to use marks that distinguish his goods from others and to prevent others from using marks that are likely to cause confusion. Trademark law protects the goodwill of a business and also protects the consumers' ability to accurately ascertain the source of goods and services.

• What is classification of goods/services?

As per the Trademarks Act, 1999, all goods and services have been classified in 42 different classes. Click here for full classification.

• How do I protect my Trade Mark?

By ensuring that the mark is registered on a national trade mark register. In the main, trade mark owners use the services of a Registered Trade Mark Agents to achieve registration.

• Why should I protect it?

Primarily to ensure that the only persons who are able to exploit it are you or your company. Your reputation is represented by your trade mark. Others may seek to use your trade mark or something akin to your trade mark for their own use and thus take advantage of the reputation you have earned. Registration of your trade mark is the surest and quickest means of seeking redress in these circumstances. Furthermore, registration establishes your exclusive rights to use that trade mark for your goods or services.

• Where can I protect my Trade Mark?

Trade marks can be registered in nearly every country in the world. You should aim to protect your trade mark wherever your goods are sold or your services provided now or in the future. Quality Registration provides services for the registration of trade marks world-wide.

• What is my Trade Mark worth and how can I exploit it?

Your trade mark is a tangible and marketable asset. It can be sold as a separate commodity and can be licensed out for use by others. The value you place on your trade mark is normally based on the success of your product, turnover and other factors. Your trade mark is a valuable asset which grows in value as your business grows. You should protect this asset by trade mark registration. To control its exploitation you need trade mark registration.

• What does constitute infringement of a trademark?

A registered trademark is infringed if a person uses the same/deceptively similar mark in the course of trade, in respect to the same goods. The test for deceptive similarity is whether the defendant's use of a mark is likely to cause confusion, i.e., whether an appreciable number of reasonably prudent consumers are likely to be confused or deceived as to the source, affiliation or sponsorship of the parties and their goods and services. The plaintiff need not demonstrate actual confusion or intent to confuse. The 'likelihood of confusion' analysis encompasses an evaluation of a variety of interconnected market factors, relating to the likely expectation, perception and memory of consumers.

• Where should I file an infringement suit?

A suit for infringement of registered trademark must be filed in the District Court having jurisdiction or in the High Court that has original jurisdiction to try such suits. The jurisdiction and procedure are governed by the Civil Procedure Code. The period of limitation for filing the suit is three years from the date of infringement.

• What are relieves that the court may grant in an infringement suit?

The relieves in a suit for infringement include: - Injunction, restraining the further use of the trademark; - Damages or an account of profits; and - An order for delivery of the infringing labels and marks for destruction. If the infringement committed was innocent only nominal damages will be awarded. However, criminal action is possible if fraudulent intention on the part of the infringer is proved.

• What are service marks and are they protected in India?

Service marks are trademarks used by business rendering various kinds of services, for eg: travel agents, finance companies etc.

• What forms of protection are available for trademarks?

There are two forms of legal protection that are available for trademarks. Under the Trade and Merchandise Marks Act, 1958, the procedure for registration of trademarks is prescribed in order to afford protection for the same. The most effective trademark protection is obtained by filing a trademark registration application in the Registrar of Trademarks. Once the trademark is registered, infringement can be easily established. In case of unregistered marks and marks which are not registerable, the only form of protection is the common law remedy of passing off. The plaintiff would have to prove sufficient use of the mark so as to create valuable goodwill of the business connected with the goods bearing the mark.

• What is the procedure to be followed for the registration of a trademark?

Any person/entity who claims to be the proprietor of a trademark can apply for registration. Before applying for registration, the applicant may apply for a report from the Registrar of Trademarks, as to whether the mark or one similar to it has already been registered or applied for. The applicant can also conduct private searches using the records maintained in the Registry. Thereafter, the application for registration should be filed in Form TM-1, under the Trade and Merchandise Marks Rules, 1959 ("Rules"). The Rules also prescribe the classes of goods with respect to which registration can be applied for (in the Fourth Schedule). If applications are made for registration of the mark in respect of more than one class of goods, then separate applications should be filed for each class. The application should be accompanied by the prescribed fee. After the application is received, the Registrar of Trademarks will examine the same and communicate any objections to the applicant. The objections will mainly be with regard to distinctiveness and similarity with already registered trademarks. The applicant can put forward his case in writing or at a hearing. If the submissions are accepted, the application will be advertised in the Trademarks Journal. In case any objections are received, the Registrar will conduct a hearing and give a decision regarding the same. If no objections are received, the Registrar will enter the mark in the Register of Trademarks and issue a certificate of registration to the applicant. The certificate of registration is valid from the date of application for registration.

• What is the duration of registration?

The first registration is valid for a period of ten years and can be renewed for further periods of ten years each by paying the renewal fee. If the mark is not renewed, it will be removed from the Register but it can be restored if a request is made to that effect within one year from the date of expiry of registration or last renewal.

• Is assignment of a trademark possible?

The assignment/licensing of trademarks is restricted, because unrestricted licensing has been considered as trafficking in the mark which is against public interest. This is because, a trademark indicates the origin of the goods to the consumer and unrestricted licensing can lead to confusion and deception among the public as to the nature of the goods. According to the law, the assignment of a trademark should not result in the creation of concurrent exclusive rights in more than one person with respect to the use of the same/similar mark in respect of same/similar goods. Confusion or deception can be avoided by territorial limitation or limitation of the goods.

On Copyright

• What is copyright?

Copyright is a form of intellectual property protection granted under the Indian Copyright Act 1957 to the creators of original works of authorship such as literary works (including computer programmes, tables and compilations), dramatic, musical and artistic works, cinematographic films and sound recordings.

• What types of work attract Copyright?

The main branches of copyright are literary works (including computer programmes), dramatic works, musical works, artistic works, Cinematographic works and sound recording.

• How is Copyright obtained?

Copyright in a work comes into existence automatically when the work is created.

• Can a claim to Copyright be registered?

Yes, in India a claim to copyright can be registered with filing an application to the registrar of copyright along with prescribed fees.

• Who owns Copyright in a work?

In India, the first owner of copyright in a work is the author. If the work is done in course of employment then employee is the first owner unless there is an agreement to the contrary. Where the work includes material from different owners, or for example is a translation of an original work, several owners may each have copyright in the final work.

• What is the term of copyright protection?

The term of copyright varies according to the nature of work and whether the author is a natural or legal person. In the case of literary, dramatic, musical or artistic work (other than a photograph), when published during the lifetime of the author , copyright subsists during the lifetime of the author, plus sixty years. In the case of photographs, cinematograph films and sounds recordings; the term is sixty years from the date of publication. When the first owner of copyright is the government or a public undertaking, the term of copyright is sixty years from the date of publication.

Yes. Copyright licenses can be given which authorize another to copy the work in question, usually in return for a royalty fee.

• What constitutes infringement of copyright?

Copyright in work is considered to be infringed in the following circumstances- A. When any person without a license granted by the owner of the copyright or the Registrar of Copyrights or in contravention of the conditions of a license so granted or of any conditions imposed by a competent authority under Copyright Act - - does anything, the exclusive right to do which is, by Copyright Act, conferred upon the owner of copyright, or - permits for profit any place to be used for the communication of the work to public where such communication constitutes an infringement of the copyright in the work. B. When any person - - makes for sale or hire, or sells or lets for hire, or by way of trade displays or - offers for sale or hire, or distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or - by way of trade exhibits in public, any infringing copies of the work. It is not necessary that the alleged infringement should be an exact or verbatim copy of the original but its resemblance with the original in a large measure is sufficient to indicate that it is a copy.

• How do I stop infringement of my Copyright?

Unlike some other intellectual property rights, copyright is merely a right to prevent unauthorized copying of an original work. The burden of proof in litigation is on the copyright owner to show that copyright exists in the work in question and that the alleged infringer (directly or indirectly) copied the work. If this chain of copying cannot be shown or does not exist, then there is no infringement. If there has been copyright infringement, then court action may be necessary to stop it continuing, and you may be able to claim financial compensation for any acts of infringement.

• Should I publicize my claim to Copyright?

All copyright work should be marked with the International Copyright symbol © or with the word Copyright, the name of the owner and the date or year the work was created, Example: © Quality registrations 2012.

• What is a copyright notice and how is the same displayed?

Copyright notice consists of the following: - The symbol c (letter c in a circle) or the word copyright The year of first publication, and - The copyright owners name. An example of notice: © 1999 indlaw. The copyright notice should be placed on copies in such a way as to give reasonable notice of the claimant of copyright.

• Is transfer of copyright possible?

The owner of the copyright in an existing work or prospective owner of the copyright in a future work may assign to any person the copyright, either wholly or partially in the following manner:- for the entire world or for a specific country or territory; or for the full term of copyright or part thereof; or relating to all the rights comprising the copyright or only a part of such rights.

• What is the mode of assignment of copyright?

Assignment of copyright is not valid till it is in writing, signed by the assignee or by his authorized agent. The assignment should identify the work and specify the rights assigned, the duration and territorial extent of the assignment. The assignment deed must also specify the royalty payable, if any. There is no mandatory provision to register a deed of assignment of copyright. However, these details need to be recorded while registering copyright at serial 11 of Statement of Particulars.

• What remedies exist for copyright infringement?

Courts are empowered to grant the following relief in case of infringement of copyright: - Temporary and permanent injunctions - Impounding and destruction of all infringing copies - Actual monetary damages plus the infringer's profits - Statutory damages - Court costs and reasonable attorneys' fees. The Court trying any offence, under Section 66 of the Copyright Act may, whether the alleged offender is convicted or not, order that all copies of the work in the possession of the alleged offender, which appear to be infringing copies be delivered up to the owner of copyright. In addition to civil remedy, the Copyright Act enables the owner of a copyright to take criminal proceedings against the infringer. Knowledge/mensrea of the infringer to commit the infringement should necessarily be proved for this purpose. The offence of infringement of copyright is punishable with imprisonment which may extend from a minimum period of six months to a maximum period of three years and a fine of Rs 50,000 to Rs 2 lakhs.

• What are the powers of copyright law enforcement authorities?

For effective implementation of Copyright Act, the response of enforcement authorities to cases of infringement needs to be swift. Under Section 64 of the Copyright Act, 1957, any police officer, not below the rank of a sub - inspector, may if he is satisfied that an offence in respect of copyright in any work has been, is being, or is likely to be committed, seize without warrant, all copies of the work, and all plates used for the purpose of making infringing copies of the work, wherever found and produce them before a magistrate as soon as practicable.

• Is it compulsory for a work to be published to receive copyright protection? Would I have to register my work with Copyright Office to get copyright protection?

Copyright applies to both published and unpublished works. Further, it is not necessary under the Indian Copyright Act to register with the Copyright Office to get copyright protection. Registration of the work is however a highly recommended because such registration is helpful in an infringement suit. As per the Copyright Act, the Register of copyrights (where the details of the work are entered on registration) is prima facie evidence of the particulars entered therein. The documents purporting to be copies of any entries therein, or extracts from the Register which are certified by the Registrar of copyrights and sealed with the seal of the Copyright Office, are admissible as evidence in all courts without proof or production of the original.

• What is the procedure for the registration of a work with the Copyright Office?

An application for registration of copyright should be filed using Form IV-Application for Registration of copyright, Statement of Particulars and Statement of Further Particulars. The application should be made in triplicate and accompanied by the prescribed fee. A copy of the application should also be sent to any other persons who have an interest in the copyright of the work. For instance, if a person who is not the author of the work makes the application, a copy of the application should be sent to the author. If the Registrar receives no objections to the application, he will, if satisfied with the correctness of the particulars, register the work and enter the particulars in the Register of Copyrights. In case the Registrar receives any objections or is not satisfied with the correctness, he can conduct such enquiry as he deems fit and thereafter enter such particulars, as he consider proper in the Register.

On Patent

• What is a patent?

A patent for an invention is the grant of a property right to the inventor, issued by the Patent Office. The term of a new patent is 20 years from the date on which the application for the patent was filed in the India. A patent allows one to prohibit others from making, using, selling, offering for sale or importing the invention for a period of up to twenty years from the date of filing the application.

• What to Patent?

The various types of invention, which may be patented, include the following:

Devices Apparatus

Products Methods

Processes Products from processes

• Why should I protect my invention?

Patents are useful in preventing your competitors from exploiting your invention.

You can force your competitors to design around your invention (if that is possible) which can cost them time and money.

It may put you in a stronger position with other companies who have Patents in which you are interested.

Customers are often impressed by 'Patented Technology' so patenting can have a positive role to play in your marketing strategy.

Patents are often a good 'keep off the grass' warning to other businesses. Many competitors are now more aware of Patents and the consequences of being found to be infringing a Patent.

• Where can I patent it?

The decision of where to patent is a commercial decision based upon the importance of the patented invention, the potential scope of protection provided by the Claims of the Patent, and the likely costs involved in securing and maintaining patent protection in any given country.

Patent protection is available in most countries so you have to decide where to file your applications.

In India, Patent application can be filed at the Patent office of Delhi or Kolkata or Mumbai.

• What is the value of your patent?

Research and development costs can be high, but the fruits of that work are inventions, which often can be protected by Patents. Therefore, by controlling the exploitation of these assets patents are themselves valuable assets.

When viewed over the 20 year life of the Patent, it is very cost effective for the protection which is obtained.

In addition to the many other benefits patents can be used to gain capital. They can be sold, or mortgaged to a bank to raise funds. You can also license your Patent in order to raise funds through royalty payments.

• What is the term for patent?

In India, generally the term for patent is twenty years.

• Can patent rights be transferred?

The proprietor of a patent or its registered grantee can assign, license or mortgage the patent for any consideration. This power is wide enough to include transfer of patent rights in whole or in part, or a licensing of patent whether exclusively to one person or several persons. The creation of any interest in a patent, including assignment, license or mortgage is not valid unless it satisfies the following requirements: 1. The assignment, mortgage or license is reduced to writing in a document and embodies all the terms and conditions between the parties. 2. The application for the registration of the document is filed within six months of its execution.

• What technology is protectable under a patent?

The invention must be new, useful, and non-obvious. Typically inventions are aesthetic designs, functional items, functional methods, or asexually reproduced plants.

• What competition does a patent prevent?

Patents provide the right to exclude others from making, using, selling, offering for sale or importing the invention described in the claims. This is perhaps the most powerful monopoly legally obtainable for products.

• Can one infringe a patent without having knowledge of the patent?

Yes. Infringement occurs when one practices the invention described in the claims. Knowledge or lack thereof, is generally irrelevant to issues of liability. Independent development is not a defense. Knowledge of the patent by the infringer, however, can be relevant to damages. Many companies do new product clearance searches to avoid law suits.

• Can I keep some information about my invention a secret?

There is a requirement that the invention be completely disclosed. Failure to disclose will invalidate the resulting patent. One cannot maintain information important to the patent as trade secret if the information was known as of the filing date.

• What rights does a patent provide?

The right to prohibit (see previous question) does not automatically include the right for the inventor to make, use, sell, import and/or offer the invention for sale. Anyone is free, however, to engage in such activities unless there is a law prohibiting it.

• What do the terms "patent pending" and "patent applied for" mean?

They are used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the Patent Office. The law imposes a fine on those who use these terms falsely to deceive the public.

• Why does the law recognize patents?

Patents were designed to reward persons for particular benefits provided to the government and the people with a monopoly. Originally, the "benefits" was lonely defined and the monopoly was not well connected to the benefit provided. In time the "benefit" to be offered became more narrowly defined to require a teaching about something unknown. The monopoly offered as a reward also became more closely related to the benefit. The inventor received a limited monopoly on the subject matter of the teaching (i.e., the invention as described in the claims). The impact of these events still permeates patent law today.

• I have an IDEA; what should I do next?

Before an inventor begins spending money on the patent process, they must first verify the marketability or feasibility of the invention. Way too often inventors go down the road of inventing 'just knowing their invention will sell' - but not having the desire to see whether it won't sell. So the recommended steps to proceeding with the invention process are:

(1) begin an inventor's journal and record in writing everything having to do with the invention,

(2) complete some good market research and verify the marketability, and

(3) begin the patent process.

On Design

• What is a design?

Under Design Act, 2000, A design must be some shape, configuration, pattern or ornamentation or composition of lines or colors applied to such article in any form by any industrial process or means but does not include any mode or principle of construction or any thing which is in Trade or Property mark or artistic work.

• How long does it last?

A design registration will initially last for 10 years from the filing date of the application and may be extended to further for a second period of 5 years. Thus the maximum period of registered design is 15 years.

• What are the advantages of a design registration?

Designs should not be seen as an alternative to patents but as a complementary protection.

Design registration is cheaper to obtain than patent protection and the application procedure is far shorter.

If the expected life-time of a product is short, and the product will be simple to produce, the design registration may be more useful than patents.

Action can be taken against an infringer and, unlike with copyright, actual copying of the protected design is not required to be proved.

• What are the disadvantages of a design registration?

Design protection does not protect a method of operation. It only protects features which are apparent in the normal use of the article. A design registration does not prevent others from producing a product having the same or similar functions to a product embodying the design but it prevents others from applying the same design features to products.

• Wouldn't an industrial design be protected as an "artistic work" under the Copyright Act?

If a design is registered under the Designs Act, it will not be granted protection under the Copyright Act, even though it is an original artistic work. In case the design is not registered under the Designs Act and it is an original artistic work, copyright protection under the Copyright Act will automatically subsist. However, copyright protection under the Copyright Act, will cease to exist as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the copyright owner. Therefore, it is highly recommended that industrial designs are registered under the Designs Act.

• What is the procedure for registration of designs?

Any person, who claims to be the owner of a new or original design that is not previously published in India, can apply for registration of design. For the purpose of registration, goods are classified into fourteen classes. The applicant may include in the application, a brief statement of the novelty he claims for the design. If the application is in order and satisfies all requirements of the Designs Act and the Rules, the Controller will register the design. Registration of designs is done by the Patent Office at Calcutta.

• Can the registration of a design be cancelled?

Based on an application, the High Court can cancel registration on the following grounds: - That the design has been previously registered; - That it has been published in India prior to the registration; or - The design is not new or original. The Controller of Patents can, on an application, cancel registration on the following grounds: That the design has been previously registered; or That it has been published in India prior to registration.

• What are the rights conferred by registration?

Upon registration, the registered owner of the design gains the copyright in the design, ie he has the exclusive right to apply the design to any article in the class in which it is registered. This right is subject to the following conditions: 1. He must supply the exact representation/specifications, as required by the controller. If this is not done, the Controller may erase his name from the register. 2. The articles on which the design is applied should be marked with the word "registered"/"regd"/"rd", followed by the registration number. The exceptions to this rule are in the case of designs registered for lace and printed or woven textile goods.

• In which court can an infringement suit be filed?

The reliefs that the court may grant in an infringement suit, include: - An interim or final injunction restraining the defendant from continuing with the infringement, - Damages, - Delivery of infringing articles.

• What is meant by classification of goods under the Design Rules,2001 ?

In the third Schedule of Design Rules, 2001 the classification of goods has been mentioned. Only one class number is to be mentioned in one particular application. This classification has been made on the basis of Articles on which the design is applied.

Practical Example: If the design is applied to a toothbrush it will be classified under class 04-02. Similarly if the design is applied to a calculator, it will be classified in class 18-01. Subsequent application by the same proprietor for registration of same or similar design applied to any article of the same class is possible, but period of registration will be valid only upto period of previous registration of same design.