Designating India in your IR trademark application with the ® Registered symbol

One of our IR applications designating India was a mark filed with the ® symbol with the WIPO. To give you clarity, the basic registration (mark it, it is a registration and not an application), is from a country which allows marks with the ® symbol. So it was never a problem in the basic registration. Going even further to make the process smooth and avoid unnecessary hassle, the Applicant has also disclaimed the ® symbol in the IR application.

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Express & Expedited request for examination of patent applications in India

After filing any patent application in India, a request for examination must be filed with the Indian patent office without which the patent off will not take up the application for examination. Ordinarily, a request for examination of a patent application filed in India shall be made within 48 months from the date of the earliest priority application. The request for examination can be filed by the applicant or by any interested third party. After filing the request for examination, the Indian…

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Voluntary cancellation of trademark registration in India

There are several occasions when the trademark owner would like to voluntarily cancel the registration of the trademark in India. In most occasions, the voluntary cancellation of trademark registration is due to an agreement entered by the trademark owner with a third party or for other business decisions taken by the trademark owner.

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Understanding the Scrutiny Report or Discrepancy Notice issued by the Trademark Office in India

If the Trademark Office finds that any documents/forms submitted with respect to a trademark application require additional clarification and substantiation by document submission or the appropriate documents have not been filed, a notice is issued detailing the deficiency. This notice is commonly referred to as a Discrepancy notice or Scrutiny Report which is communicated to the Applicant/Applicant’s agent. Generally, Discrepancy notice or Scrutiny Report have been known to be issued where…

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Creating a Work? Know if you are indeed the Owner of the Copyright

The Indian Copyright Act provides who the Author and Owner are, with respect to any work. It uncomplicates matters by simply putting that the Author of the work is the First Owner of the Copyright (subject to provisions of course). While in most cases, a clear determination is possible, there are circumstances when the logic has to be reconsidered; example when a work (in which copyright exists) is prepared at the instance of another person. There appears to be a very thin hazy line between…

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Magical tug of war for a descriptive mark – ITC Vs Nestle

ITC Ltd. and Nestle S.A. are two household names that have become indispensable in our lives. There is a minimum of one product in every household that belongs to these conglomerates. The demography of the consumers for these brands is vast and covers every age and economic group. These companies have influenced our lives such that they have become an inevitable part of our monthly grocery list.

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FAQ’s about USE of a trademark in India

The “USE” of a trademark in India plays a very important role in obtaining the registration of a trademark in India, prevail in opposition proceedings and to effectively enforce the rights of the trademark in India. In this post, we will provide answers to the frequently asked questions with respect to the “use” of a trademark in India.

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Improving the nuances of Patent Practice in India – One act of kindness is all that it takes

One of my colleagues received a call from the Deputy Controller of Patents & Designs at the Delhi Patent Office requesting to speak with the Patent agent who had filed certain requests in a patent matter. When the colleague enquired about the issue, the Deputy Controller explained how some applications requesting amendments were filed in the correct Form but under a different Rule of the Patent Rules resulting in higher official fee and that he wanted to let the Patent agent know about it so…

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Trading Trademarks – Assignments, Mergers, and Transmissions

Trademarks, like all intellectual property, are an integral part of a modern business’ assets. It is not uncommon nowadays for the value of a business’ IP to far exceed its physical assets. Like any asset, trademarks can also be bought, sold, and transferred between entities. Whenever there has been any change in the details of the owner of a trademark, whether, through an assignment, name change, or merger, it is always advisable to record this change with the concerned trademarks office as…

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