Sound Board

Our thoughts and views on the practice of Intellectual Property in India and around the world.

Section 9 per se is not an easy provision to get through, laying down several criteria for determining if a trademark is entitled to be accepted. While Section 9(1) is the most common provision one can perceive in an examination report, Section 9(2) is a provision which leaves no stones unturned.

Justice Midha, in his order dated May 28, 2019, reiterated the mandatory nature of Section 25(3) of the Trademarks Act, 1999. As we have noted before, the Registrar is obligated to send a notice regarding the expiry of validity of a mark to its proprietor, before the said expiry.

The three WIPO Agreements have received accession from the Indian Government.[1]The three Agreements were introduced through the WIPO treaties primarily to ease the search for trademarks and industrial designs. In this arena it is significant to understand the prominence of all the three Agreements. A brief understanding of all the three Agreements are as follows:

When the use of the hashtag trademark suggests any sort of connection or link with the trademark owner or creates a likelihood or association with the trademark owner, then there maybe be grounds for infringement

One of the significant judgements from the recent time is the order of the Delhi High Court in the popular Crocs case. In an order dated March 6, 2019, the Court rejected the maintainability of a suit for passing off, in the case of a registered design. It is important to note here that the Plaintiff had brought this suit after the Court had previously rejected its previous suit for infringement of its registered design, holding that the same was invalid on the ground of prior publication

Canada has announced that the anticipated changes to the Trademarks Act will finally be coming into force on June 17, 2019. The changes are expected to simplify the domestic registration process and provide access to e international registration process administered by the World Intellectual Property Organization

Cadbury in 1995 filed an application to claim rights over the colour mark for the shade Pantone 2685 C. Cadbury’s 1995 (original) application was filed only for chocolates in a bar or tablet form with a description of the colour mark: “The mark consists of the colour Purple (Pantone 2685C) as shown on the form of the application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.”  

The Intellectual Property Office (IPO) of Pakistan has announced that there will be an amendment to the official fee for all the procedures related to Trademarks by amending the Trademarks Rules, 2014. The amendment for the official fee was notified vide an Official notice dated March 04, 2019 and it will be entered into effect as of March 9, 2019 and constituted a massive escalation in the fee of approximately 50%.

The accession is expected to instil confidence in foreign investors, applicants, businesses in relation to the protection of their Intellectual Property in India. The accession would also facilitate in exercising rights in decision-making processes regarding review and revision of the classifications under the agreement.

An application for registration of a trademark has to be filed before the trademark office in Qatar. If a foreign applicant is applying for registration, a local agent must apply on behalf of the Applicant and a power of attorney legalized by a Qatari consulate in the Applicant’s country is necessary. There is no multi-class trademark application in Qatar.