Sound Board

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

The Indian Trademark Office has once again initiated a special drive from December 2013 to January 2014 for disposal of requests for recordal of post registration changes of registered Trademarks. The original notification is available here. The first such special drive was initiated earlier this year in January 2013 and after postponing it several times was put into action in March 2013. However, only a limited number of applications were cleared during this drive.

After a trademark application sails through the journey of examination, advertisement and opposition, it reaches the final and happy stage of registration. When the online status of a mark shows registered, it means, as the term suggests, the mark has obtained registration and the applicant becomes the legal owner/registrant of the said mark. A registration certificate mentioning the details of the trademark (including date of registration, registration number, Journal in which it was…

Britannia Industries Limited had filed an application for the trademark SNAX, which they had claimed to have been using from 1965. Britannia had already registered trademarks BRITANNIA SNAX for biscuits breads, buns etc in Class 30. The trademark application for the mark SNAX was published in the Trademarks Journal in 2005 and was opposed by PepsiCo on the grounds that the mark SNAX is snacks misspelt and since snacks was a common English word; it should not be registered as a trademark.

The case of trademark infringement and passing off was filed by EASYGROUP IP LICENSING LIMITED (the plaintiff) in respect of the alleged infringement and passing off by Easyjet Aviation Services Pvt Ltd. (the defendant).

Justice K.N. Basha, who recently retired as a judge of the Madras High Court, has been appointed as the chairman of Intellectual Property Appellate Board (IPAB). He succeeds Justice Prabha Sridevan, who retired from the post a few weeks back. At present S Usha has been deciding matters as the acting chairman.

I was referred to this article by one of my colleagues who got it on his RSS Feed. The article itself points to a recent order of the IPAB which “yet again chastised the Indian Trademark Registry in its Order dated 12th July”. Naturally my curiosity was piqued and I went on to read said Order.

The Ministry of Commerce and Industry through the Department of Industrial Policy and Promotion has published a draft of the amendments to the Trademark Rules 2002 on August 01, 2013. A copy of the rules can be found here.

The Trade Marks (Amendment) Act 2010 and the Trade Marks (Amendment) Rules, 2013 came in to force on July 08, 2013. In principle the amendment marks the official entry of India to the International Filing System under the Madrid Protocol. The Madrid system enables Indian businesses to file a single application in one language, one fee in one currency in India for registration of their trademark in all or any of the member countries of the Madrid Protocol.

The Intellectual Property Appellate Board (IPAB) passed an order a couple of days back, which brought on record the problems faced by trademark proprietors with the functioning of the Trademark Registry.

In Utopia, I believe competition among similar businesses would be healthy and fair. However, in the real world, the Darwinian principle of survival of the fittest applies. We find that some wonderful businesses, with unique and sometimes well-established brands, end up in shambles because their owners did not take the right steps at the right time to protect those brands. So, the proverbial cheats prospered, right? Not really. Everything boils down to what someone rightly said “If you don’t…