Sound Board

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

The primary purpose of a trademark is that it serves to distinguish the goods or services of one person from those of another. If a mark is not distinctive, it could lead to confusion in the minds of consumers and deceive them as to the origin of the product or service it represents. To prevent such confusion and deception, Section 9(1)(a) of the Trade Marks Act prohibits the registration of any mark which lacks distinctiveness.

The procedure and timeline to obtain registration for a trademark have evolved over time.  After the amendment of 2017, the entire timeline has become quite stricter and quicker. We have all seen a lot of positive changes happening in the IP regime, however, there are still areas where we lag and would do extremely well to have clearer rules and laws, especially with respect to trademark applications under the Madrid protocol.

The National Internet Exchange of India (NIXI) has notified certain changes to the INDRP Rules of Procedure. The new policy is aimed at streamlining the INDRP process, making it easier for rights holders to protect and enforce their rights against unauthorized registration of .in domains or .in domain squatting.

Businesses in India have often been started by using the surname or family name of the person starting such business. This practise has been followed in India for a very long time and such practice of adopting a surname for the name of the business is done purely so that customers can easily associate the surname so adopted with that particular business.

Section 31 D of the Copyright Act, 1957 has been the bone of contention on many occasions with regard to issuing statutory licenses and the scope of broadcasters. In simple words, Section 31D  of the Copyright Act 1957 states that any broadcasting organization that wishes to communicate sound recordings, literary or musical work to the public may be allowed to do so by obtaining a statutory license after giving prior notice and payment of royalties to the owner of the copyright at rates that…

Most commercial establishments often play popular music as a form of entertainment for their patrons. Step into any mall, hotel, pub, restaurant, or gym, and there is a high chance that they will be playing a song that you know. Since music falls under the scope of copyright as intellectual property, any commercial establishment playing music must obtain a license from the appropriate rights holder in order to play such music.

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.

In India, a request for examination must be filed for a patent application to be considered by the Indian Patent Office. This request can be made by the applicant, or any interested third party and must be filed within 48 months of the earliest priority application. If no request for examination is filed within this time frame, the application is considered abandoned. There are options for fast-tracking the examination process by filing a request for either Express or Expedited examination.

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.

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…