Sound Board

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

Have you wanted to visit the Maclaren’s Pub or Central Perk and live your moment from How I Met Your Mother or Friends? Have you wanted to taste the Bertie Bott’s Every Bean Flavour from the Harry Potter Series or wished the Bat Mobile was real?! I’m sure we all have wanted to live or rather re-live some form of fantasy and in fact some of it has been made possible! However, as someone working in the field of intellectual property, I’m forced to think of the fictional products in the real world…

In the recent past, the office of the Controller General of Patents, Designs and Trademarks (hereinafter called "CGPDTM") has been striving to make prosecution relating to Intellectual Property Rights user-friendly and transparent. But in a surprise move, the CGPDTM is now focussing on educating the younger generation about Intellectual Property!

Of the several cases of trademark infringement and passing off that are decided by the Courts, some cases are known for clarifying the position of law on an issue and some for addressing issues not previously discussed by the Courts. Not very often do we come across cases that simplify and reemphasize on the basics principles of law; this case is one them. In this case decided by the Bombay High Court, the Court has decided on the issue of unauthorized use of the mark ‘Café Madras’.

You have a brand but you don’t’ sell the products under that brand in India and neither do you hold a trademark registration for the mark in India. Meanwhile, someone in India adopts your brand name and starts manufacturing and selling products under that brand. If you have advertisements in magazines that are distributed in India and if your product is listed on a website accessible from India, can you then say that the reputation of your brand has spilled over into India?

Just as the image says, I would like to get to the point. But well..it is certainly not that easy! One of the most interesting debatable matters, atleast as far as India is concerned, is the validity of tag lines as trademarks.

It is not the answer that enlightens, but the question.This is rather apt for the India IP scenario where many individuals and companies have been approaching the Courts with rather interesting questions (ones that we have always wanted answers to) and Courts have been very liberal, and cautious at the same time while interpreting these provisions of the intellectual property laws. With specific reference to the confidentiality clauses, non-disclosure agreements and trade secrets, there have…

I swear I can almost hear that thought passing through the cerebral cortex of many a client when it comes to discussing charges. Never mind that, as a part of a mid sized firm, I deal with flat fees instead of hourly and advise on strategic ways to reduce costs, when it comes to contract and prosecution of intellectual property, most people think they can do it on their own without a lawyer.

Rectification of the register is a proceedings in which a party seeks to remove a registered trademark from the register. In India, Section 47 of the Trademarks Act lays down two scenarios regarding removal of a registered trademark, they are :

As mentioned in my previous articles, the life of a trademark is ten years in India post which the mark requires to be renewed every ten years to keep the mark alive. Of course, the Trademark law requires the Trademark Office to notify the proprietor before the expiry of registration. Now the question that arises is :