Trademark

Summary
  1. Legislation
    Trademark in India is governed by The Trade Marks Act 1999 with an extension via the Trademark Rules 2002
  2. Definition
    A trademark provides a distinctive mark to identify certain goods or services as those produced or provided by a specific person or enterprise. Where a trademark its used for a service rather than a product, it is referred to as a service mark.
  3. Criteria
    A trademark can be a:

      1. Name
      2. Word
      3. Phrase
      4. Lego
      5. Symbol
      6. Design
      7. Image
      8. Three dimensional marks
      9. Shape marks
      10. Color marks
      11. Sound marks
      12. Holograms
      13. Combination thereof

    However, there are some marks which are not registrable as trademarks

      1. Trademarks that may disrupt religious sentiments of any community
      2. Trademarks that consist of scandalous or obscene matter
      3. Trademarks that use prohibited under the Emblems and Names Act 1950
      4. Trade marks which are used are purely functional or necessary to obtain technical result or which gives substantial value to the goods
  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    √ Madrid Protocol
    India is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within six (6) months
    India is also a Contracting Party of the Madrid Protocol which allows for a single application, called the ‘international application’ to be filed to the, The International Bureau of the World Intellectual Property organization. This allows for the mark to seek protection in member countries. However, this does not grant an internationally recognize trademark as that does not exist. It merely provides a mean for member countries to apply their respective laws to consider if the mark may be protected.
  5. Duration and Renewal
    A trademark/service mark once granted is valid for 10 years and can be renewed every subsequent 10 year.
Procedure/Timeline
IndiaTM

  1. Application
    A complete application with all the necessary documents and the prescribed fee can be made to the Controller General of Patents Designs and Trademarks.
  2. Examination
    After the application is submitted, the application will be examined by the Registrar to be in line with the provisions of the Trademark Act. The Registrar will issue an Office Action detailing the grounds as to why the application is refused/ objected either on relative or absolute grounds
    In the result of receiving an Office Action, the applicant then has within 3 months to a year from filing date to respond to the Office Action. Failure to do so will render the application to be abandoned
    If after reviewing the response, the Registrar may still deem the mark not meeting the requirements of the legislation. He may issues a rejection to the application. The applicant may still appeal for a hearing to justify the mark.
  3. Publication
    After the examination where all the objections have been dealt with, it will be published in the Trademarks Journal. Once published, any individual can file an opposition against the mark within 4 months from the date of which the mark was published
  4. Opposition
    Any individual can file an opposition to the application once it has been published. In the event of an opposition, the applicant then has to provide a counter statement. After hearing and looking at the evidence, the Registrar will consider if the trademark is to be accepted or not
    Failure to provide a counter statement by the applicant will deem the application abandoned.
  5. Registration
    Should there be no opposition filed within the 4 months, the application is then valid for registration.
Requirements/Documents
The following information/documents are required for a trademark submission in India

  1. Mark applied for
  2. Class according to Nice Classification
  3. Specification of Goods and Services
  4. Name, nationality and complete address of applicant
  5. Detail as to the mark being used in India
Documents
Downloadable Forms
Agents
Fee

Patent

Summary
  1. Legislation
    Patent in India is governed under The Patent Act 1970 together with the Patent Rules 2003
  2. Definition
    A patent refers to the exclusive statutory right for an invention
  3. Criteria
    In order to patent an invention, it should be:

      1. Novel
      2. Have an Inventive step/ Non-obviousness
      3. Capable of Industrial Application

    However, the following invention cannot be patented

      1. Where it is frivolous or which claims anything obvious
      2. Where the intended use is contrary to law or morality
      3. Mere discovery of a scientific principle or formulation
      4. Mere discovery of any new property of a new use for a known substance or of the mere use of a known process, machine or apparatus
      5. A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components
      6. Mere arrangement or re-arrangement or duplication of known devices
      7. Method of process of testing applicable during the process of manufacture
      8. Method of agriculture or horticulture
      9. Any process for the medicinal surgical, curative, prophylactic or other treatment of human beings or similar treatment of animals or plants
  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    √ Patent Cooperation Treaty (PCT)
    India is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within twelve (12) months.
    Furthermore, India is a party in the Patent Cooperation Treaty which provides a unified procedure in filing patent application which can be filed to the World International Property Organization. The treaty allows for the applicant to extend its rights in patent application to other member country of the treaty. It is important to note that the an application under the PCT does not grant an international patent as that does not exist.
  5. Rule of Priority
    India practices a ‘First-to-invent’ system, which recognizes the first person to use or invent the invention
  6. Duration and Renewal
    A patent once granted will be valid for 20 years from the date of filing.
    A renewal fee is to be paid on an annual basis
Procedure/Timeline

IndiaPT3

  1. Application
    An application for patent can be made with prescribed fee to the Controller General of Patents, Design & Trade Marks.
  2. Publication
    Once the application for patent is filed, it will be published within 18 months after the filing date or the date of priority.
  3. Examination
    A patent application will not be examined unless requested upon by the applicant. The request is to be filed with the Patent Office to initiate examination proceedings. Failure to request for an examination within a certain time frame will render the application deemed abandoned
    The examination considers if the application has fulfilled with different patentability criteria as listed down in the legislation.
    The applicant will then receive a first Office Action detailing issues (should there be any) which the examiner has found. The applicant then has to the chance to respond to the objections either by written argument or making amendments to the application.
  4. Grant
    Once the application has been cleared of all objections, the application would be placed in order for grant. The grant od patent is notified in patent journal which is published time to time.
Requirements/Documents
The following information/document are required for an application:

  1. Complete specification
  2. Description
  3. Claims
  4. Abstract
  5. Drawings
  6. Name, nationality and complete address of Applicant(s)
  7. Name, nationality and complete address of Designer(s)
  8. Details of priority claim

PCT National Phase Application
The following information/documents together with the filing fee are required to be submitting a non-provisional utility provisional application:

  1. Receipt from the International Bureau of copies of international application with any amendments to the claims, international search reports, and international preliminary examination reports may be accepted
  2. Payment of national fee
  3. Furnishing of a translation if the international application was filed in any other language other than English
  4. A copy of international application, except where not required by that Office (if necessary)
  5. Amendments, if any, to the claims in the international application. (Unless such amendments have been informed to the Patent and Trademark Office by the International Bureau, where a translation in English is provided should the amendments be made in another language)
  6. An oath or declaration of the inventor
  7. A translation into the English Language of any annexes to the international preliminary report. (If the annexes were made in another language)
Documents
Downloadable Forms
Agents
Fee

Industrial Design


Summary
  1. Legislation
    Industrial design in India is governed under Design Act 2000 together with the Design Rules 2001 (with Amendments in 2008, 2014)
  2. Definition
    The industrial design refers to the creative activity which results in the ornamental or formal appearance of a product.
    A design can be features of:

      1. Shape
      2. Configuration
      3. Pattern
      4. Ornament
      5. Composition of Lines
      6. Colors
  3. Criteria
    A design right requires the design to be:

      1. Novel
      2. Never been used before
      3. Relate to the article and its functionality
      4. Have and artistic value

    However, the following article categories are not registrable:

      1. Book jackets
      2. Calendars
      3. Certificates
      4. Form and documents
      5. Dress making patterns
      6. Greeting cards
      7. Leaflets
      8. Maps
      9. Plan cards
      10. Post cards
      11. Stamps
      12. Medal
      13. Labels
      14. Tokens
      15. Cards
      16. Cartoons

    The following artistic works are also not registrable:

      1. Painting
      2. Sculpture
      3. Drawing
      4. Engravings
      5. Photograph
      6. Work of Architecture
      7. Any work of Artistic Craftsmanship
  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    China is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within six(6) months.
  5. Rule of Priority
    India practices a ‘First-to-invent’ system, which recognizes the first person to use or invent the design
  6. Duration and Renewal
    A registered design once granted will last for 10 years and can be renewed for another 5 years
Procedure/Timeline
IndiaID

  1. Application
    An application can be made to register a design together with the prescribed fee and the necessary documents to the Controller General of Patents, Design & Trade Marks.
  2. Examination
    A design application only has to pass through a preliminary examination to ensure that the application submits and complies in the submission of documents and information to that of the application.
    There is no need for a request for examination.
  3. Objection
    Should there be an objection raised by the Indian Patent Office, the applicant will be notified via an Examination Report and will be required to correct the defects and resubmit the application to the Patent office within 6 months from the official date of application
    Failure to respond to the objections will deemed the application abandoned .
  4. Registration and Publication
    Once all objections have been rectified, the Patent Office will issue a registration certificate and will then be published in the patent Office’s Journal
Requirements/Documents
The following information/ documents are required for an industrial design application in India

  1. A signed application
  2. Filing fee
  3. Name , full address and nationality of Applicant
  4. Name , full address and nationality of Designer
  5. Name of article
  6. Representation of the design
  7. Signed and date of statement of novelty and disclaimer
  8. Power of Attorney (if necessary)
  9. Priority Documents
Documents
Downloadable Forms
Agents
Fee