Trademark Registration in Coimbatore – Requirements of TRIPS Agreement what we are going to discussed in these below article.
Requirements of TRIPS Agreement
The Trips Agreement and the Paris convention for protection of Industrial Property specify certain norms and standards for protection of trademark. Since India is a member of both treaties, the Trademarks Act, 1999 abides by the relevant provisions of these binding International treaties. In regard to industrial property is general, the TRIPS Agreement requires that members comply with Article 1 12, and Article 19 of the Paris convention in respect of Parts 2, 3 and 4 of the Agreement. These articles of the Paris convention include all the substantive provision of the said convention. The principal features of these treaties and the corresponding provision of the new Indian Act are briefly set out below.
Principle of National Treatment
The requirement implies that India must grant the same protection to nationals of others member states, as it grants to its own nationals. The Trademarks Act, 1999 does not contain any discrimination between nationals and non-nationals in the matter of registration and protection of trademarks. However, section 155 of the Act which makes provisions for reciprocity enacts that if any country does not accord to the citizens of India the same rights as to registration and protection of trademarks as it accords to its own nationals, no national of such country is entitled to apply for trademark registration. Article 2(3) of the Paris convention makes an exception to the national treatment principle, according to which certain requirements of a mere procedural nature which impose special conditions on foreigners for purpose of judicial and administrative procedure, may be validly invoked against foreigners, e.g. security for costs, giving an address for service or to appoint an agent in the country where protection is required. Section 21(6) of the new law contains a provision for requiring security for costs of proceedings before the Registrar in the case of a person who does not reside or carry on business in India. Since this is basically a requirement for any person residing outside India, the provision is not limited only to foreigners, but to non-resident Indian nationals as well. Similarly, an address for service is required to be given in the case of an overseas applicant. Section 143 provides that an address for service stated in an application or notice of opposition shall, for the purpose of the application or notice of opposition, be deemed to be the business location of the applicant or opponent, as the case may be, and all documents in relation to the application or notice of opposition may be served by leaving them at or sending them by post to the address for service.
Right of Priority
The right or priority in Article 4 of the Paris convention, means that on the basis of a regular application for trademark registration filed by an applicant in one of the member countries, the same applicant or his successor in title) may, within 6 months, have certain rights when applying for protection in all the other member countries. In principle, the later applications will be regarded as if they had been filed on the same day as the first or earliest application. The practical utility of this protection is that the applicant need not present all applications as the same time. Section 154 provides for such right to applicants from convention Countries.
Any sign capable of distinguishing shall be eligible for registration
Article 15 (1) of the TRIPS Agreement provides that any sign capable of distinguishing the goods or services of the one undertaking from those of those of other undertakings shall be eligible for registration as a trademark. Registration and better protection of trademarks is the basic feature of the Trademarks Act, 1999, governed by universally accepted norms and standards for such protection. Being forward looking, the law permits registration of a mark if it is capable of distinguishing the goods or services for one person from those of others and, in this respect, the definition of “trademark” is so broad, it does not seem to exclude in specific terms any mark so long as it satisfies the essential function of its being capable of distinguishing.
Registrability may depend on use, but not a condition for filing
Article 15(1) of the TRIPS Agreement provides that registrability provides that registrability may be conditional upon visual perceptibility and, for signs where are not inherently distinctive, on distinctiveness acquired through use. It would appear from the above requirement that a country may not provide protection to trademark, unless they are visually perceptible. So ‘sound marks’ or smell marks will be registered only if they can be depicted as a graphic representation to become visually perceptible.
Under the new law, the expression trademark is defined in Section 2(1)(zb) as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. Thus, a mark for which registration has been applied for, should be visually perceptible. Section 9 enacts that for registrability the mark must be distinctive, that is to say ‘capable of distinguishing the goods or services of one person from those of another person’. Either it may be inherently so or it has acquired a distinctive character as a result of use or is otherwise a well-known trademark.
Article 15(2) of the TRIPS Agreement provides that “Members may registrability depend on use. However, the general utilization of a trademark shall not be a mandatory thing for filing an application for trademark registration”. Under the Trademarks Act, 1999, while registration may depend on use , actual use of a trademark is not a condition for filing an application for registration, as even a mark “proposed to be used” is permitted to be applied for and registered in terms of section 18(1).
Requirement as to use of trademarks
Article 5C(1) of Paris convention states where use of a registered trademark is required for maintenance of registration, the registration may be cancelled for failure to use the mark only after a reasonable period has elapsed, and that too only if the owner does not justify such failure. Section 47 of the Act contains provision in this respect.
The TRIPS Agreement provides that an application shall not be refused solely on the ground that intended use has not taken place before the expiry of a period of three years from the date of application. Further, if ‘use’ is required for maintenance of registration, under Article 19(1) of the TRIPS Agreement, trademark registration may be abandoned only after an unbroken time period of minimum of 3 years of non-use, unless valid reasons for non-use are shown. The value of a trademark is dependent on its use in the course of the trade in relation to the goods or services in respect of which it is registered. Accordingly, section 47 of the Act provides for removal from the register on ground of non-use for a continuous period of 5 years from the date on which the mark is actually entered in the register. However, such non- use may be shown to have been due to special circumstances in the trade which includes restrictions imposed by any law or regulation as mentioned in section 47(3). The law further enacts that use of a trademark by another person by way of “permitted use” is deemed to be used by the proprietor for the purpose of section 47 or for any other purpose for which such use is material under the Act is mentioned in the Section 48(2). Article 5C(2) of the Paris convention provides that the use of a trademark by its proprietor in a form differing `in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of trademark registration, nor diminish protection granted to the mark. Under section 56 of the Act, the Registrar may accept use of a registered associated trademark or of the trademark with additions or alterations not substantially affecting its identity, as an equivalent for the use required to be proved. Whether or not the altered mark in use has substantially affect the identity of the mark.
Nature of goods or services no bar to registration
It is mandatory under Article 7 of the Paris Convention and also Article 15(4) of the TRIPS Agreement that the nature of goods or services to which a trademark is to be applied will not be an obstacle to trademark registration. This is an important principle, but did not find a place in the predecessor enactment. The absence of such provision enabled the Government to issue executive directions to the Registrar to prohibit the registration of the trademarks in respect of certain categories of drugs and medicines the Government required these to be marketed under generic names. The requirement prohibiting use of trademarks under the Drugs & Cosmetic Rules, 1948 was struck down by the Trademarks Act and contrary to section 2 of the Drugs Act. The directions to Registrar were eventually cancelled. Now, the new Trademarks Act, 1999 of section 9(3) explanation, has given statutory force to the requirements of the international treaties.
Denial of registration on other grounds
Article 15(2) of the TRIPS Agreement expressly states that a Member State may deny registration of a trademark on other grounds, provided that they do not derogate from the provisions of the Paris convention. In consonance with the internationally accepted norms, a mark does not quality for registration, if-
- It is of such nature as to deceive the public or cause confusion, Registration of imitations of well-known marks, in particular, is not permitted.
- It is likely to cause hazard to the religious sensitivities of any class or sections of the citizens of India.
- It consists or combines scandalous or obscene matter.
- Its use is prohibited under the Emblems & Names (Prevention of Improper use) Act, 1950.
As a relative section for refusal of trademark registration under section 11, the registration of a mark which is identical with or similar to an earlier trademark, for goods or services which are not similar, is not to be permitted, if the earlier trademark is a well-known trademark in India and the use of the later mark would take unfair advantage of or be detriment to the distinctive character or reputation of the earlier mark.
Publication of trademark an opportunity to oppose or cancel registration
Article 15(5) of the TRIPS Agreement mandates that members shall publish each trademark and afford a reasonable opportunity for petitions to cancel the registration and may afford an opportunity to oppose the registration. Since, trademark registration confers exclusive rights on the registered proprietor, protection of public interest is essential. Accordingly, as an important adjunct to the procedure of substantive examination of a trademark application to ascertain the distinctiveness of the mark, the law provides for publication of each trademark prior to registration and affords opportunity for filing “opposition” to the registration of the mark by any person as mentioned in section 20 and 21. As a post registration procedure, the law further enables an aggrieved person to seek cancellation or variation of registration on grounds specified under section 57.
Exclusive right by registration
Article 16(1) of the TRIPS Agreement provides that the rights conferred shall be include the exclusive right to prevent third parties from using identical or similar signs for identical or similar goods or services where such use would result in likelihood of confusion, the later to be presumed where the goods or services are identical. Certain allowable exceptions, such as fair use of descriptive terms are provided in the Article 17 of the TRIPS Agreement. Under the new Act, the registered proprietor has exclusive right to the use of the trademark in relation to the goods or services and prevents all third parties not having his consent from using in the course of trade identical or similar mark in relation to such goods or services as mention in section 29(1). In the case of use of an identical mark for identical goods or services, there is a legal presumption of likelihood of confusion as mentioned in section 29(3). The law explicitly enacts that the rights of a registered proprietor of a trademark shall not prejudice or interfere with any existing vested prior rights as mentioned in section 34 or use by a person of his own name or that if his place of business etc., or registration of the same or similar mark by a different proprietor on the basis of honest concurrent use or other special circumstances as mentioned in section 11(4) and section 12.
Protection of well-known marks
Article 6 of the Paris convention and Article 16(2) and 16(3) of the TRIPS Agreement require a member country to refuse or cancel registration and to prohibit the use of a trademark that is liable to create confusion with another mark already well-known in that member country for identical or similar goods. The purpose is to extend protection to a trademark that is well known even though it is not registered or used in that country. The new law provides for added protection to well-known trademarks by a comprehensive definition of the expression in section 2(1)(zg) and by strengthening the related grounds for refusal of registration under section 11(6) to 11(10) through detailed provisions. With a view to prevent infringement of well-known marks, suitable provisions have also been made in section 29.
Term of registration
Under Article 18 of the TRIPS Agreement, the term of initial registration and renewals shall be not less than seven years, renewable indefinitely. Under the new law, the registration of a trademark is for a term of 10 years and which is renewable indefinitely on payment of renewable fees as mentioned in section 25 of the TRIPS Agreement. The law also provides for a grace period for payment of renewal fees, with a payment of surcharge when such fees are paid within the grace period, in terms of Article 5b of the Paris convention.
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