Raman Karthah & Co, Consultants in Intellectual Property Rights

For registrability, the trade mark must first, be capable of being represented Graphically and, second, capable of distinguishing the goods or services of one person from those of others. The graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified.

.1 Any name (including personal or surname of the applicant or predecessor in business or signature of the person), which is not unusual for trade to adopt as a mark.
2 Invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods\ services.
3 Letters or numerals or any combination thereof,
4 Devices, including fancy devices or symbols
5 Monograms
6 combination of colors or even a single color in combination with a word or device
7 shapes of goods or their packaging
8Marks constituting a 3-dimensional sign
9sounds marks when represented in conventional notation or described in words for being graphically represented.

A trade name is generally understood to mean the name or designation identifying and distinguishing an enterprise. Mark is defined to include a ‘name’ and name would thus include trade name or trading style. A trade name could very well be used to distinguish the goods or service of an enterprise. It is open to such enterprise to use its trade name as a house mark in addition to any other distinctive trademark in respect of different products.

Section 2(1) (m) defines “mark” as including a name, which would include any personal name or surname and abbreviation of a name. Though the Act does not preclude any person from adopting his own personal name or surname as a trademark in connection with his trade, prima facie, such a trademark will not be considered as “capable of distinguishing the goods or services of the applicant from those of others” having the same personal name or surname. Indeed section 35 explicitly recognizes the right of a person to trade in his own name by enacting that nothing in the Act shall interfere with any bona fide use by a person of his own name.

Whether a letter or numeral mark can be registered prima facie will therefore depend upon whether it is devoid of any distinctive character. Letters and numerals presented with additional features or which are intertwined conjoined etc. and which have a trade mark character will be accepted.

Three letter marks constituting a pronounceable word should be accepted in the prima facie case unless they are objectionable as descriptive words, acronyms, etc.

Marks which consist of two letters will also be rejected if they are descriptive abbreviations, acronyms, etc. Where two letters form a non-descriptive word the mark will be accepted.

With a view to distinguish a 3 dimensional representation from 2 dimensional marks depicting containers etc., Rule 25 (12) mandates the applicant to make a specific statement in the application that the mark sought for registration is a 3 dimensional trademark. As and when the mark is accepted and advertised, suitable entry will be made below the mark in the journal publication and later in the registration certificate, when the mark is registered.

The law does not explicitly exclude “sound” marks from registration nor does it say that a trade mark must be visually perceptible. It only provides that the trademark must be “capable of being represented graphically”. Accordingly, a trademark may consist of a sound and represented by a series of musical notes with or without words.

The law, which explicitly includes shape of goods and combination of colors, does not include “smell” within the scope of a trademark. Nor is there a specific exclusion. The definition being an inclusive one, it is obvious that unless specifically excluded, it is broad enough to include any mark or sign capable of functioning as a trade mark in the market place.

For registrability, the trade mark will have to the capable of distinguishing the goods or services of its proprietor.
One or more words constituted as a slogan may thus qualify for registration as a trade mark but the onus is on the applicant for registration of the trade mark to establish his case.

According to the prevailing view, domain names are neither automatically eligible nor automatically ineligible for registration as trademarks: the key question is whether the designation put forward for registration has the ability to function not simply as domain name, but also as a trade mark for goods or services of the kind specified by the applicant..

If the foreign word is in a language that is not likely to be known by a significant proportion of the Indian population, then there may not exist a ground for refusing the application.

As a matter of practice, the Trade Marks Registry in India and the UK consider marks consisting of the signature of the applicant or some predecessor in his business as prima facie capable of distinguishing their goods/service.

There is a clear distinction between a Trade Mark and a Geographical Indications, since Trade Mark are distinctive with respect to the product and the producer. So to0 the certification marks which are permitted in several countries. It is thus not possible to get a Trade Mark protection for a Geographical Indications, since the latter refers to goods emanating from a specific geographical region and hence may not be distinctive, in addition to the fact that the rights belong to the communities rather than to individuals and corporations. The only overlap perhaps is in the area of passing off which can be invoked in both cases where the marks are deceptive and therefore creates confusion in the minds of the users.

In fact the maximum number of litigations and alleged infringements of Geographical Indications have been for passing off. For example in a involving the use of the name ‘Spanish Champagne’, the court ruled that the name Champagne had acquired a high reputation in the market, where it was assumed that the sparkling wine under that name was exclusively produced in Champagne District, 100 miles east of Paris and therefore the use of the name for similar wines produced elsewhere was not sustainable. Similar cases were decreed in favor of Scotch whisky manufacturers.

Relationship between GIs and Traditional Knowledge

An area of great interest particularly for Developing Countries is the extension of GI protection of Traditional Knowledge based products, which have generally a base in a Geographical location. At present, under TRIPS, there is no provision to protect such valuable property. Several other treaties, however deal with this issue, the notable ones being the Convention on Biodiversity (1992), Inter-Governmental Committee on Intellectual Property Rights and Genetic Resources. Traditional Knowledge and Folklore of World Intellectual Property Organization (WIPO), UNCTAD and TRIPS Council. It would be useful to invoke the principles of GI to extend protection to Traditional Knowledge and Heritage to the extent they are unique to the Geographical territory. The use of known, but unique germ plasms available only in specific locations responsible for indigenous and effective agricultural practices that are not patentable could also come under the GI protection provisions.

A recent example of confusion over property rights to GIs is the case of Basmati, wherein a U.S Patent was granted to the Texas Company Rice-Tec which had plans to market the product which was developed out of cell lines procured from Indian\Pakistani Basmati strains. In the absence of legislation for Geographical Indications Protection in the source Countries, as well as its acceptance by other WTO Members, invoking GI to prevent the use of the term and the proposed product became problematic. Apart from issues concerning the patentability of the invention pertaining to the development of the new variety, several other issues including passing off under the Trademarks Acts became relevant. Rice-Tec claimed that Basmati had already become a Generic name Texmati, Kasmati and Jasmati, would not have infringed either Trademark or GI protection laws. Ultimately many of the Claims contained in the original Patent Applications were withdrawn by the patentee and only a limited number of claims now remain in the final Specification. Apart fromissues concerning the patentability of the invention pertaining to the development of the new variety, several other issues including passing off under the Trademarks Acts became relevant. Rice-Tec claimed that Basmati had already become a Generic name Texmati, Kasmati and Jasmati, would not have infringed either Trademark or GI protection laws. Ultimately many of the Claims contained in the original Patent Applications were withdrawn by the patentee and only a limited number of claims now remain in the final Specification.

PATENTS – WHAT IT IS

A Patent is an intellectual property right relating to inventions and is the grant of exclusive right, for limited period, provided by the Government to the patentee, in exchange of full disclosure of his invention, for excluding others, from making, using, selling, importing the patented product or process producing that product for those purposes. The purpose of this system is to encourage inventions by promoting their protection and utilization so as to contribute to the development of industries, which in turn, contributes to the promotion of technological innovation and to the transfer and dissemination of technology. Under the system, Patents ensure property rights (legal title) for the invention for which patent have been granted, which may be extremely valuable to an individual o a Company. One should make the fullest possible use of the Patent System and the benefits it provides. Patent right is territorial in nature and a patent obtained in one country is not enforceable in other country. The inventors/their assignees are required to file separate patent applications in different countries for obtaining the patent in those countries.

Legislation

The Patent System in India is governed by the Patents Act, 1970 (No.39 of 1970) as amended by the Patents (Amendment) Act, 2005 and the Patents Rules,2003, as amended by the Patents (Amendment) Rules 2006 effective from 5.5.2006.

Types of patent aplications

Ordinary Application
Application for Patent of Addition (granted for Improvement or Modification of the already patented invention, for an unexpired term of the main patent).
Divisional Application (in case of plurality of inventions disclosed in the main application).
Convention application, claiming priority date on the basis of filing in Convention countries.
National Phase Application under PCT.

Who may apply

The inventor may make an application, either alone or jointly with another, or his/their assignee or legal representative of any deceased inventor or his assignee.

General precautions for applicant

The first to file system is employed, in which, among persons having filed the same invention, first one is granted a patent, therefore, a patent application should be filed promptly after conceiving the invention. It is common experience that through ignorance of patent law, inventors act unknowingly and jeopardize the chance of obtaining patents for their inventions. The most common of these indiscretions is to publish their inventions in newspapers or scientific and technical journals, before applying for patents. Publication of an invention, even by the inventor himself, would (except under certain rare circumstances) constitute a bar for the subsequent patenting of it. Similarly, the use of the invention in Public, or the commercial use of the invention, prior to the date of filing patent application would be a fatal objection to the grant of a patent for such invention, thereafter. There is, however, no objection to the secret working of the invention by way of reasonable trial or experiment, or to the disclosure of the invention to other, confidentially.

Another mistake, which is frequently made by the inventors, is to wait until their inventions are fully developed for commercial working, before applying for patents. It is, therefore, advisable to apply for a patent as soon as the inventor’s idea of the nature of the invention has taken a definite shape.

It is permissible to file an application for a patent accompanied by a “Provisional Specification” describing the invention. The application may, therefore, be made even before the full details of working of the invention are developed. The filing of an application for a patent disclosing the invention would secure priority date of the invention, and thereby, enable the inventor to work out the practical details of the invention and to file complete specification within 12 months from the date of filing of provisional specification.

Appropriate office for filing an application and for other proceedings

Application is required to be filed according to the territorial limits where the applicant or the first mentioned applicant in case of joint applicants, for a patent normally resides or has domicile or has a place of business or the place from where the invention actually originated. If the applicant for the patent or party in a proceeding having no business place or domicile in India, the appropriate office will be according to the address for service in India given by the applicant or party in a proceeding. The appropriate office once decided in respect of any proceedings under the Act shall not ordinarily be changed. The four patent offices are located at Kolkatta, Mumbai, Delhi & Chennai (Annexure 1)

Rights of the patentee

Where a patent covers a product, the grant of patent gives the patentee the exclusive right to prevent others from performing, without authorization, the act of making, using, offering for sale, selling or importing that product for the above purpose.

Where a patent covers a process, the patentee has the exclusive right to exclude others from performing, without his authorization, the act of using that process, using and offering for sale, selling or importing for those purposes, the product obtained directly by that process in India. These rights created by statute are circumscribed by various conditions and limitations as provided in the Patents Act, 1970 as amended by the Patents (amendment) Act, 2002.

Registrar of the patent

The Registrar of Patents is kept in the Patent offices and can be inspected or extract from it can be obtained on payment of prescribed fee. Register of Patent contains the name and address of the patentee, notification of assignment etc., particulars in respect of validity or proprietorship of patent and payment of renewal fee.

DOCUMENTS REQUIRED FOR FILING AN APPLICATION

Application form in duplicate (Form 1)
Provisional or complete specification in duplicate. If the provisional specification is filed, it must be followed by the complete specification within 12 months (Form 2).
Drawing in duplicate (if necessary).
Abstract of the invention in duplicate.
Information & undertaking listing the number, filing date & current status of each foreign patent application in duplicate (Form 3).
Priority document (if priority date is claimed) in convention application, when directed by the Controller.
Declaration of inventor-ship where provisional specification is followed by complete specification or in case of convention /PCT national phase application (Form 5).
Power of attorney (if filed through Patent Agent).
Fee (to be paid in cash/by cheque/by demand draft) (See Schedule 1)

Note: The cheque or demand draft should be payable to the “Controller of Patents” drawn on any schedule bank at a place where the appropriate office is situated).