Registering a brand in India provides the owner with a full range of TM protection in case of violation of rights. The offender will bear not only civil, but also criminal liability. If you are planning to start a business in this jurisdiction and enter its huge market with your TM, then this article, which describes the key aspects of trademark regulation in India, may come in handy.
Before starting the registration procedure for TM in India, it is highly advisable to conduct a preliminary search in local databases for the identity and similarity of your brand and the already registered one. If a similar designation is found as a result of the search, then you need to determine:
- whether it is confusingly similar;
- for which goods and / or services it is registered, and compare with the list of goods and / or services for which you plan to apply for registration in India.
Let's say that your designation is not similar to the point of confusion, or it is registered for a perfectly different list of goods and services. If you filed it for registration and received a provisional refusal, then you can submit a reasoned response in favor of registration, in which you prove that the designations are not similar to the point of confusion and (or) the list of goods and services is different. If the expert of the patent office makes a final refusal to register the TM, then you can go to court to challenge it.
If, according to the search results, you find an identical or similar TM, which, according to your assumptions, is not used, you have the opportunity to early terminate this registration. However, if the owner of such a TM has valid reasons, which the court will take into account, then you will not be able to terminate the certificate ahead of schedule. By the way, the stumbling block in such cases is precisely the valid reasons for not using TM in India.
TM protection in India
The owner of a registered Indian TM has the right to exclude or prevent the use of TM by others. If the TM is nevertheless used without the consent of the owner, then this can be regarded as an offense for which the offender may be criminally liable.
One of the restrictions on the rights of the TM owner is the principle of exhaustion, which states that the owner loses control over the goods on the market as soon as the trademarked goods are sold legally and with the consent of the TM owner.
This means that the owner of the TM cannot file a claim for infringement of the rights to the Indian TM in relation to the subsequent sale or lease of goods. In this regard, businessmen may have a question: "Does the registered owner exhaust all his rights to the TM after the first sale of the product, or are there other rights of the brand owner that remain even after the start of sales?"
To answer this question, we need to step back a little and make a reference to Copyright Law. This Indian Law states that the author of a work retains moral rights in the work after it has been sold. The articles of this law became the basis for court decisions on a number of precedents, which indicate that the author retains a moral right to his work, including the right:
- be recognized as the author of the work;
- to inviolability;
- to prohibit any distortion, correction, modification or any other action relation to its work;
- to claim damages in case of damage to the work.
It can be assumed that even though the Law on TM does not have a similar provision that would exclusively enshrine the moral rights of the owner of TM, the Law on Copyright Law does not have such a possibility. However, it is currently unclear how feasible this is in practice. This is due to the fact that the burden of proof lies entirely with the registered owner of the TM. The latter must provide proof that the merchandise being sold has been tampered with to such an extent that this directly affects the reputation of the owner company.
Those planning to start litigation in India are highly advised to seek professional legal assistance in advance. Qualified and experienced solicitors of IQ Decision UK are ready to provide our clients with the necessary legal assistance in resolving Indian TM disputes. To find out more, do not hesitate to sign up for a one-on-one consultation on TM regulation in India. Reach out to us by filling out a short form below.