HVPS Law College







The evolving world is undergoing a silent intelligence revolution. India is not behind withdeveloping interesting trends. The following highlight a number of trends and suggests how they may evolve

The Indian government, with the aim to nurture entrepreneurship has taken a huge leap and become the harbinger of the ‘Make in India’ and ‘Digital India’ campaigns.

To encourage innovation and ownership, the government is leading the mandate to become an entrepreneur. Successful registrations in key trademarks have been acquired, such as: ‘Make in India’

These tag lines and slogans are linked with the government. The entrepreneurial mindset is bound to percolate to the judiciary as quasi-judicial bodies such as the Trade Marks Office (TMO) are more amenable to creating a progressive environment on acceptance of trademarks, suggestive trademarks, slogans, tag lines, etc.

Leading brands are moving towards branded patriotism in brand promotions and Sales campaigns. Hero MotoCorp released an advertisement featuring the ‘HeroSalutes’ hashtag with a theme based on honouring Indian soldiers. PayTM had released an advertisement campaign last year at Independence Day, which was focusing on combating corruption in India.

The outcome of such country-centric advertising is conversion of emotional quotient through CSR activities in converting into brand equity and, hence, getting protected.

The Trade Marks Organization in India faces difficult situation. On one hand, the Trade Marks Organizationisworking hard to clear its pendency, not particularly the historic backlog but more in the nature of expediting and processing the prosecution of trademarks in a more organized fashion. On the other side, in its zest to expedite, the Trade Marks Organization has been delegating the critical task of hearings to examiners who have been refusing various trademarks. The refusals are not as speaking orders, and hence, the process of getting relief appears complicated task.

Such actions are being challenged in the High Court, and the authors believe it is a temporary situation. Eventually, the courts will streamline the process and reinforce order.

Return to national filings

The Madrid Protocol has a timeline of 18 months, which has to be adhered to. In many cases, trademarks are under challenge in opposition proceedings in India.However, due to the timeframe of 18 months lapsing from the date of filing of the trademark applications, these trademarks are being construed as deemed registered by the Trade Marks Organization. In the face of global competition, businesses cannot afford to take such risks with their vital Intellectual Property.

Filing national trademark applications, thus, seems to be a safety net.

Prior adoption

The Trade Marks Organization has become strict with the nature of documents that are used to support prior adoption and use. This is a red flag for all foreign brands that have traditionally opted not to file for trademark protection in India, or postponed the idea of filing until the business acquires more maturity.

It is imperative for prior right holders to scout regions of interest and develop filing plans to secure business interest.

Well-known trademarks

Social and digital media have made the world a small place, and the reach of a brand to unknown parts of the world, and unknown consumers, has never been better.

India already had the concept of well-known trademarks, but has intensified its practice on declaration of trademarks as well known. A recent example of this is the declaration of the trademark TCS as well known. The courts in India recognized the power available to proprietors to obtain a declaration and directed that the option of filing petitions to seek a well-known declaration must be used, and also issued a direction to the registrar of trademarks to act on this quickly.

This opportunity is already being acted on by proprietors and will have more takers.

Intermediary responsibility, liability

Delhi High Court, in Christian Louboutin SAS v Nakul Bajaj and Ors, in its 2018 decision addressed the issue of intermediary liability. Darveys, a website, offers luxury brands for sale. Christian Louboutin SAS alleged that Darveys sells impaired products or counterfeits. The website also uses Christian Louboutin’s image and uses “Christian” and “Louboutin” as meta-tags.

Darveys contended that the products are genuine and they merely facilitate booking of orders. Products are sold directly by sellers and no after sales services or warranty is offered by Darveys.

The High Court analyzed the responsibilities of e-commerce platforms that actively conspire, aid or induce the commission of unlawful acts as opposed to situations for taking advantage of the safe harbour provision.

With the spread of multiple e-commerce platforms, this judgment has led to a profiling of such platforms and will have a positive impact on future exploiters.

Sensory trademarks

Businesses are creating customized experiences for the consumer, guiding their spending habits. This new wave of marketing has also paved the way for non-traditional trademarks that target the senses of touch, smell, sight and sound.

The economic effect of sensory marketing has been measured by Unilever’s Dove soap. Research consultancy Millward Brown estimates that the smell of the product contributes US$63 million to its annual US revenues, while touch accounts for US$34 million, and sight US$14 million.

Protection in non-traditional trademarks is a new trend. A recent example was when the TMO granted registration to the image of The Taj Mahal Palace Hotel in Mumbai.

This new breed of trademarks is here to stay.

Celebrity liability

Liability on celebrity endorsing has been made direct and extensive. India has seen instances where celebrities had to move the court to discharge their liabilities. M S Dhoni, the renowned cricketer, had to approach the Supreme Court of India to recover his dues after Amrapali Group, a real estate company, defaulted with its home owners, impacting Dhoni’s image as the brand ambassador.

Celebrities have become cautious during their contract negotiations.

Going local

Brands are moving towards a millennial approach and using local language to create a unique brand identity aligned to a region. The model has been successfully followed by international brands like Burger King and McDonald’s, which have developed localized advertisements and menus to appeal to local taste buds.

India is a unique market with eclectic diversity that will be capitalized.

IP audits

The Securities Exchange Board of India has made it mandatory for companies to disclose the status of their IP in the Red Herring Prospectuses.

With this, IP audits have become critical to gain investor trust.

Advertising compliance

The Advertising Standards Council of India has started its own actions against brands for false, exaggerated or disparaging claims in advertisements, with substantial complaints issued last year. Seeking legal counsel has gained traction, as it also adds to reputation management.

Advertisements are corporate assets and it is vital to ensure that they are not just legally compliant, but creates a harmonious conversation between marketers, advertisers and lawyers to produce a value-driven campaign.

Damages in India

Courts in India are increasingly awarding damages in IP disputes. It has become vital for promoters to ensure diligence and pre-empt what may impact the financials of a company.

This has increased correlation between IP and market capitalization; the impact on stock markets has also started a conversation on overlaps with corporate governance.

Extension of deadlines

The Intellectual Property Appellate Board recently digressed while interpreting the Trade Mark Rules, 2017, on seeking extensions for filing evidence a general clause for extending deadlines where no time limit is specified.

Besides to the most recent developments, in order to bring progressive changes towards a free market society, rapid liberalization of international trade practices and demonstrating its commitments to the WTO under the Trade Related Intellectual Property Rights Agreement (TRIPS), the Government of India undertook a series of steps, to conform India IP legislation to acceptable international standards. The regulations relating to all forms of IP have been amended or reissued in recent years, main .

1. Trademark law brought at par with international practices

To bring Indian trademarks law in line with international practices and to ensure implementation of India’s commitments under the TRIPS Agreement, India replaced the Trade and Merchandise Marks Act, 1958, with the Trade Marks Act, 1999. Some changes under the 1999 Act are as follows:

Service marks, for the first time, made protectable through registration.

  • The definition of “trade mark” now includes graphic representations, shapes, packagings and combinations of colours, thereby widening IPR protection.
  • The procedure for registration of trademarks expedited by removing the earlier system of Part A and B registration. In addition, only a single application need now be filed for registration of a trademark in different classes. The 1999 Act also provi ..
  • The definition of “trademark infringement” has been broadened to give protection beyond the use of identical/deceptively similar marks in relation to goods for which they are registered.
  • An action for infringement of trademark/passing-off can be filed in a district court within whose jurisdiction the plaintiff (trademark proprietor) resides or carries on business, as against the earlier law which required the suit to be filed at the defendant’s place.
  • Under the new law, both registered and unregistered trademarks can be assigned with or without the goodwill of the business. Recently, by way of the Trademarks (Amendments) Rules, 2014, the fee with respect to trademark filing has been increased in certain cases. The fee for an expedited examination have also been increased. Further, the Trade Marks Registry recently issued an Office Order little with respect to alterations that may be made to an application for trademark registration

2. Protection to Geographical Indications Provided

India has enacted the Geographical Indications of Goods (Registration and Protection) Act, 1999 (the GIG Act). The GIG Act provides for registration and better protection of geographical indications relating to goods to help identify the place of origin of goods, quality, reputation and other distinctive characteristics of these goods. The GIG Act now helps in protecting uniqueIndian products linked to some geographical region of India, such as Basmati Rice, Darjeerling Tea, Alphonso Mangoes, Malabar Pepper, Cardamom and Hyderabad Grapes, which are all well known in the international market. For many years, these products have been exported on a regular basis, demonstrating India’s reputation of high quality of these products and, therefore, require such protection. Under the GIG Act, assignment of geographical indications is prohibited, being public property. The GIG Act helps prevent geographical indications of goods becoming generic which may otherwise lead to a loss of distinctiveness and consequently loss of protection.

3. Copyright Law Modified

The 2012 amendments in copyright law, which were made to make Indian copyright law compliant with the WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms Treaty, introduced technological protection measures, ensured that fair use survives in the digital era by providing special fair use provisions, made many author-friendly amendments, special provisions for disabled, amendments facilitating access to works and other amendments.The Government is considering further amendments to the Indian Copyright Act to help deter continuing piracy. Future amendments would provide for greater deterrents against infringement through more effective legislative and administrative frameworks. These amendments would also offer the police wider powers to conduct secret raids, seize and destroy infringing products, provide faster criminal proceedings and increased punishment for piracy.

4. Integrated Circuits Provisions adopted

In compliance with obligations under the TRIPS Agreement, India has enacted the Semiconductor Integrated Circuits Layout-Design Act, 2000. This Act provides for registration of original, inherently distinctive and not yet exploited layout-designs. Any misuse of a registered layout-design can be prevented by way of an infringement action. The Act provides a term of protection for 10 years.

Leave a Reply

Your email address will not be published. Required fields are marked *