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Iconic Taj Mahal Palace Hotel to be the first Trademarked Monument of the Country

Iconic Taj Mahal Palace Hotel to be the first trademarked monument of the country

By Kshitij Malhotra, Partner and Moumita Roy, Associate

A first for the Mumbai skyline and a first for India, the iconic hotel building and the signature dome of The Taj Mahal Palace, Mumbai acquire an image trademark for its defining structure

The recent changes introduced in trademark law in India are auguring well for registration of unconventional marks. One of the recent registrations that has made the news is that of Exterior Image of “Taj Mahal Palace and Tower”. With the registration of the opulent palace as a trademark, the trend of Indian trademark has set into a broader direction. 

The Taj Mahal Palace is the first monument of India, which has been recognized as a trademarked building. Just to give the historical context, the hotel started working in 1903. At that time it was marked as first ever harbor landmark of the country. The location of the building is an alluring site facing the Gateway of India. The majestic location gives an opportunity to view the beauty of Arabian Sea. The luxury hotel is recognized as the world leader in hospitality and has a rich history of hosting kings, dignitaries and eminent personalities from across the world. Unfortunately, the hotel was also one of the sites of terrorist attack that shook Mumbai in 2008.

Commercially the exterior of the monument is a source indicator distinguishing the famous Taj Mahal Palace. The monument and its red tiled Florentine Gothic dome which crowns the Indo Saracenic arches and architraves tombs are leading the sky of Mumbai since more than a century and are acting as the “trig point” for the Indian navy. The view is the inseparable identity of the city itself.

Interestingly, the Taj Mahal Hotel is owned by THE INDIAN HOTELS COMPANY LIMITED. Apparently, after completion of its successful 114 years of operation, the hotel owners decided to file a trademark application for the registration of the building as a trademark.

The application for registration was filed by IHC on 13/10/2016, vide its application no 3386351. The application was made in class 43 for services of providing food and drink; temporary accommodation. The mark was applied claiming use since 11/02/1903. The registration certificate no: 1555165 was issued on 17th may, 2017 and the registration is valid till 13/10/2026. Apparently, there is another application with application No: 3387665 dated: 14/10/2016 for Taj Mahal Palace (image) which is still pending.

It will be fair to say that the registration category of Taj Mahal Hotel is more of a Trade Dress. Interestingly, the registration not only will offer protection from unauthorized reproduction of the image of the hotel, but also should bring the applicant the exclusive right to use its extraordinary building design in hotel business. This could mean that architecture of the building cannot be copied by any hotels or restaurants engaged in providing similar services.

Also interestingly, the registration of the mark brings out the apparent shift in mentality of the trademark offices in India towards unconventional marks. Historically, the trademark office has been conservative in registering such unconventional marks. Registration of this mark is a paradigm shift. It should be remembered that the new trademark rules initiated in March of this year has set a procedure for registration of unconventional marks, such as color mark, sound mark, shape of goods marks etc. The registration of this mark would act as a basis for registering many such similar marks and should encourage the trademark applicants to venture into registering valuable IPs in form of such marks lying with them.

THE CURIOUS SAGA OF WWW.GOOGLEE.IN

THE CURIOUS SAGA OF WWW.GOOGLEE.IN

 By Kshitij Malhotra, Partner and Moumita Roy, Associate

“You no longer search for something. You Google it.”

Google, the internet search portal, is a big name throughout the world. Infringement of the brand value of Google, not only is threatening but also critical in the internet space. Therefore, the recent Delhi High Court Decision relating to registration of conflicting .in registry of search portal googlee.in is such an interesting topic of discussion.

Back ground of the dispute:

In this interesting case, way back in 2007, an ingenious defendant had managed to secure registration of a domain named www.googlee.in and incredibly operated the website for almost 4 years. After use of the website came into notice of the world famous brand Google,  and they immediately launched a complained at the National Internet Exchange of India, the watchdog of internet space in India. As per the available IN Registry dispute resolution mechanism, any complaint has to be referred to the arbitrator, and accordingly an arbitrator was appointed to look into this case.

Figure 1, Figure 2 are the comparative screen shorts of the web pages of Googlee (on left) and Google (on right).

In complaint to the IN registry, Google contended that they are a well-established brand worldwide since 1997. They added the following contentions:

  1. That the disputed domain name is visually conceptually and substantially identical to their domain, and
  2. The use of both the domains is as search engine.

The arbitrator awarded in favour of the Google and found a proprietary right of the complainant over the domain name googlee.in. The arbitrator ordered cancellation of the disputed domain with such direction to the registry. The infringer appealed.

The Proceedings at Delhi High Court:  

In the appeal filed before Delhi High Court, the appellant, without having many choices to defend, tried to challenge the arbitrator award on technical grounds on which the arbitrator reward was granted rather than denying infringement of domain name. The court rejected the grounds taken by the appellant.

Interestingly, the court pointed out that the appellant/ petitioner had failed to defend why have he selected a domain name similar to world’s most popular search engine. Further, the court pointed out the intentional adoption of similar domain names. The court said that:

“It was clear that the adoption of such a name is not a co incidents but intentional.”

The court pursued the decision of the arbitrator and rejected the defence of the petitioner mentioning the conflicting search portal as a slavish imitation.

Conclusion: The advocate representing the brand Google has rightly gauged the well-known ness of the Google in terms of a search engine. He said “You no longer search for something. You Google it”. The search verb has metamorphosed in web English into Google. Moreover, Google is a recognised well known mark in India since 2011.

It is interesting to know that in India, domain names are recognized as trademarks. In a similar case, Rediff Communication Limited vs. Cyberbooth on April, 1999, the High Court of Bombay decided that:

“Internet domain names are of importance and can be a valuable corporate asset. A domain name is more than an Internet address and is entitled to the equal protection as trade mark. With the advancement and progress in the technology, the services rendered in the Internet site have also come to be recognised and accepted and are being given protection so as to protect such provider of service from passing off the services rendered by others as his services.”

In any case, the incorporation of a domain by just adding mere ‘e’ with the name of such a mammoth brand can only is caused by the ignorance of the amount of legal protection behind the brands. It is alarming to the legal system. The true sense of brand value, the meaning of trade mark protection should be taught to the trading class explicitly. The High Court decision is a steady stride in desired direction which is worth acclamation.

Links:

The Arbitration Award

The High Court of Delhi Order.

INTRODUCTION OF NEW INDIAN TRADEMARK RULES, 2017

INTRODUCTION OF NEW INDIAN TRADEMARK RULES, 2017

 By Moumita Roy, Associate

On 6th March, 2017, the Department of Industrial Policy and Promotion (DIPP) revamped the rules for registering trademarks by notifying new Trade Mark Rules, 2017 suppressing the old rules instituted way back in 2002. These new rules are directed towards streamlining and simplifying the process of Trade Mark registration in India. We are summarizing the changes in few lines below.

  1. All the old TM forms are discontinued and replaced by new set of forms introduced by registry.

To give a respite from encumber some procedure of filing application, rectification, oppositions, renewal etc. 8 new forms have been introduced by the registry in replacement of earlier 74 forms.  The important new forms introduced are TM-A for filing application, TM-M for multi functions, TM-O to file opposition, and TM-R for renewals.

  1. Increase in govt. fee

In increasing the Govt. fee the Applicants are subdivided into certain categories, namely- individuals, startups, small entities & others.

The physical application filing fees is Rs 5000/- (USD 75/-) now onwards for an individual applicant, start up entities, and small entities.

For this purpose the meaning of “startups” and “small entities” have been explained.

  1. A startup entity has been defined as:

    Any entity incorporated within last 5 years and the turnover for any of the financial years, out of the above mentioned 5 years, did not exceed Rs. 25 crores. For the purpose of this explanation, foreign companies which fulfills the above criteria can also claim start up entity status.

  2. A small entity has been defined as:

    A company in service sector, whose capital investment does not exceed Rs.5 crores (Approx. USD .75 million) and for manufacturing sector, whose capital investment does not exceed Rs. 10 crores (Approx. USD 1.5 million).

Foreign companies fulfilling the above criteria can also claim small entity status. The fee has been increased to Rs.10,000/ for any other applicant.

The other prominent changes in the fee structure are as follows:

  • To register a subsequent proprietor in case of assignment or transfer for each Trade Mark has been exceeded to Rs.10,000/.
  • To extend time, for certified copy of registration certificate or duplicate registration certificate the fee is Rs. 1,000/- in the new rule.
  • To expedite the process of application the fee is Rs.40,000/- (USD 600/-) now onwards.
  • The fee to renew a registered trade mark has been increased to Rs.10,000/-.

To promote e-filing of TM applications, the fee for online filing has been kept at 10% lower than that for physical filing.

Moreover, overall fees have been rationalized by reducing the number of entries in Schedule I   from 88 to just 23.

  1. New provisions for registering 3D Marks, Colour Marks and Sound Marks.

A provision for registering 3D marks, Colour Marks, shape of goods and sound marks have been included in the new rules. In the earlier rules there were only the procedure to register a word mark and a device. These new regime will help the proprietors to get a better protection against infringement.

For registration of 3D marks, 3 different views of 3D marks have to be provided. For registration of sound marks, Mp3 sound notes of 30 seconds (at max) have to be produced. For registration of shape of goods or its packaging, five different views of the goods and its description in words has to be provided.

  1. Modalities for service of documents from applicants to the Registry and vice-versa through electronic means have been introduced to expedite the process;

With a strong thrust towards digitalizing the entire administration incentives have been provided for digital filing and electronic communication. E-mail has been made an essential part of address for service to be provided by the applicant or any party to the proceedings so that the office communication may be sent through email. To modernize the process hearing through video conferencing has been introduced. Hearing through video conferencing has also been introduced.

  1. Simplified and Expedited Registration process:

The provisions relating to expedited processing of an application for registration of a trade mark have been extended right up to registration stage. In the earlier rule it was only possible to expedite the examination process. Hence, in new rule one can apply for an expedited process still grant.

To speed up the registration process the numbers of adjournments in opposition proceedings has been marked a limit to a maximum number of two by each party, which will help dispose of matters in time.

The Procedures relating to registration as Registered User of trademarks have also been simplified.

  1. Modalities for determination of well-known trademarks have been laid out for the first time.

New Rules has for the first time laid out modalities for determination of well-known trademarks for brands that enjoy good reputation in the market. A brand can apply for the determination to be a well-known after e-filing of a fee of Rs 1 lakh or USD 1500 (Approx.).

  1. Conclusion

At the conclusion, we appreciate the strive of the registry to update the Trade Mark rules where the speed of the era is inculcated by promoting e-filing, introducing the electronic means for service of documents , granting video conference for hearing etc. Regarding the fee hike, it is true that there is sudden and dramatic increase in fee for filing. But, it also should be considered that the application fee was last increased in 2009. Moreover, to get a world class service from the Indian TMR, the fee must be competitive in the world market. It is a fact that we are much cheaper Trade Mark fee compared to other developing countries even after the increase in fee.   We should not overlook the humanitarian side of the new rule that small entities, startups and individuals are saved from this drastic fee hike to promote small business. Now, with a world class competitive fee structure of Indian trademarks and modernized rules, we are expecting to experience a world class transparent pace of process in the trade mark prosecution and grants.

 

Source: Trade Mark Rules, 2017

LAW OF WELL-KNOWN MARKS IN INDIA

LAW OF WELL-KNOWN MARKS IN INDIA

By Moumita Roy, Associate

 INTRODUCTION

With Globalization at high pace, India opened its doors to foreign investors at the end of twentieth century and permitted the use of foreign brand names in India. A number of globally well-established brands started to explore investment options in India. In order to address different infringement issues in this market, they relied on the common law remedy of passing off, as there was no specific provision in the old Trademark Act for the protection of well-known marks.

The set of new Laws to handle well known marks and related issues was enacted in 1999 following the requirement enshrined in General Agreement on Trade and Tariff (GATT). The new Act included that any Trade Mark which is well-known in any part of the world can be registered even if there are no goods in Indian Market.

DEFINITION OF WELL-KNOWN MARK

The term “well-known trade mark” has been defined in the Trade Marks Act, 1999 and refers to a mark which has become so very known to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.

Sec 2(1) (zg) of the Trade Marks Act, 1999, gives the definition of a well-known mark as under:

well-known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services”.

HOW TO DECIDE WHETHER A MARK IS WELL-KNOWN?

In the trademark Act, the definition of well-known mark has been provided. But whether a mark is well-known or not is a factual question? The factors generally considered in determining the well-known criteria of the mark are as follows:

  • The number of actual or potential consumers of the goods or services;
  • The number of persons involved in the channels of distribution of the goods or services;
  • The business circle dealing with those goods or services,
  • That the trade mark is well known to the public at large in India.

Notably, there is no provision under the Indian trademark law to seek a declaration from the Trademark Registry that a mark is well known. However, the registry has formed a committee of members who review and update the list of well-known trademarks periodically. Thus, rights holders can bring any court decisions where their marks have been held to be well known to the attention of this committee and present a case for their mark’s inclusion.

TYPES OF PROTECTIONS IF A MARK IS A WELL-KNOWN MARK

In the realm of trademarks, getting a “well-known” status is perhaps akin to attaining “MOKSHA” because the protection of well-known marks transcends the traditional standards and objectives of trademark protection.

The protection of well-known marks acquired a new hue in India. The TM Act contains essentially five provisions referring to well-known marks, namely, Sections 2(1)(zg), 11(2), 11(6), 11(7), and 11(9). Also, under Section 29(4) of the TM Act, dealing with trademark infringement, there is a specific provision to protect registered trademarks that have “a reputation in India” against third-party use in connection with dissimilar goods and services.

Immunities granted to well-known trademarks can be summed up as under:

  • The owner of a well-known trademark may prevent others from registering the same as, or similar to, the well-known trademark in identical or similar categories of goods or services. For that it is not important for him to be registered in India.
  • The owner of a well-known registered trademark may injunct others from incorporating the well-known trademark in the name of their enterprises;
  • The owner of a well-known registered trademark is not restricted by the five-year time limit for bringing cancellation actions against trademarks registered in bad faith, while such five-year time limit applies to ordinary trademarks; and
  • In infringement cases, courts or administrative bodies tend to grant larger awards to owners of well-known trademarks, and subject infringers to more severe punishment.

While considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall-

  • Protect a well-known trade mark against the identical or similar trade-marks;
  • Take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.

JUDICIAL INTERPRETATION

Judicial authorities in India have successfully protected well-known trademarks from infringement and passing off. The trend of court decisions reveals the truth vividly.

In the year 1994, the Delhi High Court applied the concept of dilution when considering use of the BENZ mark. This is the first case where a court took judicial notice of a mark’s reputation without insisting on actual confusion and restrained use of a similar mark.

In the year 1996, the Bombay High Court restrained an Indian company, Kamal Trading Co., from using the mark 7’O CLOCK on toothbrushes. It held that the plaintiff had acquired an extensive reputation all over the world.

In, 1996, an Indian company was injuncted from using the mark Whirlpool for their goods. The Court held that the mark Whirlpool had established a trans-border reputation and is a well-known mark.

Since the Act came into effect in 2003, the protection of well-known marks has raised several issues in India. The list of well-known mark take a shape with the courts realistic decisions like TATA, VOLVO, PepsiCo, Telco, ENFIELD BULLET, KIT KAT, NIVEA, NIRMA and so on.

Judging from court decisions, it would appear that the protection of well-known marks in India is a high balancing act because it involves many competing considerations. Several cases have been decided by various High Courts in India where well-known marks were protected.

DRAFTED AMENDMENT RULE (SEC 127)

To revamp the existing Trademark Rules, 2002, the Department of Industrial Policy & Promotion (DIPP) has proposed a new set of Rules in latest draft of rules issued in 2015. As per the draft Rules, a right holder will be able to make request to the Registrar of Trade Marks to declare a trademark as a “well-known” mark. The request will need to be supported with a statement of case and evidence.

As per the proposed Rule 127 of the Draft Rules[1], a mark may be determined as a well-known mark and will be included in the list of well-known marks based on the discretion of the Registrar. The Registrar shall also have the power for deciding the criteria to get well-known status of a mark. To be included in the list of well-known mark the applicant has to pay the fee. This list will be maintained by the Registry. The enlisted name can also be removed from the list at the satisfaction of the registrar if the mark has gained the status erroneously or with misrepresentation.

HOW CAN FOREIGN ENTITIES BENEFIT FROM AMENDED RULE?

Recent rulings show that the courts are pragmatic in giving due credence to the international character of trademarks and recognizing their well-known status. The amended rule will add a new dimension to this effort. Renowned brands throughout the world will be attracted to get enlisted in well-known marks and explore the attractive emerging market destination of India. The magnificent protection history will entice the intention of world famous brands of getting protected in Indian market.

Till date, a brand is required to wait for court’s decision where an infringement case is involved and the brand drags the infringing mark to the court. Clarifying the above, it can be interpreted that a well-known brand can get favourism if the applicant moves to a court for infringing marks. However, once the amendment comes into force, the well-known brands will get intrinsic protection of well-known ness.

In its present form, Indian trademark law precisely extends statutory protection to well-known trademarks. After the amendment, there will be a process to claim well-known status as recognition to a well-known brand. The brands will be protected from infringement, dilution, free-riding and tarnishment as a right.

Consequently, the big and renowned brands will be relieved from the complex court proceedings which are truly foreign to them.

The quality consistency will help the brands to earn consumer loyalty on a larger scale in the dynamic Indian market.

CONCLUSION

Concluding the above discussion, the present set of amended rules will outset a new trend in the Trade Mark terrain in India. It is worth mentioning that the current trade mark laws as well as the common law have shielded the well-known trade marks in India thoroughly. In future, this will grant the owners a legal right to declare their trademarks as well known. This will undoubtedly increase the interest of the foreign investors to protect their well-known marks in India. A reputed mark can be protected comprehensively in India by Indian laws. The big brands can enjoy the freedom of using their well-known trademarks without any apprehension of infringement, tarnishment and dilution controversies. There are high chances of elimination of duplicate or deceptively similar products from the market and markets will be expectedly comprised of original products. Such amendment is Trademark Rules will bring considerable change to the nature of Indian market.

Automated Procedure for Generation of Registration Certificates for Trade Marks in India

Automated Procedure for Generation of Registration Certificates for Trade Marks in India

By Rachna Budhiraja, Associate & Garima Rai, Sr. Associate

The Controller General Patents, Designs and Trademarks issued a public notice dated 28 July, 2016 regarding the process relating to generation & issuance of registration certificates for applications made for registration of trademarks in India. According to the said notice, from 1st August, 2016, the registration certificates will be generated through an automated system in accordance with the relevant provisions of the Trade Marks Act & Rules and made available to the applicants concerned or their authorised agents on record, in respect of all trademark applications.

The automated registration certificates will be issued for the trade mark applications-

  • which have been published in the Trade Marks Journal Number 1720 dated 23.11.2015 and thereafter,
  • where no request for amendment filed on behalf of the applicant is pending for disposal,
  • where the copy of original application for registration is available in the Trade Marks Registry’s electronic database,
  • where no requirement (like fee, Power of Attorney, etc.) is pending for compliance on part of the applicant , and
  • which have not been specifically prohibited for registration by the order of any court, IPAB or any competent authority

The Indian Trademark Registry further clarifies that the trademark cases which are left out by the automated registration process due to aforesaid reasons will be processed as per law by the Registration wing of the Examination Publication and Registration Section of the TMR Mumbai through the present Trade Marks System on case to case basis.

In all the other cases the automatically generated trademark certificate will be transmitted to the applicant or his authorised agent vide the email address recorded with the trademark office. To this end, the applicants or authorised agents are required to submit their valid email-id to the TMR office for facilitating quick transmission of the trademark certificates.

The Registration certificates generated by the automated procedure will be transmitted to the concerned applicant or his authorised agent on record on his email address recorded with this office and shall also be made available on the official website (http://www.ipindia.nic.in) along with status of the application concerned. The Registration certificate made available on the website may be downloaded and printed as desired by the applicant.

The automation of the generation of the trademark registration certificates is a praiseworthy initiative as it helps in reducing the time taken for the transmission of the registration certificate to the applicant. Further, the applicant should also comply with all the requirements for obtaining trade mark registration as per the Trade Marks Act & Rules. This reduces the overall time taken for the registration of a trademark.

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