INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
4.9 Incorrect Information in an Application The Trade Marks Act 1999 enumerates numerous offences in relation to falsifying or falsely applying a trade mark, making or possessing instruments for fal - sifying trade marks, applying false trade descriptions and so on. The punishments for these offences vary, but the punishment can be as severe as imprisonment for up to three years, with or without a fine. It is possible to correct the information in an applica - tion, except if it is considered a substantial alteration. 4.10 Refusal of Registration The TMO can object to or refuse an application on either absolute or relative grounds. Absolute grounds, which disqualify a mark from being registered (according to Section 9 of the Trade Marks Act 1999), include: • the mark is not distinctive; • the mark is descriptive of associated goods and services; • use of the mark has become customary and is bona fide use in established practices; • the mark is deceptive and will cause confusion; • use of the mark can offend the religious views of persons in India; • the mark contains obscene or scandalous ele - ments; and • the shape of a mark is a result of the nature of the goods themselves or is required for functional use. Relative grounds for refusal of registration (according to Section 11 of the Trade Marks Act 1999) include: • deceptive similarity of the mark in question with the opponent’s registered mark; • similarity of the mark in question with a mark which has prior use; and • adoption of the mark in bad faith. In order to overcome TMO objections raised under Section 9 (1), the applicant may submit that the mark has acquired a distinctive character by virtue of its prior use. The use of a trade mark must be established by adequate evidence.
Objections raised under Section 11 can be overcome by the applicant by: • removing the conflicting goods or services by way of amendment; • obtaining consent from the proprietor of the cited mark(s) under Section 11 (4); • filing evidence to establish honest concurrent use to secure registration under Section 12; • securing rectification of the Register of Trade Marks excluding such goods or services of the same description from the specification of the cited mark under Section 57; or • dividing the application and allowing the objec - tions-free part of the application to proceed further. 4.11 The Madrid System India is a signatory to the Madrid Protocol. The applicant must be an Indian national, be domi - ciled in India, or have a real and effective business or commercial establishment in India in order to obtain an international trade mark registration in India. Furthermore, the applicant must have an application for a national (Indian) trade mark or a trade mark reg - istration with the TMO. The international application will be based on this national trade mark application/ registration. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation An opposition window remains open for a period of four months from the date of advertisement of a trade mark application in the Trade Marks Journal . This time period cannot be extended under any circumstance. If an opponent cannot file its opposition within this period, an extension of time is not allowed under the current Indian trade mark law. The four-month period is strict, and failure to file an opposition within this timeframe results in the forfeiture of the right to oppose.
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