INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
person’s goods or services from those of oth - ers, and may include the shape of goods or their packaging, as well as colour combinations. This definition of trade mark is inclusive and evolving. The following are examples of trade marks that can be registered in India: • any name (including the applicant’s or pre - decessor in business’s personal name or surname, or the person’s signature), which is not unusual for trade to use as a mark; • letters or numerals, or any combination thereof; • an invented word or any arbitrary dictionary word(s), which are not directly descriptive of the character or quality of the goods or services; • devices, including fancy devices or symbols; • slogans, domain names and monograms; • combinations of colours or even a single col - our in combination with a word or device; • the shape of goods or their packaging; • marks constituting a three-dimensional sign; • sound marks when represented in conven - tional notation or described in words by being graphically represented; • certification and collective trade marks; and • service marks or trade dress. As a first-to-use country, unregistered trade marks with prior usage can be protected under common law in India. The passing off of trade marks is a tort actionable under common law and is mainly used to protect the goodwill asso - ciated with a mark. Statutory Trade Marks The Indian trade mark statute provides spe - cial protection to certain marks: for instance, the Olympic symbol, the Olympic motto and the phrases “Olympic(s)”, “Olympian(s)” and
“Olympiad(s)” are not to be registered as trade marks in India without prior permission from the Olympic Committee. On the basis of international, national and cross- border repute, the TMO also recognises well- known trade marks in India. Such trade marks that are “well known” are given greater protec - tion under the law, which protects them from infringement and passing off in all the classes. There are certain trade marks governed by char - ters such as the one developed by the Scotch Whisky Association (SWA) and its members, which protects the SWA trade mark. Similarly, a mark is prohibited for registration as a trade mark under the following conditions: • If it comprises any matter that is likely to offend the religious sensibilities of any class or segment of Indian residents. • If it “comprises or contains scandalous or obscene matter”. • If its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950. • If it is a word which is the commonly used and accepted name of any single chemical element or compound in respect of chemical substances or preparation. Also, the law pro - hibits registration of a word which is declared by the World Health Organization and notified by the Registrar of Trade Marks as an inter - national non-proprietary name, or which is deceptively similar to such name. If an international non-proprietary name is erro - neously accepted for registration in respect of pharmaceutical preparations, or if a prohib - ited or non-registrable trade mark is errone - ously accepted for registration, the necessity to
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