INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
• the date of first use – if use is claimed, an affi - davit of use and documentary evidence must be filed electronically; • a statement of intention to use; • the official filing fee; • a priority claim and documents, where priority of an earlier application is claimed; and • if the applicant is not domiciled in this juris - diction, a local service address. An agent filing to register a mark on behalf of the owner requires a simple executed power of attorney. Multi-class trade mark applications are allowed in India. 4.5 Use in Commerce Prior to Registration A trade mark can be registered on a “proposed to be used” basis. There is no requirement for the mark to have been used in India to make it eligible for registration in India. If, however, use of the trade mark is not commenced for a period of five years, this can be a ground for removal of the trade mark from the Register of Trade Marks. 4.6 Consideration of Prior Rights in Registration A trade mark can be denied registration under Section 11(1) of the Trade Marks Act 1999 if there is a likelihood of public confusion with an earlier trade mark, including the likelihood of association with the earlier trade mark, and if either of the following relative grounds (based on prior rights) applies: • the mark is identical to or comparable to an earlier trade mark in the same or a similar goods or services sector; or • the mark is similar to an earlier trade mark in the same or a similar goods or services sec - tor.
However, one way to overcome such objec - tions on prior similar mark(s) in the register is by obtaining consent from the proprietor(s) of the cited mark(s). 4.7 Revocation, Change, Amendment or Correction of an Application A correction of any errors in the application or any amendment to the application is permit - ted by the Trade Marks Act 1999. However, no request for correction/amendment shall be allowed which seeks substantial alteration in the application for registration of a trade mark. 4.8 Dividing a Trade Mark Application The Trade Marks Act 1999 provides for the filing of a division application by the applicant. Follow - ing the division, each divided application is treat - ed as a separate application, with the same filing date. A separate new serial number is allotted to each divided application and they are linked by cross-reference with the initial application. 4.9 Incorrect Information in an Application The Trade Marks Act 1999 enumerates numer - ous offences in relation to falsifying or falsely applying a trade mark, making or possessing instruments for falsifying trade marks, applying false trade descriptions and so on. The punish - ments for these offences vary, but the punish - ment 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 application, except if it is considered a substan - tial alteration. 4.10 Refusal of Registration The TMO can object to or refuse an application on either absolute or relative grounds.
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