INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
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 confu - sion; • use of the mark can offend the religious views of persons in India; • the mark contains obscene or scandalous elements; 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 over - come 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 register excluding such goods or services of the same descrip - tion from the specification of the cited mark under Section 57; or • dividing the application and allowing the objections-free part of the application to pro - ceed further. 4.11 The Madrid System India is a signatory to the WIPO Protocol Relat - ing to the Madrid Agreement Concerning the International Registration of Marks 1989 (the “Madrid Protocol”). The applicant must be an Indian national, be domiciled in India, or have a real and effective business or commercial establishment in India in order to obtain an international trade mark reg - istration in India. Furthermore, the applicant must have an appli - cation for a national (Indian) trade mark or a trade mark registration with the Indian 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
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