First-to-File and First-to-Use elements in India

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1 SPECIAL TOPIC REPORT First-to-File and First-to-Use elements in India 1. Trademark Act, Basic Principle (1) The-first-to-file and the first-to-use Which of the first-to-file and the first-to-use is adopted by your Trademark Act, in relation to the occurrence of a trademark right? (This is Chart Question No. 1(1). Please mark F if you are a first-to-file jurisdiction and U if you are a first-to-use jurisdiction in the appropriate section of the Special Topics Chart.) M When applications for the registration of trademarks similar or identical to each other compete, which of the first-to-file and the first-to-use is adopted by your Trademark Act? The answer to the question depends upon who is first either to apply or to use the mark. If an applicant adopts the trade mark and applies for registration before anyone else commence use thereof, it is the applicant who is first to file would be the proprietor. However, if the applicant is first to apply but there is already a user of that trade mark who was first to use but has not applied registration, it is first to use which will be the proprietor. (2) Actual evaluation on the first-to-register and the first-to-use How does your trademark industry generally evaluate your country s system of the Trademark Act? Is it positive or negative? What is the ground or reason for such evaluation? (This is Chart Question No. 1(2). Please mark Y if positive, and N if negative in the appropriate section of the Special Topics Chart.) Y The overall response from the trademark industry stakeholders has been largely positive. India s accession to the Madrid protocol has seen host of changes to the Indian trademark regime. The trademark industry stakeholders are optimistic about the changes introduced vide the Trade Marks (Amendment) Act, 2010 and Trade Marks (Amendment) Rules, Mechanisms for free online trade mark search were already in place. However, introduction of online application facilities and strict timelines for 1

2 examining applications have been regarded as a big step forward towards reducing delays in the registration process. If the evaluation on the system of your Trademark Act is negative, what efforts have your country made to remedy such a negative assessment? 2. Confirm on the Use of a Trademark (1) Principle used in confirming the use of a trademark Does your jurisdiction adopt any system of checking the use states of a trademark? If so, what is your checking system from the following examples. (a) Submission of use evidence (b) Checking the intent to use (c) Both (This is Chart Question 2(1). Please mark Y if you have any checking system and N if you do not. For Y jurisdictions, please additionally mark how the checking system operates by additionally indicating (a), (b) or (c) from the above examples. Therefore, the marking for Y jurisdictions should look like Y(a) or Y(c) in the appropriate section of the Special Topics Chart.) Answer : Y(a) Based on what provision, and how, is such principle provided for in the Trademark Act or the Trademark Examination Guideline? The trademark application form (Form- TM 1) requires the applicant to state the use of the trademark. However an application can also be filed designating the trademark as proposed to be used. Rule 27 of the Trademarks Rules, 2002, provides that the Registrar of trademarks, may require the applicant to file an affidavit testifying the use and file such evidence proving use of the trademark. The evidence of use is normally asked for where a trade mark lacking distinctiveness and therefore not registerable. In such case, the Registrar requires an applicant to produce evidence for evaluation whether it is sufficient to render the mark distinctive. (2) Submission of use evidence (for Y(a) country which selected submission of use evidence in Section (1)) In which stage of the following is use evidence requested to be submitted? (i) Filing, (ii) examination, (iii) registration, (iv) upon the lapse of certain period after registration, (v) renewal (This is Chart Question 2(2). Please mark F if use evidence is requested upon filing, E if requested during examination, R if requested upon registration, 2

3 R+ if requested after lapse of certain period after registration and RR if requested upon renewal.) E If use evidences are requested to be submitted in a specific stage, which evidences are submitted in general? How strictly are the evidences examined? Documents/information which are generally submitted evidencing use of the mark include: earliest sales invoices, advertisement invoices, promotional materials, product literature, sales figures, promotional expenses figures, certificate of incorporation of the applicant company ( if the mark is also the trade name of the applicant). Such documents submitted as use evidence are fairly examined by the Registrar. The documents pertaining to sale invoices are critical to the use evidence. All such evidence is to be submitted in the form of a sworn affidavit by the applicant testifying that veracity of the documents and information adduced. Is use evidence required for all of the designated goods? If not, is it sufficient to submit use evidence for one product per class or code of similar goods? Although preferable, it is not necessary to provide evidence for all the designated goods. It is sufficient to submit evidence for some of similar goods in the designated class. What sanctions are imposed on a failure to satisfy a request to submit use evidence? Upon failure to satisfy the request to submit the use evidence, the Registrar may reject the application. What sanctions are imposed on the submission of false use evidences? If the falsity is apparent on the face of evidence submitted, the Registrar will reject the application and if it is at the stage of opposition proceedings, the Registrar may also impose with cost. The false use evidence if submitted before Registrar may lead to grant of registration as the Registrar may not be in a position to verify its authenticity. However, as and when challenged by an adverse party in cancellation proceeding, it is 3

4 sufficient ground for removal of the registration. On submission of false evidence the Registrar may while rejecting the application, impose costs on the applicant. (3) Confirmation on intent to use (for Y(b) country which selected confirmation on intent to use in Section (1)) In which stage from application to registration is confirmation on intent to use requested? Is confirmation on intent to use requested in every case or in certain cases? Is use evidence requested to be submitted upon the lapse of certain period after the confirmation on intent to use is made? Or, is it sufficient to submit a declaration of use only? In addition, in case a declaration of use is submitted, is it required to submit supporting documents? Is the declaration of use required for all of the designated goods or is it sufficient to submit the declaration of use for one product per class or group/code of similar goods? (This is Chart Question 2(3). If the declaration is required for all designated goods, please mark Y, if not, please mark N in the appropriate section of the Special Topics Chart.) What sanctions are imposed on a failure to satisfy a request to make confirmation on intent to use? Does it serve as a ground for refusal or invalidation of the trademark? When requested to make confirmation on intent to use, is there any alternative method other than the submission of declaration of use, such as divisional application? What sanctions are imposed on the submission of false declaration of use? Not Applicable 3. Protection of Non-Registered Trademarks in use (1) Protection of well-known trademarks If a non-registered trademark is widely used and goodwill is formed thereon, thereby becoming a well-known mark, does your trademark law allow enforcement of the nonregistered well-known mark, beyond merely preventing others from registering the same or similar mark? (This is Chart Question 3(1). Please mark Y for yes or N for no.) Y Are remedies available under the unfair competition laws or other laws, other than 4

5 the Trademark Act? Unregistered trade mark is well protected under the common law of passing off, if it can establish that it is distinctive, or has acquired distinctiveness enjoys goodwill and reputation and the use of offending trade mark is likely to cause confusion or deception. In case the manner of representation of an unregistered trade mark could give rise to its protection as an artistic work, its right will also be protectable under the copyright laws. (2) Protection of unregistered trademark that is known only in foreign countries Under your trademark law, is there any mechanism to protect a trademark that is not registered in your country and known only in foreign countries? (This is Chart Question 3(2). Please mark either Y for yes and N for no.) M Normally, such trade mark will not be protectable in India. However, in a specific case where an overseas proprietor of an unregistered trade mark can establish that its intended use in India has been preempted by prior use or filing for registration in India, the court may be inclined to protect the overseas proprietor. Besides the transborder reputation is also recognized in India. Thus an overseas proprietor of a mark can protect by showing/proving transborder reputation spilling over in India. (3) Acquisition and loss of distinctiveness acquired through use Does your country have a system under which a trademark having no distinctiveness is granted registration, if it acquires distinctiveness (secondary meaning) as a result of being used extensively for a long time? (This is Chart Question 3(3). Please mark either Y for yes or N for no.) Y On the contrary, if a trademark loses distinctiveness due to extensive use after being registered, how is it handled? Although the Registrar has power to remove a registered trade mark on the ground of any contravention or failure to observe a condition of the Register, such a mark usually continues to remain on the register until challenged (cancellation petition). On establishing that mark has become publici juris, the registration will be cancelled. (4) Prior Use 5

6 If your unregistered but prior-used trademark conflicts with another s registered trademark, will your country grant you a legal right to the continued use of your trademark? (This is Chart Question 3(4). Please mark either Y for yes or N for no.) Y What are the requirements for the acknowledgement of such a prior-use? Acknowledgement of prior use requires the use of a mark to be continuous and not intermittent and sporadic in nature. 4. How Non-Used or Improperly-Used Trademarks are treated If the submission of use evidence is not requested even after a trademark is registered, there is a concern that the management of the trademark may be inadequate due to non-use or improper use. Thus, we would like to review what sanctions are imposed on a trademark not used or improperly used, despite registration, in each country. (1) Non-use cancellation action Does your country have provisions against a registered mark not used for a certain period? Yes, Section 47 of the Trademarks Act deals with removal of a mark from the register on grounds of non use. What is the minimum years of non-use in order to successfully cancel a registered trademark? (This is Chart Question 4(1). Please mark the minimum years in number (e.g., 3 if you require 3 years of non-use and 5 if you require five years of nonuse in the appropriate section of the Special Topics Chart.) 5 In a non-use cancellation action, does the trademark owner bear the burden of proving use of the registered mark? (This is Chart Question 4(2). Please mark Y for yes and N for no in the appropriate section of the Special Topics Chart.) For N countries where the petitioner, rather than the trademark owner, bears the burden of proving non-use of the mark, please briefly comment on how such non-use can be effectively proven in your jurisdiction. 6

7 Y Is the validity of the use evidence of a registered trademark limited to the exact identical form of the registered trademark that was used? (e.g., in case of a trademark consisting of a device and word, or a combination of local and foreign letters, only a part of the trademark is used) The use evidence should pertain to the mark as applied for registration. In an instance where the use evidence pertains to only a part of the mark and not the mark as applied, the Registrar may be inclined to reject the evidence. (3) Improper-use cancellation action Does your country have provisions that prevent the improper use of a trademark, such as using a changed/modified version of a registered trademark after its registration? (This is Chart Question 4(3). Please mark Y for yes and N for no in the appropriate section of the Special Topics Chart.) N If so, what are the requirements for and effects of such request for cancellation? (4) Exercise of a trademark right of non-use trademark Please indicate if your trademark law provides remedy for injunction ( I ), compensation of damages ( D ) or criminal action ( C ), based on a registered trademark that was actually not used. (This is a question under Chart Question 4(4). Please list the abbreviation of all available remedies. For example, if your jurisdiction provides all three remedies for injunction, damages and criminal action, indicate I,D,C. If only damages claim is allowed, indicate D in the appropriate section of the Special Topics Chart.) I D C Is it legal in your jurisdiction for a person to exercise a trademark right that was acquired based on bad faith and, without a genuine intent to use? If not, is it restricted, on the ground that there is a ground for invalidation? A trademark right which was acquired in bad faith and without a genuine intent to use is liable for refusal to registration and cancellation if already registered. According to 7

8 Section 47 and 57 of the Trademarks Act 1999, such a mark may be taken off the Register. What are other disadvantages in exercising a trademark right, based upon a trademark that has not been used? The disadvantage is that the proprietor may not be able to secure an injunction if the validity of the registration is challenged on ground of non-use unless the proprietor can establish that there are sufficient special circumstances justifying such non-use. The proprietor may also not be able to secure any claim for damages even if it establishes special circumstance. 5. Others What elements of the first-to-use practice are adopted by your Trademark Act to supplement the first-to-file system? Under the provisions of the Trade Marks Act, the trademarks law in India supports the concept of honest and concurrent uses of two registered trademarks vide Section 12 of the Act. This enables a registered proprietor with a prior use to co-exist with a registered proprietor of a trademark bearing a later date of usage. Also, a registered proprietor is not entitled to restrain the use of a trademark by any person if the said person has continuously used the trademark from a date prior to the date of usage or the date of registration of the registered proprietor under Section 34 of Trademarks Act, This provision supplements the first-to-file doctrine in effect that under this provision in case where two applicants file a similar or identical trademark on a proposed-to-be-used basis, the person with a prior date of application is preferred. What elements of the first-to-use practice are being discussed to be introduced to your Trademark Act? The elements of first-to-use practice are well established under the Trade Marks Act,