Trade Marks

A ‘Trademark’ means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. It also denotes the origin of goods and carries goodwill of the business in respect of which it is used.

What marks can be registered in India

Beside goods India now allows registration in respect of service marks, shape of goods, packaging or combination of colors. A ‘Mark’ includes a device, brand, heading, label, ticket, name (including abbreviations), signature, word, letter, numerals, shape of goods, packaging or combination of colors and any combination thereof.

Further a single multiclass application can be filed in India in respect of all the international classes.

Main requirements of Trade marks

The two main requirements of a trademark are that it must be distinctive (adapted to distinguish the goods/services of the applicant from that of others) and not deceptive. Therefore, while selecting a trademark, words that are directly descriptive of the goods, common surnames or geographical names should be avoided as these confer weaker protection to the proprietor even if registered.

Prima facie, a word having a direct reference to the character or quality of goods is not registrable. However, it is registrable if it has acquired distinctiveness through long and continuous use. Under Indian Trademarks law more significance has been given to “use” of the mark than “registration”.

Trademark law in India

Indian Trademark Law has been codified in conformity with the International Trademark Law and is about to undergo an amendment to be at par International Trademark Law. Recently India has signed Madrid Protocol that will allow Foreign Applicants to file an International Application designating India (once notification is issued in this regard).

Well Known Mark

The concept of “well known mark” has been introduced in India and amended Section 2 (zg) defines a well-known mark as:

“Well-known trademark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.”

Consideration for determining a “well known mark”

While determining whether the mark is well-known mark, the registrar will take in to consideration while determining that the mark is a well-known mark.

(a) the knowledge or recognition of the alleged well-known mark in the relevant section of the public including knowledge obtained as a result of promotion of the trademark.

(b) the duration, extent and geographical area of any use for that trademark.

(c) The duration, extent and geographical area for any promotion of the trademark including advertising or publicity and presentation at fairs or exhibition of the goods or services in which the trademark appears.

(d) The duration and geographical area of any registration of any publication for registration of that trademark under this Act to the extent that they reflect the use or recognition of that trademark.

(e) The record of successful enforcements of the rights in that trademark, in particular the extent to which the trademark has been recognized as a well-known trademark by any Court or Registrar under that record.

Whereas a trademark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well-known trademark for registration under this Act.

“Relevant section of Public” may be actual or potential consumers of, persons involved in channels of distribution of or business circles dealing with the type of goods or services to which the mark is applied.

The Registrar is not required to consider the following facts while determining a well-known trademark.

a) The Trademark has been used in India

b) The Trademark has been registered

c) The application for registration of the Trademark has been filed in India.

d) The trademark is well known in or has been registered in, or in respect of which an application for registration has been filed in any jurisdiction other than India or

e) The trademark is well known to the public at large in India.

Trade Mark Search

To avoid objections and/or oppositions, it is desirable to conduct a Trade Mark search to ascertain existence of any prior registrations of identical or similar marks. An ordinary trade mark search result with brief opinion can be provided within 1-2 working days in case of word mark and within 1-3 working days in case of device/logo mark.

Defences against previous Registration

The following defences are available against any previous registration of any identical or similar trademark already existing in Register of Trademarks

a) Honest concurrent use;
b) Acquiescence; or
c) Prior user

Trademark Applications in India

Trademark Applications in India can be classified under two categories depending upon their priority claim.

1. Ordinary trade mark application without any priority
2. Conventional trade mark application- has to be filed within 6 months from date of filing of conventional application

In case of conventional trademark application, certified copy of the priority document has to be filed within 2 months from the date of filing of application in India.

Besides above trademark applications, there are also certification trademarks and collective trademarks that are registrable in India.

Trademark offices in India

There are five trademark registries in India located at New Delhi, Ahmedabad, Mumbai, Chennai and Kolkata and depending upon territorial jurisdiction where the Applicant is located, the application has to be filed. For foreign applicant the application has to be filed before trademark registry within whose territorial jurisdiction the agent/ attorney for applicant is located.

Trademark filing requirements in India

Specimen of the trademark for Agent:

Following are the basic requirements for filing of a trademark application in India:

1. Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
2. Specimen of the trademark and for shape of goods different views such as front, rear, top, bottom, left side, right side views)
3. International Class
4. Description of goods or services
5. User date in India (evidence needs to be provided on notarised affidavit) or proposed to be used
6. Details of priority, if any, including application number, date of filing and country of filing
7. Translation and transliteration in English, if mark is not in Indian language

Power of authority has to be stamped as per Indian Stamps Act and can be filed later (before or along responding to official letter). Notarisation is not mandatory.

Trademark Registration in India

Following stages are ordinarily encountered while registering a trademark in India:

1. Filing of trademark application in India and issuance of fee receipt with application number
2. Issuance of Official letter with objections, if any
3. Replying to official letter within 1 month
4. Hearing, if required
5. Provisional acceptance of trademark application
6. Publication in the Indian trademark Journal
7. Opposition, if any, within 4 months from date of publication of the application
8. Registration of Trademark, if no opposition if filed or is set aside
9. Issuance of Registration Certificate

Express Examination of Application

Indian Trademarks law allows express examination of the trademark application on filing of additional official fee along with a declaration stating the reason for such request.

Publication of Trademark Application

After the trademark application has been provisionally accepted by the Registrar of the Trademarks, the application shall be published in the Indian Trademarks Journal inviting opposition from public to the trademark.

Opposition

After publication of the trademark in the Indian Trademarks Journal, the trade mark remains open to opposition by public for a period of 4 months. On filing of notice of opposition the application shall not proceed towards registration until the opposition is set aside.

Registration of Trademark

If there is no opposition against the registration of the trademark application or the opposition proceedings have been decided in favour of the Applicant, the Trade Marks Registry shall accept the trademark and issue a registration certificate to that effect.

Term of Registration & Renewal

The duration of registration of a trademark is 10 years from the date of filing of application in India and is further renewable for every 10 years thereafter.

Licensing and Assignment

Trademark can be licensed as well as assigned like moveable property for a consideration. Trademarks carry goodwill and can be assigned with or without goodwill.

Copyright

Copyright is a combination of various rights that allows owner of copyright the exclusive right to print, distribute, and copy the work and to prohibit others from doing the same without his consent. It is an original expression of an idea that is subject matter of copyright. Copyright is provided automatically to the author of any original work covered by the law as soon as the work is created. The author does not have to formally register the work and extends to unpublished as well as published works.

Copyright extends to original literary (including computer programmes), dramatic, musical, artistic, cinematographic films and sound recording.

Copyright office in India

The only Copyright office in India is located at New Delhi. All Indian and foreign applications have to be filed in New Delhi office for copyright Registration.

Copyright filing requirements in India

Following are the basic requirements for filing of a Copyright application in India:

1. Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
2. Class and description of work
3. Title of work
4. 2 specimen copies of the work
5. Language of the work
6. Nature of applicant’s interest in copyrighting the work
7. Details of publication of work, if published, including name, address, nationality of publishers
8. Details as to owners of various rights in the work comprising the copyright, including extent of their right and particulars of assignment and license, if any
9. Name, address, nationality of other persons, if any authorised to assign or license the work comprising the copyright.
10. Location of work including name, address, nationality of person in possession of work, in case of an artistic work and completion of year in case of architectural work
11. Information as to whether work (artistic work) is registered under design Act or capable of being registered under the designs act (including no. of times it has been reproduced by industrial process)
12. Certificate (NOC) from Registrar of trademarks if the artistic work is used or capable of being used in relation to any business
13. Power of Authority from Applicant (separate for each work)
14. NOC from the Authors/ Publisher

Copyright Registration in India

Following stages are ordinarily encountered while registering a trademark in India:

1. Electronic-online filing of copyright application and issuance of acknowledgement slips with diary number
2. Physical filing of the official copy of the acknowledgement slip with 2 copies of the work, NOC from Author/Publisher, NOC from Trademark Registry in case of artistic work capable of being used on goods, Power of Attorney, Signed Form XIV as generated online.
3. Issuance of Official letter with objections, if any
4. Replying to official letter within 1 month
5. Hearing, if required
6. Acceptance of the Copyright
7. Issuance of Registration Certificate

Term of Copyright

1. In published literary, dramatic, musical and artistic works (other than a photograph) published during lifetime of author- 60 years from first day of following year in which the author dies.

2. In literary, dramatic, musical and artistic works (other than a photograph) published anonymously or pseudonymously- 60 years from first day of following year in which the work is first published. Duration as explained in serial number 1 above, if identity of author disclosed before expiry of term of copyright.

3. In literary, dramatic, musical and artistic works (other than a photograph) published posthumous- 60 years from first day of following year in which the work is first published.

4. In photograph - 60 years from first day of following year in which photograph is first published.

5. In Cinematographic films- 60 years from first day of following year in which film is first published.

6. In Sound recording - 60 years from first day of following year in which sound recording is first published.

7. In works where Government, public undertaking or international organisation is first application - 60 years from first day of following year in which work is first published.

8. In Broadcasting - 25 years from first day of following year in which broadcast is first made.

9. In Performance - 50 years from first day of following year in which performance is first made.

In case of foreign works, the term shall not exceed the term for which the work is originally protected in the country of first publication.

Exception to infringement of copyright

A fair dealing with literary, dramatic, musical and artistic works (not being a computer programme) for private use including research including criticism or review of the work, for purpose of reporting in a newspaper, magazine or similar periodical or by broadcast, sound recording or by photographs or for purpose of a judicial proceeding or for purpose of reporting for judicial proceedings or for instruction for purpose of education or examination.

Licensing and Assignment

Owner of the Copyright can license as well as assign his work. The assignment has to be in writing and must clearly identify the work, duration and territorial extent of such assignment. In case of work under employment, the employer shall be the owner of the work in absence of any agreement to contrary.

Compulsory Licensing

Compulsory Licensing can be invoked under certain circumstances for both published as well as unpublished works. Compulsory licenses can also be sought for the purposes of production and publication of the translation of works.

DESIGNS

Meaning under the Designs Act, 2000

As per Indian Designs Act, 2000, “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principal of construction or anything which is in substance a mere mechanical device and does not include any trademark, property mark and copyright as defined under the Indian laws.

What Designs are Registrable

Only those designs that are new or original are subject matter of registration in India. Designs which have been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration. Further no copyright in the design shall vest in Applicant if more than 50 copies of the design has been manufactured commercially. A design is not registrable if it is not significantly distinguishable from known designs or combination of designs or if it comprises scandalous or obscene matter.

Design offices in India

There are four design office in India located at New Delhi, Mumbai, Chennai and Kolkata and depending upon territorial jurisdiction where the Applicant is located, the application has to be filed. For foreign applicant the application has to be filed before the design office within whose territorial jurisdiction the agent/ attorney for applicant is located.

E-filing of most of the design forms is now possible. In case of physical filing, only the following services are available with branch offices

1. Filing of new application
2. Application for extension of copyright (one time renewal)
3. Petition for cancellation of registration of design
4. Application for rectification of register of design

Post filing, these applications/petitions are to be forwarded to Kolkata Head office. Rest of the forms/documents are to be filed with Kolkata head office directly or through e-filing mode.

Design Applications in India

Design application in India can be classified under two categories depending upon their priority claim.

1. Ordinary design application without any priority
2. Conventional design application- has to be filed within 6 months from date of filing of conventional application

Design filing requirements in India

Following are the basic requirements for filing an ordinary design application in India:

1. Name, address, nationality and particulars of the applicant (whether natural person, small entity, start up or others)
2. Class & Subclass according to Locarno classification
3. Title of the design
4. 3 sets of Photographs/ drawings/ tracing with various views (front, rear, top, bottom, left side, right side and/or their perspective views) of size preferably 13x10 cms
5. Statement as to novelty
6. Representations illustrating the views of the article wherein the originality resides
7. Power of Authority
8. Whether start up or small entity status is claimed, duly executed Form 24 along with such evidence needs to be filed

Power of authority has to be stamped as per Indian Stamps Act and can be filed later (before or along responding to official letter). Notarisation is not mandatory.

Conventional Design filing in India (Additional requirements in addition to what are applicable for ordinary design filings)

1. DAS code or certified copy of priority document
2. English translation of priority document along with certificate of translation in support, if priority document in language other than English

In case of conventional design application, DAS code or the certified copy of the priority document along with English translation (wherever applicable) should be provided with the Application. An extension for up to 3 months is available on payment of monthly extension fee.

Design prosecution in India

Design prosecution in India involves following stages:

1. Filing of application & issuance of receipt of fee along with application number
2. Issuance of Examination report with objections, if any ordinarily within 1-4 months of filing of application
3. Responding to Examination report within 6 months from date of filing of application in India which can be extended further by 3 months on payment of additional fees and request before expiry of 6 months from date of filing
4. Hearing, if any
5. Acceptance of application
6. Issuance of Registration certificate

Term of Design Registration

The term of registration of copyright in Design is for 15 years in total. The registration is valid initially for a term of 10 years and can be renewed for a further period of another 5 years.

Renewal of designs

A registration of design can be renewed for a further period of 5 years after expiry of initial registration of 10 years

Intellectual Property Enforcement in India

In India there are multiple statues dealing with Intellectual property enforcement and issues. India also follows common law principals in dealing with IP issues. The statutes dealing with Intellectual Property matters in India are:

1. Trademarks Act, 1999 and Rules there under

2. Copyright Act, 1957 and Rules there under

3. Patents Act, 1970 and Rules there under

4. Designs Act, 2000 and Rules there under

8. Geographical Indication of Goods (Registration & Protection) Act, 1999 and Rules there under

9. Semiconductor, Integrated Circuit Layout Design Act, 2000 and Rules there under

10. Plants Varieties Protection and Farmers’ Rights Act, 2000 and Rules there under

11. Information Technology Act, 2000 and Rules there under

12. Customs Act, 1962 and Rules there under

Besides the above, India also follows common law for protection of Intellectual property rights.

Patent Infringement:

Patent infringement proceedings can only be initiated after Grant of patent in India but it may include claim retrospectively from the date of publication of Patent in Indian Patent Journal subject to law of limitation. Under the Limitation law does not allow action/suits in respect of matter where cause of action had arisen more than three years from the date of suit.

Acts constituting infringement of Patent Rights: -

All persons or incorporations directly or indirectly involved in any of the above stages may be held liable for infringement.

Appropriate forum:

A suit for infringement has to be filed in a District court or High court (depending upon pecuniary jurisdiction) within whose territorial jurisdiction the cause of action has arisen. However, as soon as a counter claim for revocation of patent is filed against the suit for infringement of patent, only high court has the jurisdiction of entertain the matter and the matter has to be transferred to High Court for decision.

Burden of proof

The onus of establishing the infringement is on the plaintiff. However, in case of patent involving a process for obtaining a product where the plaintiff first establishes that the products obtained are identical, the court may shift onus on the defendant.

Interim Injunction:

The Court may also allow interim injunction against the infringer.

Defences to Infringement of Patent in India

The following defences are available in India as a defence in Patent Infringement:

1. Any of the grounds under which Patent can be revoked
2. By govt of India or for Govt. of India for its own use
3. Experiment or research
4. Imparting instructions to pupils
5. For Patent in respect of Medicine or drug, for its own use of Govt. of India, for distribution in Govt. Dispensary and hospitals or by gazette notifications to other dispensaries, hospitals and medical institutions.

Enforcement of Trademark Rights

Under Indian Laws statutory protections is available to both registered marks as well as unregistered marks. In respect of trademarks Indian law provides both civil as well as criminal remedies for taking action against any infringement of a trademark.

Appropriate forum:

A suit for infringement of trademark has to be filed in a District court or High court (depending upon pecuniary jurisdiction) within whose territorial jurisdiction the cause of action has arisen.

Before Trademark Registry- Administrative Remedy

1. Opposition (before the Registrar)- Opposition can only be done after publication of the trademark and within 3 months of date of availability of Journal. One month extension is available if sought before the expiry of 3 months time.

2. Cancellation (before the Registrar as well as High Court)- Cancellation on the ground of non-use for a period of 5 years and 3 months and proof of intention on part of the registered proprietor not to use the trademark at the filing date and non-use till the cancellation petition.

Before Courts — Civil Remedy

Under common laws, the proprietor of a trade mark, whether registered or unregistered, may sue for passing off in respect of any trade mark used by defendant that is identical with or deceptively similar to his trade mark. The registered proprietor also has the remedy to take infringement action.

1. Injunction- Ex parte/ permanent
2. Damages
3. Anton Pillar Order,
4. Seizure of goods
5. Rendition of accounts

Before Courts- Criminal Remedy

Besides Civil remedies, the proprietor of the trademark as well as licensed users also have the option to initiate criminal prosecution against the infringers etc. Following acts have been recognised as offences, against which a criminal complaint can be registered:-

Procedure and punishment

The complaint for any of the above offences can be made/filed before the Magistrate within whose territorial jurisdiction the offence is committed.

Besides confiscation of goods and machinery, the Code of Criminal Procedure, 1973 also provides for imprisonment starting from 6 months to 3 years for the offences or fine or both.

Confiscation of imported goods bearing counterfeit marks

Indian Customs Act, 1962 provides for confiscation of imported goods bearing counterfeit marks if upon a representation made to Chief Customs Officer, he has reasons to believe that the alleged goods bear a false/ counterfeit Trade Mark. The Chief Customs Officer may require the importer of the goods or his agent to produce any documents in their possession relating to said goods along with informations as to the name and address of Consignor as well as importer of said goods and may initiate proper action for non compliance or offence.

Trans-border Reputation

Trans-border reputation of trademarks is well recognised and accepted in India even if said mark is not registered in India.

Enforcement of Copyright

India is a member of the Berne Convention and TRIPS, therefore owner of copyright from another member country will get same copyright protection in India. However, the duration of copyright shall not exceed the original duration in the member country.

Infringement of copyright

Copyright in a work is deemed to be infringed when any person, without a license granted by the owner of the copyright does anything, the exclusive right to do which is by the Act conferred upon the owner of the copyright.

Acts Constituting Infringement of copyright

The following acts if done or authorised to be done by someone else, without consent or permission of the copyright owner, are considered as infringement of copyright:

Before Copyright Registry- Administrative Remedy

Registrar of Copyright has the power to ban import of infringing copies into India and delivery of infringing copies of copyright work confiscated earlier from infringer to the owner of the copyright on an application made by the owner of copyright or his duly authorized agent.

Before Courts- Civil Remedy

The owner of the copyright has the following remedies against infringement:

1. Injunction- Ex parte/ permanent
2. Damages
3. Anton Pillar Order
4. Seizure of goods
5. Rendition of accounts

Before Courts- Criminal Remedy

Copyright Infringement is a cognizable offence (non-bailable offence) the offence of infringement of copyright is punishable with imprisonment, which may extend from a minimum punishment of 6 months to maximum of 3 years and with a fine not less than fifty thousand rupees and extending upto two lakh rupees. For the second and subsequent conviction the minimum term of imprisonment is increased to minimum one year and minimum fine is one lakh rupees.

Enforcement of copyright in Designs

Appropriate forum:

A suit for piracy of design has to be filed in a District court within whose territorial jurisdiction the cause of action has arisen. However, as soon as any ground as to cancellation of design is taken in said suit or any other proceedings, only high court has the jurisdiction of entertain the matter and the matter has to be transferred to High Court for decision.

Piracy of Design

Following acts without consent or license from the registered proprietor amount to piracy of registered design:

1. Apply or cause of apply to any article in any class in which design is registered, the design or fraudulent or obvious intimation thereof for sale;
2. Import any article in any class in which design is registered, the design or fraudulent or obvious intimation thereof;
3. Knowingly publish or expose or cause of publish or expose for sale an article in any class in which design is registered where design or fraudulent or obvious intimation thereof has been applied.

Damages towards piracy of design

For any piracy of registered design the defendant has to pay sum up to Rs. 25,000 towards the contravention. However maximum damages allowed are Rs. 50,000 in respect of a single design.

Injunction for design right violation

Besides awarding the damages the proprietor may also seek injunction against repetition of contravention.

Defences to piracy of design in India

The defences available for defence in piracy of design is are any of the grounds under which design can be cancelled under Section 19 (1) of the Designs Act. The following grounds are available for cancellation of design:

(a) that the design has been previously registered in India; or

(b) that it has been published in India or in any other country prior to the date of registration; or

(c) that the design is not a new or original design; or

(d) that the design is not registerable under this Act; or

(e) that it is not a design as defined under clause (d) of section 2.

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The viewer acknowledges that there is no solicitation from the firm in any manner.

If you would like to get in touch with ASWAL ASSOCIATES, you could do so by emailing us at mail@ipfirmindia.com or contact us at.

ASWAL ASSOCIATES

Attorneys At Law & Intellectual Property

59, Harmony Apartments,

Pocket-1, Sector-4, Dwarka
New Delhi - 110 078
India

mail@ipfirmindia.com
Tel: +91 11 43046500
Tel: +91 11 45041400

FIRM PROFILE

ASWAL ASSOCIATES is a full service Intellectual Property based law firm. The firm specializes in Patents, Trademarks, Industrial Design & Copyrights and commercial & corporate law and litigation

Aswal Associates was founded in the year 2004 as an Intellectual Property specialised Law firm. Since its inception the firm has developed a proven expertise in Patents, Trademarks, Industrial Design and Higher Education in India. The members of the firm have an average experience of over 10 years in the various branches of Law, IPR & Consultancy.

The firm has its main office at New Delhi and is having associate/branch offices, representatives and affiliates in major cities of India as well as outside India.

The firm provides its services in relation to the following matters:

PATENTS:

• Drafting & vetting Patent Specifications (provisional as well as Complete)
• Making keyword search in Indian Patent Journals, WIPO, USPTO, European Patent Offices
• Handling queries pertaining to Patent Laws and practice as well as patentability of the inventions
• Handling prosecution of the application till Grant of LPD in India and all major countries of the world, services includes preparing and filing patent application with misc documents and coordinating their status and further requirements with the Patent offices as well as foreign associates, receiving the examination reports with objections, replying/ vetting responses to first examination report, attending discussions with Examiners and Controllers of Patents, drafting submissions and attending hearings and making necessary amendments to keep the invention alive
• Drafting Opposition, rectification proceedings and attending hearing before the Controller of Patents, Opposition Board and Intellectual Property Appellate Board.
• Drafting Infringement action, counter claims and attending Courts
• Drafting assignment, license agreements
• Renewal of Patents

TRADEMARKS:

• Making search in the Registry in respect of a particular mark in a particular class and opining as to its registribility
• Handling queries pertaining to the Trademarks Laws and practice
• Trademark prosecution i.e. drafting and filing applications, Drafting User Affidavits, and coordinating their status and further requirements with the Trademarks registry as well as foreign associates, receiving examination reports with objections, replying/ vetting the response to the Examination reports, attending hearings and renewals
• Drafting Opposition, Counter Affidavits, User Affidavits
• Assignments of trademarks with or without goodwill, License agreements
• Drafting Infringements and/or passing off suits and their counters and attending hearings
• Watch, Investigation, Criminal prosecution for illegal and unauthorized use of registered as well as unregistered marks

INDUSTRIAL DESIGN

• Design prosecution i.e. Drafting & Filing application along with or without priority
• Coordinating their status and further requirements with the Patents & Design office as well as foreign associates, receiving examination reports with objections, replying/ vetting the response to the Examination reports, attending hearings and renewals
• Assignments/ License agreements
• Drafting piracy and/or passing off suits and their counters and attending hearings
• Watch, Investigation, Criminal prosecution for illegal and unauthorized use of registered as well as unregistered copyrighted work in Industrial Design
• Drafting and handling design cancellation proceedings

COPYRIGHT

• Copyright prosecution i.e. Drafting & Filing application
• Coordinating their status and further requirements with the Copyright offices as well as foreign associates, receiving examination reports with objections, replying/ vetting the response to the Examination reports, attending hearings and renewals
• Assignments/ License agreements
• Drafting piracy and/or passing off suits and their counters and attending hearings
• Watch, Investigation, Criminal prosecution for illegal and unauthorized use of registered as well as unregistered copyrighted work

ADVERTISING & PROMOTION LAWS

The firm advices its clients on Advertising as well as promotional laws in respect of all kinds of media print, electronic etc. The firm handles queries in relation to labelling as well as packing laws. The firm advices on the online promotion and prepares as well as vets official rules for promotional events.

ARBITRATION

The firm advices clients on the laws of domestic and international arbitration in India. We assist clients in enforcement of arbitral awards, challenging an arbitral award (domestic). We also appear before the arbitrators and arbitral tribunals on behalf of our clients.

BANKING LAWS & TAXATION

The firm expertises in handling matters relating to secured as well as unsecured loan, mortgage, Negotiable Instruments and regularly appears before the Courts, Debt Recovery Tribunal, Debt Recovery Appellate Tribunal, BIFR, AAIFR as well as Banking Ombudsman.

The firm also assists its clients in filing direct and indirect tax returns as well as assists in matter before the Tax tribunals and Courts.

BUSINESS & COMMERCIAL LAWS

The firm also advices its clients on a wide range of issues relating to law of Contract, Company law etc.

The firm undertakes drafting as well as vetting to contracts, agreements, Memorandum of Understanding.

The firm also advises on transactions including acquisitions or disposals, corporate restructures, takeovers, mergers and joint ventures, Foreign Direct Investment etc.

CONSUMER LAWS

The members of the firm are adept in handling all kinds of consumer matters before the consumer foras and commissions.

CYBER AND INFORMATION TECHNOLOGY LAWS

The firm also advices its clients on various issues relating to Cyber laws, data protections and data theft etc.

DOMAIN DISPUTES

The firm also handles issues pertaining to domain disputes.

EDUCATION

The firm specialises in advising its clients as to establishments of colleges, institutes and other bodies in the field of higher and technical education both in formal as well as informal education. The services includes advising as well as vetting MOA and agreements, course modules as per the guidelines of the statutory bodies and representing before the statutory authorities.

LITIGATION

The firm undertakes litigation on touching upon all the laws of India. We file and defend almost all kind of civil, criminal & commercial suits, petitions, revisions, appeals, writs, PIL’s and appear before all District courts, tribunals, Commissions, High Court and the Supreme Court and other quasi judicial bodies.

The Advocates Act, 1961 as well as Rules of Bar Council do not allow lawyers to advertise their profile and expertise. The detailed profile of the Senior members of the firms as well as their expertise has been withheld and only their name has been provided herewith.

Email

Mritunjay Kumar Singh mail@ipfirmindia.com

Advocate & Trademark Attorney

Mithilesh Kumar Arya mail@ipfirmindia.com

Advocate & Trademark Attorney

Deepak Kunwar mail@ipfirmindia.com

Patent Engineer & Consultant

Sunil Aswal mail@ipfirmindia.com

Patent Engineer & Consultant

Daviender Hora mail@ipfirmindia.com

Advocate & Trademark Attorney

Sudhir Kumar mail@ipfirmindia.com

Advocate, Patent & Trademark Attorney

Sachin Parashar mail@ipfirmindia.com

Advocate, Patent & Trademark Attorney

Rajeev Prasad Dubey mail@ipfirmindia.com

Advocate & Trademark Attorney

What is a company

Trademark filing requirements in Bangladesh:

(i) Trademark
(ii) Full Name, Address, Status and Nationality of the applicant(s). (name of all partners where Applicant is a partnership firm)

(iii) Trade description (whether Manufacturer, Merchant, Trader, Service Provider)

(iv) International Class
(v) Description of goods or service for which the mark is to be registered.
(vi) The date of use of the Trademark in Bangladesh (if any)

(vii) Translation/ Transliteration of mark, if in language other than English

(viii) Priority details (if any) including Application no.; country and date of filing, Certified copy to be supplied within 3 months of filing Application;

(ix) Duly executed Power of Attorney (Form TM-48) (Notarisation/ legalisation not mandatory)- scanned pdf copy sufficient

Trademark Registration in Bangladesh

Following stages are encountered while registering a Trademark in Bangladesh:

1. Filing of Application
2. Issuance of Application no. and acknowledgement receipt from the Trademark Office (within a week)
3. Examination of Application
4. Issuance of Examination report, if there are any preliminary objections in around 4-8 months
5. Reply to examination report within 2 months
6. Hearing (if Registrar is not satisfied with response)
7. Acceptance of Application (if reply is found satisfactory or if Registrar is convinced during hearing)
8. Publication of Trademark Application in the monthly Trade Marks Journal on payment of publication fee.
9. Opposition within two (2) months+ one (1) month extension from the date of publication of mark
10. Issuance of Registration Certificate on payment of registration fee, where no opposition is preferred or opposition is set aside

Term of Registration:

Term of a trademark registration in Bangladesh is seven (7) years and registration can be successively renewed for a term of ten (10) years thereafter.

Industrial Design in Bangladesh:

Bangladesh is a contracting member to Paris Convention, therefore a design Application with Conventional priority can be filed in Bangladesh (in addition to ordinary filing), the Application in that case must be made within 6 months of filing of priority date.

Industrial Design filing requirements in Bangladesh are as follows:

(a) Name, address and nationality of the Applicant (s)

(b) Title of the Article

(c) Various views of the Article (front, back top, side, bottom, including perspective views); In case of photograph 6 sets to be provided, drawing/sketch could be provided vide email)

(d) Priority details (i.e. Application no.; date of filing, Country) where priority is claimed;

(e) Power of Attorney- Should be signed (with seal of company)/ POA for patent is usable for design purpose

For conventional application, the certified copy of priority document must be supplied within 3 months of filing of Application

Term of Industrial Design in Bangladesh:

The copyright in design is valid for 5 years and can be further renewed for two terms of 5 years each

Trademark filing requirements in Nepal:

(i) Trademark
(ii) Full Name, Address, Status and Nationality of the applicant(s)

(iii) International Class

(iv) Description of goods or service for which the mark is to be registered.
(v) The date of use of the Trademark in Nepal (if any)

(vi) Translation/ Transliteration of mark, if in language other than English (duly notarised)

(vii) Priority details (if any) including Application no.; country and date of filing,

(viii) A power of attorney executed in presence of two witnesses (with seal of company if available). It is preferable to be notarised and mandatory where seal of company is not available

For conventional Priority- certified copy of priority document with duly notarised English translation to be filed within 2 months.

It is mandatory to submit notarised or certified copy of the Home country Registration certificate with duly notarised English translation required for processing the Application to registration

Trademark Registration in Nepal

Following stages are encountered while registering a Trademark in Nepal:

1. Filing of Application
2. Examination of Application
3. Issuance of Examination report, if there are any preliminary objections
4. Reply to examination report
5. Hearing (if Registrar is not satisfied with response)
6. Acceptance of Application (if reply is found satisfactory or if Registrar is convinced during hearing)
7. Publication of Trademark Application in the monthly Trade Marks Journal
8. Opposition within 90 days of publication
9. Issuance of Registration Certificate, where no opposition is preferred or after opposition is favourably decided

Term of Trademark Registration:

The term of registration is 7 (seven) years and can be successively registered for each term of 7 (seven) years thereafter.

A 35 days extension available without cost and Original certificate requirement for endorsement of renewal

Use of Trademark

As per Section 18(C) of the Patent, Design and Trademark Act, 2022 (1965 A.D.) (read with Section 11 of the Trademark Operation Manual 2072 (2015 A.D.), the trademark owners are required to use their registered trademarks within one (1) year from the date of registration, otherwise it becomes ground for cancellation.

DESIGN IN NEPAL:

It is possible to claim conventional priority in Nepal for Industrial design Applications. The Application must be made within six months of first making application in conventional country. The Design must be absolute novel and original and must not have been published anywhere in the world before its priority date/ filing date (whichever earlier)

Industrial Design filing requirements in Nepal

(a) Application form (executed in presence of two witnesses)

(b) Name, address and nationality of the Applicant (s)
(b) Title of the Article

(c) Various views of the Article (front, back top, side, bottom, including perspective views) and in case of photograph 6 sets to be provided, drawing/sketch could be provided vide email)

(d) Priority details (i.e. Application no.; date of filing, Country) where priority is claimed (Application must be within 6 months of priority application);

(d) Power of Attorney should be signed (with seal of company if available) in presence of two witnesses. It is preferable to be notarised and mandatory where seal of company is not available

For conventional applications certified copy of priority document along with English translation must be supplied within 3 months of filing of Application.

Term of Design Registration in Nepal:

The copyright in design is valid for 5 years and can be further renewed for two terms of 5 years each. Thereby making total term of valid registration to be 15 years in Nepal.

A 35 days extension available without cost and Original certificate requirement for endorsement of renewal

Trademark filing requirements in Pakistan:

(i) Trademark
(ii) Full Name, Address, Status and Nationality of the applicant(s)

(iii) International Class

(iv) Description of goods or service for which the mark is to be registered.
(v) The date of use of the Trademark in Pakistan (if any)

(vi) Description of Applicant whether Trader, Manufacturer, Merchant or Service Provider

(vii) Translation/ Transliteration of mark, if in language other than English

(viii) Priority details (if any) including Application no.; country and date of filing, certified copy of priority document to be filed within 3 months

(viii) Power of Authority- Should be signed (with seal of company if available) and notarised

Trademark Registration in Pakistan

Following stages are encountered while registering a Trademark in Pakistan:

1. Filing of Application
2. Examination of Application
3. Issuance of Examination report, if there are any preliminary objections
4. Reply to examination report
5. Hearing (if Registrar is not satisfied with response)
6. Acceptance of Application (if reply is found satisfactory or if Registrar is convinced during hearing)
7. Publication of Trademark Application in the monthly Trade Marks Journal
8. Opposition within 2 months of publication
9. Issuance of Registration Certificate, where no opposition is preferred or after opposition is favourably decided

Term of Registration:

Under the Trademarks Act of 1940 the initial registration of the trademark in respect of Trademark applications filed prior to April 12, 2004 was valid for a period of 7 years which was further renewable for successive period of 15 years thereafter. But under new Trademarks Ordinance of 2001 The trademarks registration in respect of Applications filed after April 12, 2004 is valid for 10 years and can be successively registered for each term of ten (10) years thereafter.

DESIGNS IN PAKISTAN:

It is possible to claim conventional priority in Pakistan for Industrial design Applications. The Application must be made within six months of first making application in conventional country. The Design must be absolute novel and original and must not have been published anywhere in the world before its priority date/ filing date (whichever earlier)

Design filing requirements in Pakistan

(a) Name, address and Nationality of the Applicant (s)

(b) Title of the Article

(c) Various views of the Article (front, back top, side, bottom, including perspective views); In case of photograph 6 sets to be provided, drawing/sketch could be provided vide email)

(d) Priority details (i.e. Application no.; date of filing, Country) where priority is claimed (Application must be within 6 months of priority application);

(e) Power of Attorney- Should be signed (with seal of company) and notarised

For conventional Application: Certified copy of priority document must be supplied within 3 months of filing of Application. Where priority document is in language other than English any one of the following requirements is to be complied with

• Notarised English translation of Priority along with notarised Certificate of translation (on letter head of translator with seal/ stamp of the translator), or
• Plain English translation with certificate of translation accompanied by two separate duly notarised affidavits (one by translator and one by Applicant) that English translation is true and correct translated copy of other language, or
• Plain English translation with certificate of translation accompanied by separate duly notarised Affidavits by Applicant & Authors (both with seal of company). A Single joint affidavit by more than two authors is possible.

Term of Industrial Design

The copyright in design is valid for 10 years and can be further renewed for one term of 10 years. Thereby making total term of valid registration to be 30 years in Pakistan.

Trademarks in China

China follows the “China Classification of Similar Goods and Services”. This classification is updated annually to remain aligned with the latest edition of Nice Classification, while also incorporating additional categories unique to China. Since 2013, China has permitted the registration of certain retail and wholesale services, specifically relating to pharmaceutical, veterinary, and medical supplies. However, it has generally not recognized or accepted the registration of broad retail services under Class 35. Multi-class filing system is allowed in China.

Trademark filing requirements in China:

All application documents are required to be filed in the Chinese language.

1. Trademark
2. Full Name, Address, Status and Nationality of the applicant(s). (name of all partners where Applicant is a partnership firm)
3. Trade description (whether Manufacturer, Merchant, Trader, Service Provider)
4. International Class
5. Description of goods or service for which the mark is to be registered.
6. The date of use of the Trademark in China (if any)
7. Translation/ Transliteration of mark, if in language other than Chinese
8. A copy of the company registration certificate, duly stamped or signed by the client
9. Priority details (if any) including Application no.; country and date of filing, Original Certified copy;
10. Duly executed Power of Attorney
11. A copy of the applicant’s business registration certificate, issued by the competent authority in the home country, bearing the client’s seal or signature

Trademark Registration in China

Following stages are encountered while registering a Trademark in China:

1. Filing of Application
2. Issuance of Application no. and acknowledgement receipt from the Trademark Office
3. Formality Examination (1-2 months)
4. Examination report issued generally within 90 days from date of filing of Application
5. Reply to examination report to be filed within 30 days.
6. Acceptance of Application
7. Publication of Trademark Application in the monthly Trade Marks Journal
8. Opposition within three (3) months from the date of publication of mark, it is non-extendable
9. Issuance of Registration Certificate, where no opposition is preferred or opposition is set aside

Term of Registration:

Term of a trademark registration in China is ten (10) years and registration can be successively renewed for a term of ten (10) years thereafter.

Design in China

China is a member of the Paris Convention, allowing applicants to claim conventional priority when filing design applications in China. Applicants claiming priority must file a design application within 6 months from the first filing date. China is also a member of the PCT, but PCT applications only relate to invention and utility model patents; design applications cannot be filed via PCT.

Industrial Design filing requirements in China are as follows:

1. Name, address and nationality of the Applicant(s)
2. Various views of the Article, showing at least six different views, along with a perspective view
3. A short description outlining the product’s title, intended use, and key features
4. Power of Attorney
5. A scanned copy of the assignment document, if the Chinese applicant differs from the applicant listed in the certified priority documents

Additional requirements for conventional Application:

1. Priority details (i.e. Application no.; date of filing, Country) where priority is claimed (within 3 months of filing application with late fee)

2. Verified/ notarised Chinese translation of the priority document if priority document is in any language other than Chinese (within 3 months of filing application with late fee)

Term of Industrial Design in China:

The term of an industrial design in China is 15 years from the filing date.

SINGAPORE TRADEMARKS

Singapore adopts the International Classification of Goods and Services under the Nice Agreement, to which it is a signatory. Service marks are registrable in Singapore, and applicants may also file multi-class trademark applications, as Singapore permits protection of multiple classes within a single filing. Singapore acceded to the Madrid Protocol on 31 July 2000. As a result, applicants can file an international trademark application through the Intellectual Property Office of Singapore (IPOS), which will then be forwarded to the World Intellectual Property Organization (WIPO) for processing.

Trademark filing requirements in Singapore:

1. Full Name, Address, Status and Nationality of the applicant(s). (name of all partners where Applicant is a partnership firm)
2. Trade description (whether Manufacturer, Merchant, Trader, Service Provider)
3. Description of goods or service for which the mark is to be registered
4. Clear image of Trademark (if it’s a logo/design)
5. The date of use of the Trademark in Singapore (if any)- optional at filing but helpful for evidence of reputation/use
6. Translation/ Transliteration of mark, if in language other than English
7. Priority details (if any) including Application no.; country and date of filing, Certified copy to be supplied within 6 months of filing Application; certified English translation is also required if, it’s in language other than English. Priority must be claimed at the time of filing by indicating it on Form TM4
8. Power of Attorney (POA) is not required when filing a trademark application in Singapore

Trademark Registration in Singapore

Following stages are encountered while registering a Trademark in Singapore:

1. Filing of Application
2. Issuance of Application no. and acknowledgement receipt from the Trademark Office ((usually immediate or within a few business days)
3. Examination of Application (6–9 months)
4. Issuance of Examination report, if there are any preliminary objections
5. Reply to examination report (2 months to respond, extendable by another 4 months for a fee)
6. If objections remain unresolved, you may amend your application, limit goods/services, disclaim certain elements, or appeal the decision
7. Acceptance of Application (if reply is found satisfactory)
8. Publication of Trademark Application in the monthly Trade Marks Journal
9. Opposition within two (2) months from the date of publication of mark
10. Issuance of Registration Certificate, where no opposition is preferred or opposition is set aside

Term of Registration:

Term of a trademark registration in Singapore is ten (10) years and registration can be successively renewed for a term of ten (10) years thereafter.

DESIGN IN SINGAPORE

Singapore has been a member of the Paris Convention since 23 February 1995, enabling applicants to claim conventional priority for design filings, provided the Singapore design application is filed within 12 months of the first filing date. Singapore is also a member of the Patent Cooperation Treaty (PCT); however, the PCT applies only to inventions, so design applications cannot be filed through the PCT route. In addition, Singapore is also a contracting party to the Hague System, which allows applicants to file an international design application directly with WIPO and obtain protection in multiple jurisdictions, including Singapore.

Industrial Design filing requirements in Singapore are as follows:

1. Name, address and nationality of the Applicant (s) or of all partners if the Applicant is a Partnership firm
2. Name, address and nationality of the creator(s) of the design
3. Title of the Article, classification, novelty, disclaimer (if any) along with indication of the class and sub-class of the Locarno International Classification
4. Various views of the Article (front, back top, side, bottom, including perspective views. Views must be clear
5. Priority details (i.e. Application no.; date of filing, Country) where priority is claimed (Application must be within 6 months of priority application); Certified copy of priority document must be supplied when requested by the office. It should be in English or if in other language than English, then a translation is required in english
6. POA is not required

Design Prosecution in Singapore:

1. Filing of the Application
2. Formal examination to ensure it fulfils the registration requirements
3. Objection if any, Examination report is issued, reply should be filed within the stipulated time
4. Registration and Publication in journal, if objection is cured

Term of Industrial Design in Singapore:

A registered industrial design is initially protected for a term of 5 years, renewable twice for additional 5-year periods, giving a maximum protection of 15 years

Design Cancellation/Revocation:

A design in Singapore may be revoked by filing a revocation application with IPOS on grounds such as lack of novelty or failure to meet statutory requirements. Its validity may also be challenged before the courts, including in the course of an infringement proceeding.

MALAYSIA TRADEMARKS

Malaysia follows the International Classification of Goods and Services under the Nice Agreement. It is possible to get service marks registered in Malaysia.

Malaysia is the 106^th member of the Madrid Protocol for the international registration of trademarks, having acceded to the system on September 27, 2019.The Madrid protocol entered into force for Malaysia on December 27, 2019.

Trademarks Act 2019 has made the trademark application process simplified, efficient and transparent. Non-traditional marks such as shape of goods, colour, sound, scent etc. are registrable in Malaysia. Power of Attorney and Statutory Declaration are no longer required for trademark filing in Malaysia. Earlier 3 months were provided from the filing date to submit a Statutory Declaration affirming good faith in filing. Now this declaration is embedded within the application form itself. Even publication fee is not required to be paid now. Division of application is also permitted.

Provisions as to ground less threat of infringement also introduced in Malaysia.

Trademark filing requirements in Malaysia:

1. Full Name, Address, Status and Nationality of the applicant(s). (name of all partners where Applicant is a partnership firm)
2. Trade description (whether Manufacturer, Merchant, Trader, Service Provider)
3. Description of goods or service for which the mark is to be registered.
4. Trademark
5. The date of use of the Trademark in Malaysia (if any)
6. Translation/ Transliteration of mark, if in language other than Roman Characters or English or Bahasa Malaysia to be provided in the Application form while submitting
7. Priority details (if any) including Application no.; country and date of filing,

Conventional Application to be filed within 6 months of priority date. The certified copy of priority document and Certified English translation must be filed within 30 days of filing application.

Trademark Registration in Malaysia

Following stages are encountered while registering a Trademark in Malaysia:

1. Filing of Application
2. Issuance of Application no. and acknowledgement receipt from the Trademark Office (within a week)
3. Examination of Application
4. Issuance of Examination report, if there are any preliminary objections in around 4-8 months
5. Reply to examination report (at least within 30 days)
6. Hearing (if Registrar requires or is not satisfied with response)
7. Acceptance of Application (if reply is found satisfactory or if Registrar is convinced during hearing)
8. Publication of Trademark Application in the monthly Trade Marks Journal
9. Opposition within two (2) months from the date of publication of mark
10. Issuance of Registration Certificate, where no opposition is preferred or opposition is set aside

Term of Registration:

Term of a trademark registration in Malaysia is ten (10) years and registration can be successively renewed for a term of ten (10) years thereafter.

In Malaysia, there is no use requirement for trademark renewal. Once registered, a trademark can be renewed every 10 years by paying the prescribed renewal fees—without needing to submit proof of use or supporting documents.

However, Registration of the trademark in Malaysia can be cancelled on the grounds of non-use by any aggrieved person if it has not been used for a continuous period of three years prior to one month before the date of the application for cancellation. Under the new 2019 Act, if there are “ proper reasons for non-use” it can be used as defence. Partial cancellation of selected goods or service permitted under the New Act.

DESIGN IN MALAYSIA

Malaysia is a member of the Paris Convention, allowing applicants to claim conventional priority when filing design applications in Malaysia. Applicants claiming priority must file a design application within 6 months from the first filing date.

Industrial Design filing requirements in Malaysia are as follows:

1. Name, address and nationality of the Applicant (s) or of all partners if the Applicant is a Partnership firm
2. Name, address and nationality of the creator(s) of the design
3. Title of the Article, classification, novelty, disclaimer (if any)
4. If the applicant is the author, the application must provide a statement with regard to the authorship of the Article/Design. If not, it should provide the author’s name and address and briefly explain how the applicant acquired the right to registration
5. Various views of the Article (front, back top, side, bottom, including perspective views. Views must be clear
6. Priority details (i.e. Application no.; date of filing, Country) where priority is claimed
7. Duly signed POA (ID Form 10-Appointment of Agent form in Malaysia)

For conventional Application, certified copy of priority document and certified copy of the English translation must be supplied within 3 months of filing of Application

Design Prosecution in Malaysia:

1. Filing of the Application
2. Formal examination
3. Objection if any, Examination report is issued- 3 months’ time to respond on payment of fee
4. Registration and Publication in journal, if objection is cured

Term of Industrial Design in Malaysia:

A registered industrial design is protected for 5 years from the filing date, renewable in four consecutive terms, up to a maximum of 25 years.

Design Cancellation/Revocation:

In Malaysia, any "interested person" may seek cancellation of a registered industrial design by filing an invalidation action before the High Court.

INDONESIA TRADEMARKS

Indonesia adopts the International Classification of Goods and Services under the Nice Agreement, to which it is a signatory. Service marks are registrable in INDONESIA, and applicants may also file multi-class trademark applications, as Indonesia permits protection of multiple classes within a single filing. INDONESIA acceded to the Madrid Protocol on October 2, 2017. As a result, applicants can file an international trademark application through the Directorate General of Intellectual Property (DGIP), which will then be forwarded to the World Intellectual Property Organization (WIPO) for processing. Indonesian Trademark Law also extends protection to traditional marks as well as non-conventional marks, including holograms, three-dimensional marks, and sound marks. Indonesia follows the first-to-file Rule, which means that the first registrant has exclusive trademark rights. E-filing is the only mode to file trademark in Indonesia.

Trademark filing requirements in Indonesia:

1. Full Name, Address, Status and Nationality of the applicant(s). (name of all partners where Applicant is a partnership firm)
2. Trade description (whether Manufacturer, Merchant, Trader, Service Provider)
3. Description of goods or service for which the mark is to be registered
4. Clear image of Trademark (if it’s a logo/design)
5. Translation/ Transliteration of mark, if in language other than Indonesian/English
6. Priority details (if any) including Application no.; country and date of filing, Certified copy to be supplied within 6 months of filing Application; translation is also required in Indonesian language
7. Statement of ownership
8. A duly signed Power of Attorney (POA)

Trademark Registration in Indonesia

Following stages are encountered while registering a Trademark in Indonesia:

1. Filing of Application
2. Issuance of Application no. and acknowledgement receipt from the Trademark Office (usually immediate or within a few business days)
3. Trademark applications undergo only a formal examination. All legislative formalities should be met and there should are no absolute grounds for refusal are identified (3-4 months approx. if no objection is raised)
4. Publication of Trademark Application in the monthly Trade Marks Journal
5. Opposition within two (2) months from the date of publication of mark
6. Issuance of Registration Certificate, where no opposition is preferred or opposition is set aside

Term of Registration:

Term of a trademark registration in Indonesia is ten (10) years and registration can be successively renewed for a term of ten (10) years thereafter.

DESIGN IN INDONESIA

Indonesia has been a member of the Paris Convention, enabling applicants to claim conventional priority for design filings, provided the Indonesia design application is filed within 6 months of the first filing date. Indonesia is also a member of the Patent Cooperation Treaty (PCT); however, the PCT applies only to inventions, so design applications cannot be filed through the PCT route. In addition, Indonesia is also a contracting party to the Hague System, which allows applicants to file an international design application directly with WIPO and obtain protection in multiple jurisdictions, including Indonesia.

Industrial Design filing requirements in Indonesia are as follows:

1. Name, address and nationality of the Applicant (s) or of all partners if the Applicant is a Partnership firm
2. Name, address and nationality of the creator(s) of the design
3. Title of the Article, classification, novelty, disclaimer (if any) along with indication of the class and sub-class of the Locarno International Classification
4. Various views of the Article (front, back top, side, bottom, including perspective views. Views must be clear
5. Priority details (i.e. Application no.; date of filing, Country) where priority is claimed (Application must be within 6 months of priority application); Certified copy of priority document must be supplied when requested by the office, along with translation in Bahasa Indonesia
6. POA is required at the time of filing application
7. Statement of Ownership (within 3 months) translated in Bahasa Indonesia
8. Assignment Deed (within 3 months) translated in Bahasa Indonesia

Design Prosecution in Indonesia:

1. Filing of the Application
2. Formal examination to ensure it fulfils the registration requirements
3. Objection if any, Examination report is issued, reply should be filed within stipulated period
4. Publication in Journal for 3 months, if objection is cured
5. Notice of Allowance (if Opposition is cured, or no opposition is raised)
6. Fee needs to be paid within a month of receipt of Notice of Allowance

Term of Industrial Design in Indonesia:

The term of an Industrial Design in Indonesia is 10 years and it cannot be renewed, therefore, maintenance fee is not applicable

Design Cancellation/Revocation:

An Industrial Design that has been duly registered with the Directorate General may be cancelled either upon the rights holder’s own request submitted to the Directorate General, or through a lawsuit filed by an interested party seeking cancellation, provided that a final and binding court decision is issued granting the claim for cancellation.

Trademarks in Sri Lanka

Sri Lanka follows the International Classification of Goods and Services under the Nice Agreement. Multi-class filing is not permitted — a separate application must be filed for each class. Sri Lanka is not a member of the Madrid Protocol; trademark protection requires a direct local filing before the Trademark Registry.

Trademark Filing Requirements

1. Full name, address, status and nationality of the Applicant(s); names of all partners where the Applicant is a partnership firm
2. Trademark (device/word)
3. International Class
4. Description of goods or services for which the mark is to be registered
5. Date of use of the Trademark in Sri Lanka (if any)
6. Translation/Transliteration of the mark, if not in English
7. Priority details (if any) including Application no., country and date of filing; certified copy to be supplied within 3 months of filing (scanned copy sufficient)
8. Certified English translation of the priority document if not in English
9. Power of Attorney — within 3 months from the filing date (scanned copy sufficient):
   • Executed in the presence of two witnesses; notarisation or legalisation not required
   • If a witness is not available, the POA may be notarised
   • If the company seal is unavailable, the POA may be notarised

Trademark Registration Procedure

1. Filing of Application
2. Issuance of Application number and acknowledgement receipt (within approximately one week)
3. Examination of Application
4. Issuance of Examination Report if preliminary objections exist
5. Reply to Examination Report — within 2 months, extendable up to a maximum of 3 months
6. Hearing (if the Registrar requires one or is not satisfied with the response)
7. Acceptance of Application
8. Publication of Trademark Application in the monthly Trade Marks Journal
9. Opposition period — 3 months from the date of publication
10. Issuance of Registration Certificate where no opposition is filed or opposition is set aside

Typical Timeframe: A straightforward registration takes approximately 2 years from the date of application.

Term of Registration

The initial term of a trademark registration is 10 years, renewable for successive terms of 10 years. Renewal fees may be paid 6 months prior to expiry or up to 6 months after expiry with a surcharge. If the registration certificate is issued after 10 years from the filing date, renewal fees are payable within 1 year of issuance of the certificate.

Industrial Designs in Sri Lanka

Sri Lanka is a member of the Paris Convention, allowing applicants to claim conventional priority when filing design applications. The priority application must be filed within 6 months of the first filing date; restoration of this term is not available.

Industrial Design Filing Requirements

1. Name, address and nationality of the Applicant(s); or of all partners if the Applicant is a partnership firm
2. Name, address and nationality of the author/creator(s) of the design
3. Title of the Article
4. Class and sub-class per Locarno classification
5. Statement as to novelty; disclaimer (if any)
6. Various clear views of the Article (front, back, top, side, bottom, including perspective views)
7. Priority details (Application no., date of filing, country) where priority is claimed; certified copy of the priority document must be supplied within 3 months of filing; certified English translation required if not in English
8. Statement of authorship from the Applicant, or the author's details and explanation of how the Applicant acquired the right to registration if the Applicant is not the author
9. Original Power of Attorney:
   • Executed in the presence of two witnesses; notarisation or legalisation not required
   • If a witness is not available, the POA may be notarised
   • If the company seal is unavailable, the POA may be notarised

Design Prosecution in Sri Lanka

1. Filing of the Application
2. Formal Examination
3. Objection, if any (Examination Report)
4. Publication in Journal after payment of publication fee (if objection is cured)
5. Opposition period (if any)
6. Registration of the Industrial Design

Term of Industrial Design

A registered industrial design is initially protected for 5 years and may be renewed for two further terms of 5 years each, giving a maximum total protection of 15 years. Late payment of renewal fees is permissible within a 6-month grace period with a surcharge.

EUROPEAN UNION TRADEMARKS

European Union (EU) adopts the International Classification of Goods and Services under the Nice Agreement, to which it is a signatory. Service marks are registrable in EU, and applicants may also file multi-class trademark applications, as EU permits protection of multiple classes within a single filing. It is valid in 27 European Union countries: Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden. EU acceded to the Madrid Protocol on October 1, 2004. As a result, applicants can file an international trademark application through the European Union Intellectual Property Office (EUIPO), which will then be forwarded to the World Intellectual Property Organization (WIPO) for processing.

Trademark filing requirements in EU:

1. Full Name, Address, Status and Nationality of the applicant(s). (name of all partners where Applicant is a partnership firm)
2. Trade description (whether Manufacturer, Merchant, Trader, Service Provider)
3. Description of goods or service for which the mark is to be registered
4. Clear image of Trademark (if it’s a logo/design)
5. The date of use of the Trademark in EU (if any)
6. Translation/ Transliteration of mark, if in language other than English, French, German, Italian or Spanish
7. Priority details (if any) including Application no.; country and date of filing, Certified copy to be supplied within 6 months of filing Application; certified English translation is also required if, it’s in language other than English, French, German, Italian or Spanish.
8. A duly signed Power of Attorney (POA)

Trademark Registration in EU

Following stages are encountered while registering a Trademark in EU:

1. Filing of Application
2. Issuance of Application no. and acknowledgement receipt from the Trademark Office ((usually immediate or within a few business days)
3. Trademark applications undergo only a formal examination. All legislative formalities should be met and there should are no absolute grounds for refusal are identified (3 months approx. if no objection is raised)
4. Publication of Trademark Application in the monthly Trade Marks Journal
5. Opposition within three (3) months from the date of publication of mark
6. Issuance of Registration Certificate, where no opposition is preferred or opposition is set aside

Term of Registration:

Term of a trademark registration in EU is ten (10) years and registration can be successively renewed for a term of ten (10) years thereafter.

DESIGN IN EU

EU has been a member of the Paris Convention, enabling applicants to claim conventional priority for design filings, provided the EU design application is filed within 6 months of the first filing date. It is valid in 27 European Union countries: Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden. EU is also a member of the Patent Cooperation Treaty (PCT); however, the PCT applies only to inventions, so design applications cannot be filed through the PCT route. In addition, EU is also a contracting party to the Hague System, which allows applicants to file an international design application directly with WIPO and obtain protection in multiple jurisdictions, including EU.

Industrial Design filing requirements in EU are as follows:

1. Name, address and nationality of the Applicant (s) or of all partners if the Applicant is a Partnership firm
2. Name, address and nationality of the creator(s) of the design
3. Title of the Article, classification, novelty, disclaimer (if any) along with indication of the class and sub-class of the Locarno International Classification
4. Various views of the Article (front, back top, side, bottom, including perspective views. Views must be clear
5. Priority details (i.e. Application no.; date of filing, Country) where priority is claimed (Application must be within 6 months of priority application); Certified copy of priority document must be supplied when requested by the office. It should be in English, French, German, Italian or Spanish
6. POA is not required at the time of filing application, it can be submitted at later stage
7. Maximum 50 designs allowed in one application

Design Prosecution in EU:

1. Filing of the Application
2. Formal examination to ensure it fulfils the registration requirements
3. Objection if any, Examination report is issued, reply should be filed within 2 months
4. Registration and Publication in journal, if objection is cured
5. Deferment of Publication: After registration, the design is either published immediately or its publication may be deferred for up to 30 months from the filing date or from the earliest priority date claimed. The request for deferment must be made on the initial application form; later requests will not be accepted

Term of Industrial Design in EU:

The term of an EU design is 5 years from the filing date, and it can be renewed four additional times for further 5-year periods, giving a maximum protection of 25 years. Renewal fees can be paid during the last 6 months of each 5-year protection period. Late renewal is allowed within a further 6-month grace period, subject to a surcharge.

Design Cancellation/Revocation:

A registered EU design may be declared invalid by the EUIPO, upon a third party’s request, if it fails to meet the required validity conditions such as novelty or individual character. The cancellation request must be submitted in the first language chosen by the design owner. If the EUIPO declares the design invalid, it is treated as having had no legal effect from the filing date. Alternatively, a request for invalidity may also be brought before a European court as a defence in an infringement action.