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India - New Trademark Law

We have been advised that a new Trade Marks Act has been passed by Parliament and, although it has received the assent of the President, it is not expected to enter into effect until the Implementing Rules are published. The principal changes effected under the Trade Marks Act are summarized below.

(1) The definition of a mark has been broadened to include any sign capable of distinguishing the goods or services of a person in respect of which it is registered from the goods or services of another person and may include any sign capable of being represented graphically, including aspects of packaging, shapes and colors.

(2) Service marks may be registered.

(3) The distinction between Parts A and B of the Register will be abolished to create a single Register.

(4) A single application may cover several classes of goods and/or services.

(5) Special provisions have been introduced to register and protect well-known trademarks.

(6) Collective marks may be registered.

(7) Defensive marks are no longer registrable.

(8) The term of a registration will be increased from 7 to 10 years, and be renewable for additional 10-year periods.

(9) The procedure for registration of Registered Users has been simplified and the Registrar is vested with powers to grant, vary and refuse registration of Registered Users.

(10) The definition of infringement has been broadened to include action against the unauthorized use of a confusingly similar mark, not only in respect of the goods and services covered by the registration, as is presently the case, but also in respect of goods and services not covered in the registration which are so similar that a likelihood of deception or confusion exists. An action for infringement is also available against the unauthorized use of a mark in relation to dissimilar goods, if such mark is similar to a registered mark that is well-known in India and the interest of the registrant is likely to be affected adversely.

(11) Use of another's trademark as a trade name or part of a trade name is prohibited.

(12) Provision is made for the assignment of unregistered trademarks with or without the goodwill of the business concerned.

(13) An Appellate Board is to be established to expedite appeals and applications for rectification which are currently submitted to the High Court.

(14) Increased penalties, including longer prison terms and larger fines, are prescribed for offences relating to trademarks.


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© Copyright 2002 Ladas & Parry - Posted February 2002
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