The possibility of “future” use of mark will be particularly relevant, when examination of an application suggests that the mark applied for may become the accepted description of a new type of product or service. The applicant may, for example, be the first to use or invent a product and have coined a term as a brand which may, or may not, be something by which the product will become known. Similarly, in relation to shapes of new products, account should be taken not only of shapes which are already the “norm” for the relevant sector but also of which shapes are likely to become the normal shape of the product: “the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character.” (Proctor and Gamble) For example, frozen potato chips which were cooked in domestic ovens instead of deep fat fryers were, at one time, a new product. The manufacturer branded them “Oven Chips”, but although they were the first to coin the term, the term was an apt description and it was reasonable to assume that it would become the natural description in trade for that category of goods. Conversely, the inventor of a revolutionary new type of temporary plastic mesh fencing also invented a trade mark to brand the new product. The mark was inspired by the names of the inventor’s children, Catherine and Nicholas, Catnic. It would be unreasonable to assume that this mark would be the natural description of the goods because it is an invented word and is distinctive. Unless allowed by the proprietor to pass into generic usage, it would be unreasonable to assume that it would be used by others as a description in the natural course of trade. Thorough research will be prudent particularly in fast-changing fields such as technology and scientific research, where the consultation of patent examiners and/or trade bodies may yield results which the Internet may not. If the product is entirely new to INDIA, it is more likely that we will also adopt the foreign descriptive name because it is commercially convenient. In addition, the appeal to the average consumer in foreign clothing or food may also extend to the ethnic description which may then become the accepted description in India, e.g. cappuccino for coffee or yogurt for curd.
Relative Grounds for Refusal of registration of Trademark
Section 11 of the Act deals with the comparison between later marks and earlier marks. The Sections relevant to examination and searching are 11(1) and 11(2). Section 11(1) reads as follows: 1) “Save as provided in section 12, a trade mark shall not be registered if, because of- (a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or (b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.” This section is concerned with examination for conflicting marks where the marks are identical or similar and the goods or services covered by the trade mark are either identical or similar. Because of these there exists a likelihood of confusion on the part of the public including likelihood of association with the earlier trade mark. The ECJ in its judgment in the LTJ Diffusion SA v. Sadas Vertbaudet SA case said that “ a sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.”
Trademark of Non-English descriptive words
The following practice will be adopted in dealing with applications to register non-English words as trade marks where, if words with the same meaning were applied for in English, the application would be subject to an objection on the grounds that the words are descriptive and/or non-distinctive. The U.K. Registry has established a practice that there are no grounds for refusing registration of trade marks on the basis that they are descriptive or non distinctive in a language which is unlikely to be understood by the relevant trade in the UK or by the relevant average UK consumer of the goods/services in question. The same practice will be followed by the Trade Marks Registry in India. Accordingly if the foreign word is in a language that is not likely to be known to a significant proportion of the public in India, there will not exist any ground for objection that the mark is descriptive. Consequently, the Examiner will only object to the registration of word marks which are likely to be recognized as a descriptive of the characteristic of the goods or services. The relevant trade in India consists of those in this country who trade in the goods or services in question. Non English Descriptions which are most likely to be Understood Again in general, the average consumer is far more likely to be familiar with the non-English name of a product or service, or the local name for its geographical origin, than he is with the non-English words which describe other characteristics of the product or service. For example, the average English speaking consumer of wine would know that ‘Bourgogne’ is the French word for the region known as ‘Burgundy’ and would also be likely to know that ‘vin rouge’ means ‘red wine.’ Consequently, such names would be objectionable. This English practice could be well followed in India, if necessary by reference to internet. The more closely a non-English descriptive word resembles its English equivalent, the more likely it is that its descriptive significance will be understood by the consumer. Thus, for example the Italian words ‘Caffe Fresco’ should be rejected as a trade mark for coffee because the average consumer of coffee would be likely to see that it simply means ‘fresh coffee’ Non-English words which have become generic in the trade in the goods or services (by customers or traders) are excluded from registration under Section 9(1)(c) of the Act. So the German word ‘auto’ is not registrable for motor cars or their parts and fittings, or related services. The following language are likely to be known to a reasonable (and increasing ) number of Indian public. As such, descriptive use in any of these languages will be equally objectionable. Punjabi, Tamil, Bengali, Urdu, Hindi, Telugu, Oriya, Assamee, Rajasthani, Malyalam, Karnatak. Marathi, Gujarathi and English and scheduled languages under the constitution. Languages such as French, German, Italian, Spanish and Japanese are hardly known in India. Accordingly marks in such languages will be less objectionable.
Patent PCT Application FIling India
The patent cooperation treaty (PCT) is a multilateral treaty entered into force in 1978. Through PCT, an inventor of a member country (Contracting state of PCT can simultaneously obtain priority for his/her Invention in all/ any of the member countries, without having to file a separate application in the countries of interest , by designating them in the PCT application .India joined the PCT on December 7, 1998. All activities related to PCT are coordinated by the World Intellectual Property Organization (WIPO) situated in Geneva. In order to protect your invention in other countries, you are required to file an independent patent application in each country of interest; in some cases , within a stipulated time to obtain priority in these countries .This would entail a large investment, within a short time, to meet costs towards filing fees, translation, attorney charges etc. In addition you are making an assumption which, due to the short time available for making the decision on whether to file a patent application in a country or not, may not be well founded. Inventors of Contracting States of PCT on the other hand can simultaneously obtain priority for their inventions without having to file separate application in the countries of interest ; thus saving the initial investments towards filing fees, translation etc. In addition the system provides much longer time for filing patent application in member countries . The time available under Paris Convention for securing priority in other countries is 12 months from the date of initial filing. Under the PCT, the time available could be as much as minimum 20 and maximum 31 months. Further, an inventor is also benefited by the search report prepared under the PCT system to be sure that the claimed invention is novel. The inventor could also opt for preliminary examination before filing in other countries to be doubly sure about the patentability of the invention. The patent office or nay other office designated by each contracting state becomes a receiving office for receiving patent applications These applications are referred to International Searching Authorities (ISA) which usually the patent offices, appointed to carry out the patent search on a global basis. In case the receiving office is also an ISA, a separate referral is not required . There is also a provision to get a patent application examined by international preliminary Examining Authorities which, in most cases are ISA. A search report on the patent application filed with a receiving office is received by the applicant/inventor 16 months after the priority date which is nothing but the date of submitting the application in the receiving office. The International Bureau of the WIPO publishes the application and the search report 18 months after the priority date. The original application is then sent to the designated offices indicated in the application. Within two months of this i.e. by the 20th month, the applicant will have to formally apply to the patent offices of these countries for grant of patents by paying official fees and completing other formalities stipulated by these offices (some countries). In case translated copies of the application are required, the same has to be furnished by the applicant. Inspite of submitting the request for grant of patents in designated countries in the 20th month after the priority date, the priority in these countries is the same as the date of filing the original PCT application. If applicant/inventor has requested for an examination report, the report is usually received by the applicant /inventor about 28 months after the priority date. Within two months of this, the applicant/inventor will have to formally apply for grant of patents in designated countries .The priority of the application is maintained in the designated countries.
(a) By the end of the 20th to 31st month the applicant is in a better position to assess the quality of the invention being protected as a detailed search report or an examination report or both would be available to help making an assessment.
(b) Applicants can re-evaluate their decision about filing applications in all the designated countries after a long gap of 20 to 31 months.
(c ) If not satisfied, applicants may decide to drop a few countries from the list. This decision would also be influenced by the changing market conditions.
(d ) Applicants can delay their investment in respect of the national phase or the regional phase applications by 20 to 31 months without sacrificing priority.
Government Fees for Patent PCT application India
| Government Fees for Patent PCT application India |
Fee (USD) for legal entity |
| Filing a patent application - Official Fee (Per priority claimed) Additional claim over 10 claims (per additional claim) Additional pages over 30 (per additional page) |
1OO 20 10 |
| Translation Cost (if in English) |
NIL |
| Administrative Expenses (Courier, Email, etc) |
50 |
| Filing a request for substantive examination |
270 |
|
|
(*Official fees for individuals is 1/3)
