Intellectual Property.

Once a trademark application is filed, a Trademark Examiner examines the the application and makes a search of earlier trademarks – which are identical or similar to the mark being examined. The findings of the Trademark Examiner are compiled as the trademark examination report.

Use of Incorrect Trademark Form: In case the trademark application is not made on the proper form, an objection as following is raised by the Trademark Examiner.“The application is made on form TM-1, for certification mark in respect of goods or services falling in a class, the form of the application should be corrected as TM-4 by filing a request on form TM-16.”

The trademark applicant name must be entered properly in an application, as suggested in this article. In case of incorrect trademark applicant name, the Trademark Examiner would raise an objection as follows:
“The application appears to have been filed in the name of a partnership firm, names of all Partners of the firm should be brought on record by filing a request form TM-16”

Whenever a trademark application is filed by a Trademark Attorney or Trademark Agent on behalf of the applicant, Trademark Form TM-48 must be attached. In case Form TM-48 is not attached or incorrectly executed, the Trademark Examiner would raise and objection as following:
“The application has been submitted by a person other than the applicant, a duly stamped Power of Attorney in favour of a particular agent should be filed.”

In case a trademark application has not mentioned the principal place of business of the applicant or if the applicant’s address for service in India is not mentioned, then an objection can be raised as under:
“The Principal Place of business of the applicant should be brought on record by filing a request on form TM-16” or “The applicant’s address for service in India should be brought on record by filing a request on form TM-16, since the applicant has no principal place of business in India.”

In a trademark application, if the specification of goods or services is too vague or encompasses a large variety of goods and services in a class, then an objection can be raised by the Trademark Examiner as follows:
“The specification of goods/services mentioned in respect of class xx, is very vague and wide. You should provide exact items in respect of which the trademark is sought to be registered, by filing a request on form TM-16.”

In case, same or similar earlier trademarks of different trademark owner are found on records in respect of same or similar description of goods or services, then an objection is raised as follows:
“The trademark applied for registration is not registrable under Section 11(1) of the Trade Marks Act 1999 since identical or similar marks in respect of identical or similar description of goods or services are there on records and because of such identity or similarity of marks and goods or services there exists a likelihood of confusion on the part of the public.”

Trademarks which are not capable of distinguishing the goods/services of one person from those of another person are devoid of distinctive character and thus liable for objection under absolute grounds for refusal of trademarks. To overcome a trademark objection under absolute grounds for refusal, the trademark applicant can submit proof to show that the mark has acquired a distinctive character by virtue of its prior use.

An objection can be raised by the Trademark Examiner, if the mark has potential for deception of the public by reason of something inherent in the mark itself or in its use, like nature, quality or geographical origin of the goods or services. An objection as to deceptive trademark can be overcome if the applicant seeks to exclude goods or services from the specification by filing Form TM-16.

The validity period of trademark in India is for a period of 10 years as per section 25 in the Trade Marks Act, 1999. On 6th March 2017, Government of India (GOI) notified new Trade Mark Rules, 2017, to streamline the application process, create benchmarks for filing trademark applications, promote e-filing and simplify the registration process.
The registered trademark can be renewed for another 10 years with proper documentation and meeting the required criteria. Let us have a look at the procedures to the renewal and restoration of trademarks in this article.

• The renewal can be filed within one year prior to the date of expiry as per rules 57 and 58 in Trade Mark rules 2017.
• The renewal can be filed within six months prior to the date of expiry as per rules 63 and 64 in Trade Mark rules 2002.
• The renewal can also be filed within six months after the date of expiry.
• Negligence to renew a mark within six months after the date of expiry will lead to the removal of the mark from the Register of Trademarks.

Mandatory notice from the Office of the Registrar of Trademarks will be sent six months prior to the proprietor informing about the deadline for renewal of the trademark. Upon non-renewal of the trademark within the stipulated time, the trademark will be removed from the Register of Trademarks.
However, the Trademark can be restored by filing an application along with the required fee. Trademark can be restored after six months and within one year from the date of expiration of the last registration of the mark.

Copyright refers to the ownership rights to literature, theatre, music, artwork, sound recordings, and other works. Copyright registration grants a set of rights to the work, including reproduction, public communication, adaptation, and translation. Copyright registration ensures that the writers’ rights to ownership and enjoyment of their works are protected and rewarded, which protects and rewards creativity. As understanding of intellectual property rules has grown, there has been a significant increase in the amount of intellectual property being registered in India. One of the most important types of intellectual property protection is copyright registration.
The Copyright Act of 1957 governs the process of copyright registration. The author’s creative work cannot be replicated since no one is permitted to use it without the author’s or creator’s consent. The author has the right to charge for the use or modification of their work. The copyright is usually protected for 60 years.

Copyright registration can be obtained for any works related to literature, drama, music, artwork, film, or sound recording. Copyrights are given to mainly three classes of work, and each class has its distinctive right under the copyright act.

• Original literary, dramatic, musical, and artistic works comprise the copyright for books, music, painting, sculpture, etc.
• Cinematography films are another class of copyright that consists of any work of visual recording on any medium.
• Sound recordings have a distinctive class under the copyright act that consists of a recording of sounds, regardless of the medium on which such recording is made or the method by which the sound is produced.

Provides Legal Protection: Registering a Copyright makes it much easier to protect the original work against infringement.

Market Presence: Copyright registration creates a public record of the work, and proof of ownership is established for the creative work.

Rights Of The Owner: The owner of registered copyright gets the rights to reproduce, disseminate and adapt and translate the work.

Your work can be copyrighted whether it is a published or unpublished work. Three copies of published material must be supplied with the application for published work.

• The application for copyright registration has to be filed in the concerned forms.
• Depending on the type of the work, a separate copyright application may have to be filed.
• The Advocate submit the signed application under the name the POA has been executed.
• A copyright registration application is prepared and submitted with the necessary forms to the Registrar of copyrights.
• The diary number will be issued once the application is submitted online.
• Within the waiting period of 30 days, the copyright examiner reviews the application for potential objection or any other discrepancies.
• If there is an objection, a notice will be issued, and the same has to be compiled within 30 days from the date of issuance of the notice. The examiner may call both parties for a hearing.
• After the discrepancy has been removed or no objection, the copyright is registered, and the Copyright Office will issue the registration certificate.

Copyright protection usually lasts for 60 years. The 60-year period begins with the author’s death year in the case of original literary, theatrical, musical, and artistic works.
The 60 years is counted from the publication date in the case of cinematographic films, sound recordings, pictures, posthumous publications, anonymous and pseudonymous publications, works of government, and activity of international organisations.

Right of reproduction

Right of Adaptation

Right of Communication To The Public

Right of Public Performance

Right of Paternity And Integrity

Right of Distribution

Some exclusions have been prescribed in respect of specific uses of copyrighted works to protect users’ interests. The usage of the work is one of the exemptions.

• For research or private study.
• For criticism or review or news.
• In connection with a judicial proceeding.
• For performance by an amateur club or society, if the performing for a non-paying audience.
• The making of sound recordings of literary, dramatic, or musical works under certain conditions.

Design registration is a type of intellectual property protection under which a newly created design applied to an article created under an industrial process can be protected from counterfeiting. This registration provides authority to the owner to use the Design for ten years, and the time can be further extended for the next five years. The present article briefs the Design Registration procedure in India.
A design is defined under Section 2(d) of the Designs Act 2001, as only the features of a shape, pattern, configuration, composition, or ornament of lines or colors that are applied to any article that is two dimensional, three dimensional, or both by an industrial process or any means whether mechanical, manual or chemical, separated or combined, which in the finished article are judged solely by the eye; but is not taken into account upon the principle of construction or anything which is in substance a merely mechanical device.

Following are some advantages that an owner can avail after getting registration of a design in India:

• Exclusive rights over the new and original design
• An asset of the proprietor/owner
• Can initiate a legal proceeding in case of infringement by a third-party
• Serve as a prima facie evidence in an infringement suit
• Right to sell, transfer and license the design with ease

Under the Design Act, 2000 for a design to be registered and protected under the Act, the following are essential requirements that need to be fulfilled:

• A design should be Original and new design. This means that it should not have been used or published previously in any country before the date of application of registration.
• A design should be significantly distinguishable from known designs or a combination of known designs
• A design should not comprise or contain scandalous or obscene matter
• A design should not be a mere mechanical contrivance
• A design should be applied to an article and should appeal to the eye
• A design should not be contrary to public order or morality

• Any person or the legal representative or the assignee can apply separately or jointly for the registration
• The term “person” includes firm, partnership, small entity, and a body corporate.
• In the case of an NRI, his agent or legal representative need to apply for Design Registration

• A certified copy of the original or certified copies of extracts from the disclaimer
• Affidavits
• Declaration
• Other public documents can be made available on payment of a fee.

The affidavit should be in paragraph form and should contain a declaration of truth and verifiability. However, the controller may regulate the cost involved in design registration according to the fourth schedule.

Design registration is valid for a period of 10 years and can be extended for a further term of 5 years with the payment of the necessary fees. The design will lapse if the extension is not done in time, but can be restored in the following manner:

• The application for design registration must be filed with Form-1
• In the case where the design is two-dimensional, two copies of the design are to be submitted.
• In the case where the design is three-dimensional, two copies of the design from the viewpoint of the front, back, top, bottom, and the two sides must be submitted.
• Further, the applicant must also highlight the unique features of the design that sets it apart from any other existing designs.
• (If the application is to register the design in more than one class, each class of registration must have a separate application.)
• Statement of disclaimer or novelty must be attached to each representation with respect to mechanical processes, trademark, numbers, letters, etc. it should also be endorsed and duly signed and dated on each representation by the applicant or the authorized person on behalf of the applicant.

Under the provisions of Section 10 of the Design Act, 2000, registration can be canceled if:

• The design is unoriginal and if similar designs already exist
• The design has already been registered in India
• The design has already been published in another country prior to the date of registration
• Does not comply with the characteristics of a design as mentioned under the Design Act.

Patent registration can be obtained in India for an invention. A patent is a right granted to an individual or enterprise by the government that disallows others from making, using, selling, or importing the patented product or process without the patent holder’s approval or consent

Provisional Application – A provisional application, also known as a temporary application, is filed when an invention is still in the works and has not yet been finished. Any other relevant inventions will not be recognised as prior art to the inventor’s application if a patent is filed early. When an invention requires more time to develop, this form of patent application is filed.

Ordinary or Non-Provisional Application – An ordinary or non-provisional application does not have any priority to claim or if the application is not filed in pursuance of any preceding convention application. A complete specification can be submitted via:

Direct Filing – Wherein complete specification is initially filed with the Indian Patent Office without filing any corresponding provisional specification.

Subsequent Filing – Wherein complete specification is filed after the filing of the corresponding provisional specification and claiming priority from the filed provisional specification.

Convention Application – The convention application is filed for claiming a priority date based on the same or similar application filed in any of the convention countries.
To avail a status of the convention, an applicant must apply to the Indian Patent Office within a year from the date of the initial filing of a similar application in the convention country.
To re-iterate in simpler terms, a convention application entitles the applicant to claim priority in all the convention countries.

PCT International Application – PCT international application does not result in an international patent grant, it open the way for a shortened patent application process in multiple nations at once.
It is governed by the Patent Corporation Treaty, which can be validated in up to 142 nations. By filing this application, an innovation will be protected from being copied in these nations.

PCT National Application – If the applicant discovers an innovation, or a modest modification of an invention, that has already been applied for or patented by the applicant, he must file this application. If the invention does not need a significant inventive step, a PCT National application can be filed.

Divisional Application – If an application claims more than one invention, the applicant may choose to partition it and submit two or more applications. These applications have a priority date that is comparable to the parent application.

According to the Patent Act, an invention must be a new product or technique that incorporates an inventive step and can be used in the industry in order to be patentable. An invention must be technical and meet the following requirements in order to be patentable.

Novelty – The matter disclosed in the specification is not published in India or elsewhere before filing the patent application in India.

Inventive Step – The invention is not apparent to a person skilled in the art in light of the prior publication/ knowledge/ document.

Industrial Applicability – Invention should possess utility so that it can be made or used in the industry.

A patent registration application for an invention can be made by any of the following people either alone or jointly with any other person:

• The true and first inventor.
• True and first inventor’s assignee.
• The representative of the deceased true and first inventor his / her assignee.
• According to the Patent Act, a “person ” is any natural person, company, or association or body of individuals or government body, whether incorporated or not.
• In the case of a proprietorship firm, the application should be made in the proprietors’ name.
• In partnership firms, the names of all personally responsible partners must be included in the patent application.
• An assignee can also be a natural person or other than a legal person such as a registered company, an LLP, Section 8 Company, an educational institute, or government.
• The applicant is required to disclose the name, address, and nationality of the true and first inventor.

• Patent application in Form-1.
• Proof of right to file application from the inventor. The proof of right can either be an endorsement at the end of the application or a separate agreement attached with the patent application.
• Proof of right to file application from the inventor. The proof of right can either be an endorsement at the end of the application or a separate agreement attached with the patent application.
• Complete specification in Form-2 within 12 months of filing of provisional specification.
• Statement and undertaking under Section 8 in Form- 3, if applicable. Form 3 can be filed along with the application or within 6 months from the date of application.
• Declaration as to inventorship in Form 5 for applications with complete specification or a convention application or a PCT application designating India. Form-5 or Declaration as to inventorship can be filed within one month from the date of filing of application, if a request is made to the Controller in Form-4.
• Power of authority in Form-26, if patent application is being filed by a Patent Agent. In case a general power of authority, then a self attested copy of the same can be filed by the Patent Agent or Patent Attorney.
• Priority document must be filed in the following cases:
• Convention Application (under Paris Convention).
• PCT National Phase Application wherein requirements of Rule 17.1(a or b) of has not been fulfilled.
• Note: Priority document must be filed along with the application or before the expiry of eighteen months from the date of priority, to enable early publication of the application.
• If the Application pertains to a biological material obtained from India, the applicant is required to submit the permission from the National Biodiversity Authority any time before the grant of the patent. However, it is sufficient if the permission from the National Biodiversity Authority is submitted before the grant of the patent.
• The Application form should also indicate clearly the source of geographical origin of any biological material used in the specification.
• All patent applications must bear the signature of the applicant or authorized person or Patent Attorney along with name and date.
• Provisional or complete specification must be signed by the agent/applicant with date on the last page of the specification. The drawing sheets attached should also contain the signature of an applicant or his agent in the right hand bottom corner.

Patent Search: You must verify that your invention idea is unique in order to file a successful patent application. A patent search will confirm this, and the client will be able to avoid time-consuming procedures.

Patent Application Filing: Patent Filing is considered to be the most crucial aspect. The whole process specification is a specialised task that requires expert guidance to complete successfully.
It is wise to get professional assistance while drafting a patent application. It is recommended to file a provisional patent application if the individual is still in the initial stages of research and development.

Preparing Patentability Report: Patent professionals or agents will conduct comprehensive study and provide a patentability report. As a result, the applicant must include all of the required documentation with the patent application.

Publication of Patent Application: Within 18 months, the application is published in the patent journal. A request for an early patent filing can be filed along with the required expenses.
Every patent application filed in India is kept confidential until it is formally published in the Patent Journal by the Indian Patent Office. The publication of filed patent applications occurs automatically after 18 months from the date of filing, and no request is required.

Patent Examination: There would be a formal submission of a request for patent examination within 48 months of the patent’s first filing. If the applicant fails to file within the specified time, the patent office will treat the application as withdrawn. After that, the examiner performs a thorough investigation and issues the first examination report, known as patent prosecution.

Patent Objections: Patent applications also receive objections, so it is mandatory to analyse the patent examination report and draft a proper response to the objections.

Grant of Patent: Once all the patentability requirements are met, the grant patent’s notification will be published in the Patent Journal.

Here are the benefits of filing a patent registration in India:

• A patent is a form of encouragement for innovations and inventions. Once the applicant is granted the patent, they become the owner of the invention or the idea.
• Patent registration is essential for a business as the patent restricts the competitors from copying, selling, or importing the intellectual property without permission. This way, the patent holder can protect his patent rights in support of the existing laws.
• Patents can be sold as well as licensed like other forms of property.
• The inventor can also transfer the patent ownership.
• A patented product improves the brand perception and potentially enables the business to charge a premium.
• With exclusive patent rights, the patent owner controls the use of the invention for twenty years and longer.
• International Patent Protection Scheme, reimbursement of upto Rs.15 lakhs or 50% of total expense incurred for MSME international patent filing is provided by the Government.