Is Indian trademark valid worldwide?
In India, a trademark is defined under the Trademarks Act, 1999. According to Section 2(zb) of the Act, a trademark is defined as:
“A mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.”
Let’s break down this definition and explore its key components:
A trademark must be capable of being represented graphically. This means that the mark should be visually perceptible and can be depicted in a clear and specific manner.
It can include words, logos, symbols, numbers, or any combination thereof that can be presented in a tangible or visual form.
Distinguishing Goods or Services:
A trademark should be capable of distinguishing the goods or services of one person from those of others. It serves as a source identifier, allowing consumers to recognize and differentiate between products or services offered by different entities.
The distinctive nature of the mark is essential to prevent confusion among consumers and protect the rights of the trademark owner.
The definition of a trademark in India is broad and includes certain elements such as the shape of goods, their packaging, and combination of colours. This means that in addition to traditional trademarks consisting of words or logos, unconventional marks that encompass these elements can also be registered.
It’s important to note that to be eligible for trademark registration, the mark must meet certain criteria.
These criteria are outlined in Section 9 and Section 11 of the Trademarks Act, 1999, and include:
The mark should be capable of distinguishing the goods or services of one person from those of others. It should not be generic, descriptive, or commonly used in the industry. The mark should have inherent distinctiveness or have acquired distinctiveness through use over time.
Not Deceptive or Offensive:
The mark should not be deceptive or likely to deceive the public regarding the nature, quality, or origin of the goods or services. It should not be scandalous, obscene, or offensive to any section of society.
Not Prohibited Marks:
Certain marks are prohibited from registration, such as marks that are contrary to law, morality, or public order. This includes marks that are likely to hurt religious sentiments, contain national emblems or flags, or are identical or similar to well-known marks.
Not Descriptive or Generic:
Marks that describe the nature, quality, or characteristics of the goods or services, or are commonly used terms in the industry, are generally not registrable unless they have acquired distinctiveness through use.
Trademark registration in India provides legal protection and exclusive rights to the owner, allowing them to prevent others from using similar or identical marks in connection with similar goods or services.
Is Trademark registered in India valid?
No, an Indian trademark registration is not automatically valid worldwide. Trademark rights are territorial in nature, which means that they are generally enforceable only within the jurisdiction where the trademark is registered.
Therefore, an Indian trademark registration provides protection and exclusivity within the borders of India. To obtain trademark protection in other countries, you must seek registration in each individual country or through international mechanisms.
However, there are certain international agreements and conventions that facilitate trademark protection across multiple jurisdictions. Let’s explore these mechanisms and options for extending the validity of an Indian trademark worldwide:
India is a member of the Madrid Protocol, which is administered by the World Intellectual Property Organization (WIPO).
The Madrid System provides a convenient and cost-effective way for trademark owners to seek protection in multiple countries by filing a single international application.
Through the Madrid System, an Indian trademark owner can designate countries that are also members of the Madrid Protocol and seek trademark registration in those countries.
The application is filed with the Indian Trademark Registry as the office of origin, and WIPO forwards the application to the designated countries for examination and registration.
To obtain trademark protection in specific countries where you seek to do business or where you anticipate potential infringement, you can file national trademark applications in those countries.
Each country has its own trademark registration process and requirements, and you will need to engage local counsel or agents to assist you with the application process.
Filing national applications allows you to secure trademark rights and enforce them within the jurisdiction of each country.
Regional Trademark Systems:
Some regions have established regional trademark systems that provide a unified trademark registration process and protection across multiple countries within that region.
For example, the African Intellectual Property Organization (OAPI) covers several French-speaking African countries, and the African Regional Intellectual Property Organization (ARIPO) covers several English-speaking African countries.
By filing a single application with these regional trademark systems, you can obtain trademark protection in multiple member countries.
In certain cases, trademarks that are recognized as “well-known” or “famous” may enjoy a broader scope of protection. Well-known trademarks are those that have acquired substantial reputation and recognition beyond the borders of the country of registration.
They may receive protection against unauthorized use or infringement in countries where they are not registered, based on their reputation and the goodwill associated with the mark.
However, establishing the status of a well-known trademark requires evidence of extensive use, reputation, and recognition in the relevant jurisdictions.
It’s important to note that even with international trademark protection, you will still need to comply with the laws and regulations of each country where your trademark is registered.
This includes monitoring for any potential infringement, enforcing your rights, and renewing your registrations according to the specific requirements of each jurisdiction.
An Indian trademark registration is not automatically valid worldwide. To protect your trademark in other countries, you can utilize mechanisms such as the Madrid System, file national applications, or take advantage of regional trademark systems.
It’s crucial to understand the legal requirements and procedures of each jurisdiction and work with local counsel or agents to navigate the trademark registration process effectively.