TRADEMARK
We are specialised in developing, obtaining, commercialising, maintaining, and litigating trademarks in India and abroad. When a client is desirous to use and/or register a trademark or a company name in India, we assist them to evaluate the registrability of the mark and the potential risk in using that mark. We also provide trademark and company name search service, as well as offer professional opinion on other relevant issues.
Filing and Registering
Under the Indian Trademark Act, which uses International Class of Goods and Services* it is essential to file a trademark application for registration in proper class(es) using acceptable description of goods/services to obtain registration quickly. Due to the large volume of applications filed at the Indian Trade Mark Registry, the delay caused by an office action is substantial. Accordingly, a proper strategy in terms of filing and prosecuting trademark applications remains critical in maintaining an effective trademark portfolio. We provide competent, quality services in preparing and filing trademark applications and written responses to Examiner's preliminary objections.
Opposition/Cancellation/Rectification Actions/Appeals
Once a trademark is registered, it is deemed valid until it is canceled through a cancellation action. Upon discovery of an application for a conflicting mark, it is essential that a strong and vigorous opposition be filed to block that application from effecting registration. The opposition procedure warrants a thorough and professional assistance by experienced trademark specialist, which we offer.
In most of the cancellation actions filed in India, the ground for cancellation is based on non-use of a registered mark. Two major grounds for invalidating a trademark registration are (i) conflict with previously registered or well-known mark and (2) lack of inherent registrability. Our services are available in this area also.
Licensing/Assignments, Change of Names & Recordals
Recordal of trade mark licenses are not mandatory under Indian Trade Marks Law, unless the marks are registered in which case a Registered User Agreement can be recorded with the Registrar of Trade Marks. It is advisable to record such Registered User Agreement or otherwise, in contested proceedings the situation can become complicated as the User may not have a right to initiate legal proceedings independently. Similarly, when ownership of a trademark registration/application or a corporation changes due to assignments or merger, and when company name changes, it is critical to properly register the change at the Trademarks Registry to give proper effect to the trademark registration and/or to establish proper evidence of use in the event of a cancellation action. We actively provide services in these areas.
Combating Counterfeiting & Litigation
We assist clients in anti-counterfeit programmmes designed to identify and eliminate piracy and counterfeiting activities. Our services in this area include obtaining Search and Seize orders, conducting and defending actions for infringement of trademarks, obtaining injunctions, criminal and civil suits in close co-operation with professional litigators.
*Service Marks Registration in India
The new Trade Marks Act 1999 and Trade Marks Rules 2002 have come into force with effect from 15 September, 2003. This will make it possible to register Service Marks in India. Trademark Registry has started accepting service mark applications from September 15, 2003.