Thought Leader – Trademarks- LexOrbis – Manisha Singh

In recent years India has made significant moves towards achieving a more evolved and harmonized IP environment, both for the benefit of domestic and foreign stakeholders. The results of some such initiatives have already been experienced and with more in the pipeline, Lawyer Monthly here talks to Manisha Singh, Founder Partner at LexOrbis, India’s premier IP law firm, who details the latest shifts in the Indian IP Landscape.

Are there any new movements and progressions in IP that are worth following?

With the assumption of responsibilities in 2014, the Government has taken several significant initiatives to improve Indian IP laws and systems at an international level. One of the most remarkable achievements was India adopting a National IPR Policy to drive innovation culture to create valuable IP assets and provide robust IP administrative and enforcement systems. Some of the key highlights of the national policy are as under:

• To drive Indian industries to view IPRs as a marketable financial asset, promote innovation and entrepreneurship, while protecting public interest. And to build strong and effective IPR laws, steps be taken to review existing IP laws.
• Special thrust is given to effective enforcement of IPRs, besides encouragement of IP commercialisation through various incentives.
• The government to examine accession to multilateral treaties which are in India’s interest, and become a signatory to those treaties which India has de facto implemented to enable the country to participate in decision making at international forums.
• The Department of Industrial Policy and Promotion (DIPP) under the Ministry of Commerce and Industry to act as the nodal agency for all IPR laws and issues including Copyright laws, which was hitherto administered by the Ministry of Human Resource Development.
• Indian Trademark offices to be modernised with the aim to reduce the time taken for examination. Over 100 new examiners have already been hired by the government for this purpose, and the Examination time has been reduced to eight months. The new target is bringing the time down to one month by April 2017.
• The Government to announce tax benefits to promote research and development by Indian industries for the entire IP life cycle from filing to commercialization. In December 2015, an IPR scheme was launched for technology driven start-ups with several concessions.

How do you feel India compares to other (Western) countries in regards to their IP and Trademarks laws?

In the past three decades, since India opened its economy to the world, the Indian Courts have played a very significant and proactive role in introducing some of internationally well-established legal principles to Indian IP jurisprudence. Like the US trademark laws and unlike the Europe Community trademark laws, Indian Trademarks laws follow the ‘first to use’ system. However, some early decisions of the Indian Courts have further expanded the scope of use to include ‘first use’ anywhere in the world, which resulted in a trans-border reputation of the mark in India.

To establish trans-border reputation of a mark, the Courts relied on advertisement and promotional materials, including in in-flight magazines, which were not even directed at Indian consumers. This expansion of scope is in stark contrast to the EU’s position, where the right in an unregistered mark can be enforced only by establishing goodwill amongst the actual customers, or in the US where the mark is required to be used in domestic commerce. The Indian system worked well for foreign brand owners who couldn’t do business in India due to then prevalent policy restrictions.

Furthermore, use of a mark in India, or anywhere in the world, is not a pre-requisite for seeking registration of the mark and to acquire statutory rights. A mark can be applied and registered in India on ‘proposed’ or ‘intended to be used in India’. There is no requirement of establishing use, even at the renewal stage. However, if the mark is not used in India within five years of registration, it becomes vulnerable to cancellation. In a 2008 decision of the Intellectual Property Appellate Board even that position was diluted and the Board held that a mark consisting of an invented word cannot form the subject matter of a cancellation application, especially when the party seeking cancellation has adopted a similar mark with the intention to deceive.

With technology everchanging, how have industry relations changed? Do you think changes have been positive or have hindered legal progress?

The remarkable change that we are witnessing today in India’s IP administration system was only possible with the use of new technologies and tools. We are happy that the government was open and willing to adopt and use such tools, and was even ready to innovate new tools that suit requirement. The results are that all records of IP assets are accessible with a click of mouse, all applications are filed online, all payments are made through electronic banking systems, all documents/office actions are accessible online and sent over e-mails, the responses are filed electronically, hearing notices are uploaded online, and certificate are sent over e-mails.