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Client Alert - New Protection for Service Marks in India

10.01.2003

Is it time to protect your company's service marks in India? If your company is doing business or plans to do business in India, then the answer to this question may be 'yes.'

On September 15, 2003, India's new Trademark Law, formally called The Trade Marks Act, 1999, finally came into force. The new Trademark Law amends and consolidates the Trade & Merchandise Marks Act, 1958, and significantly changes Indian trademark law and practice by bringing Indian trademark law into conformity with the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights) to which India is a signatory. The new Trademark Law also bodes well for companies and individuals that seek to or are currently doing business in India and that want to protect their marks there.

One of the most important changes to India's Trademark Law is that companies may now obtain service mark registrations. Under the old Trademark Law trademark protection was only available for physical goods or commodities. However, under the new Trademark Law, trademark protection has been extended to marks used in connection with services. The new Trademark Law defines a trademark 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.' Under the new Trademark Law, a 'service' means 'any description which is available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising.' We believe that retail services would also fall within the definition of a 'service.' To protect a service mark in India, it is necessary to file a fresh trademark application.

In addition to providing protection for service marks, the new Trademark Law allows applicants to file multi-class applications, broadens the definition of what constitutes a trademark to include design marks ('the shape of goods, their packaging and combination of colours'), creates a single register (instead of the previous register which was divided into Parts A and B), increases the length of protection from seven to ten years, and establishes an Intellectual Property Appellate Board. The new Trademark Law also allows the owner of a well-known registered mark to enforce its rights not only against infringers, but also against those who use the well-known mark for different goods and/or services than are covered by the mark and in a manner that 'takes unfair advantage of or is detrimental to, the distinctive character or repute' of the mark.

Therefore, if your company is doing or has plans to do business in India, this is an opportune time to consider protecting your company's service marks in India. As you know, we have extensive experience assisting companies and individuals in protecting their valuable intellectual property rights throughout the world, including in India. Indeed, we may have already assisted your company in registering one or more trademarks for goods in India under the old Trademark Law. Now that the new Trademark Law is in force, we can assist your company in protecting its service marks in India.

For more information on this Client Alert, please contact Joel Karni Schmidt.

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