Category Archives: Intellectual Property

“MAKE IN INDIA” AS A TRADEMARK

Recently, Secretary of Department of Industrial Policy and Promotion (DIPP) of the Ministry of Commerce and Industry has filed a Trademark Application for the logo “Make in India.”  The Trademark Registry has given an application number : 2829230 for the said application.  The application is filed in class 9, 16, 18, 25, 28, 35, 38, 41 and 42 of the Trademark classes.  The application is filed for the “Make in India” Logo (The Lion Image).

This application by the Secretary of Department of Industrial Policy and Promotion, prompted me to relook some conceptual aspects of Trademark.  Essentially a trademark is something that relates a good or services with its manufacturer or service provider as the case may be.

“A trademark is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise. Its origin dates back to ancient times, when craftsmen reproduced their signatures, or “marks” on their artistic or utilitarian products. Over the years these marks evolved into today’s system of trademark registration and protection. The system helps consumers identify and purchase a product or service because its nature and quality, indicated by its unique trademark, meets their needs.” (http://www.wipo.int/trademarks/en/trademarks.html)

A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to the select goods or services. Actual or proposed trade in goods in goods or services is a requirement for claiming ownership in a trademark and non use is a ground for its revocation. Keeping this in background can  we call a State Department as a trader or a manufacturer or service provider.  DIPP is not dealing with any goods or services.  Let me elaborate on all these in detail.

The above referred Trademark application for “make in India” is filed for the following goods and services.

  • [CLASS : 9]  APPARATUS AND INSTRUMENTS FOR RECORDING, TRANSMISSION OR REPRODUCTION OF SOUND OR IMAGES; MAGNETIC DATA CARRIERS, RECORDING DISCS; COMPACT DISCS, DVD AND OTHER DIGITAL RECORDING MEDIA; COMPUTER SOFTWARE
  • [CLASS : 16]  PAPER AND GOODS MADE FROM THESE MATERIALS (NOT INCLUDED IN OTHER CLASSES) ; PHOTOGRAPHS; PRINTED MATTER ; STATIONERY; OFFICE REQUISITES (EXCEPT FURNITURE); INSTRUCTIONAL AND TEACHING MATERIAL (EXCEPT APPARATUS); PLASTIC MATERIALS FOR PACKAGING (NOT INCLUDED IN OTHER CLASSES); PRINTING BLOCKS; PRINTERS’ TYPE.
  • [CLASS : 18]  LEATHER AND IMITATIONS OF LEATHER, AND GOODS MADE OF THESE MATERIALS AND NOT INCLUDED IN OTHER CLASSES; TRAVELLING BAGS; UMBRELLAS AND PARASOLS.
  • [CLASS : 25] CLOTHING; FOOTWEAR; HEADGEAR
  • [CLASS : 28] GAMES AND PLAYTHINGS; GYMNASTIC AND SPORTING ARTICLES NOT INCLUDED IN OTHER CLASSES.
  • CLASS : 35] SERVICES PERTAINING TO ADVERTISING , BUSINESS MANAGEMENT, BUSINESS ADMINISTRATION AND OFFICE FUNCTIONS WITH THE OBJECT TO HELP IN THE WORKING OR MANAGEMENT OF A COMMERCIAL UNDERTAKING AND MANAGEMENT OF BUSINESS AFFAIRS; ADVERTISEMENT UNDERTAKING COMMUNICATIONS TO THE PUBLIC, DECLARATIONS OR ANNOUNCEMENTS BY ALL MEANS OF DIFFUSION AND CONCERNING ALL KINDS OF GOODS OR SERVICES INCLUDING BANK LOANS; SERVICES RELATED TO REGISTRATION, TRANSCRIPTION, COMPOSITION, COMPILATION OR COMPILATION OF MATHEMATICAL OR STATISTICAL DATA; SERVICES RELATED TO DISTRIBUTION OF PROSPECTUSES, DIRECTLY OR THROUGH THE POST, OR THE DISTRIBUTION OF SAMPLES.
  • [CLASS : 38] TELECOMMUNICATIONS SERVICES BY WAY OF COMMUNICATING FROM ONE PERSON TO ANOTHER BY SENSORY MEANS.
  • [CLASS : 41] EDUCATION; PROVIDING OF TRAINING; SERVICES INTENDED TO ENTERTAIN OR TO ENGAGE ATTENTION; SERVICES FOR DEVELOPMENT OF MENTAL FACULTIES; PRESENTATION OF WORKS OF VISUAL ART OR LITERATURE TO THE PUBLIC FOR CULTURAL OR EDUCATIONAL PURPOSES.
  • [CLASS : 42] SCIENTIFIC AND TECHNOLOGICAL SERVICES AND RESEARCH AND DESIGN RELATING THERETO; INDUSTRIAL ANALYSIS AND RESEARCH SERVICES ; SERVICES INDIVIDUALLY OR COLLECTIVELY IN RELATION TO THEORETICAL AND PRACTICAL ASPECTS OF COMPLEX FIELDS OF ACTIVITIES SUCH AS EVALUATION, ESTIMATES RESEARCH AND REPORTS IN SCIENTIFIC AND TECHNOLOGICAL FIELDS.

It is very clear from the role and procedure of DIPP that DIPP is not a manufacturer, or trader of any goods or services. Its role should lie in governance, regulations, policy making and implementation.  In such case how, could a department own a tademark?

Goods and Services are defined in the Trademark Act.  Goods means anything which is the subject of trade or manufacture, and Service means service of any description which is made 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.  It is very clear that DIPP would not be either doing a trade or manufacture or doing any service mentioned in the definition of services.  Section 18 of the Trademark Act makes it very clear that only a person who claims to be the proprietor of the Trademark used or proposed to be used by him can apply for the trademark.  Whether DIPP will be considered as a trader or manufacturer  of paper goods, magnetic record carrier, or record disks, leather and imitation of leather, clothing and footwear, games and playthings for which they have made trademark application.  Similarly, whether DIPP shall be doing advertising services, telecommunication services, education services or scientific and technical services for which the application is made.  DIPP is neither a trader, manufacturer or service provider. Thus a trademark application by DIPP in strict sense of law is bad.

Yes, make in India as brand has achieved tremendous public attention. And  use of this brand, image etc. should be regulated. However, making these emblems and names as trademark is against the  spirit of law. My intent is not to say that Make in India is not a brand having commercial value.  Make in India is one of the successfully launched initiative of the Government and the logo designed for the said program has become immensely popular and has very high commercial value and it is also true that Department shall take appropriate steps to protect the value of the said commercially viable symbol.  However, filing a trademark application may not be the right step to protect that important government program and its connected symbols. Government is neither a trader, manufacturer, or service provider to qualify for making a trademark application.  Instead of filing trademark applications, government should have used the provisions of the Emblems and Names (Prevention of Improper Use) Act, 1950 which provides protection for all national emblems.  Government should have declared this as a national emblem and should have regulated its use rather than assuming the role of a trader, manufacturer, or service provider.

“Make in India” is a national program of the Union of India. All intellectual property generated, created, belongs to the Union of India. As per Article 299 of the constitution of India all assurances of property of the union of India shall be on behalf of President of India.   Such being the law, whether a Secretary to the Ministry can own property  including intellectual property on behalf of the ministry or on behalf of the Union of India ? In my view, it may not be legally permissible for a Secretary of a Department to Own any property including Intellectual Property, it should belong to the Union of India and is represented by the President of India.

 

INTERNATIONAL TRADEMARK REGISTRATION FROM INDIA : STEP BY STEP PROCESS

Till recently for Indian companies to get trademark registered   in other countries, they  had to apply in each country separately. For this, they had to engage  attorneys in  each country, pay fees in each country  and   follow documentation requirements  specfic to each country.  It was time consuming and costly. Maintaining the registration thereafter was also difficult; as renewals in each country will be at different point of time. After India joining Madrid Protocol, now all these procedural hassles are removed to a great extent.  Now we can apply for international trademark registration through Indian trademark office.

 In order to apply for an International trademark the applicant or the agent ( attorney) should have a digital signature. The digital signature should be registered with the trademarks registry website http://www.ipindia.nic.in.  While doing so each applicant or agent (attorney) has to obtain a login ID and password. Before filing an international trademark application the applicant should have an Indian trademark application  or a trademark registration in India. Based on the Paris convention, if an applicant flies an international application within six months from the date of filing of the Indian trademark application, said international application will be considered as filed  on the Indian trademark application filing date.

Before filing an international trademark application, it would be appropriate for you to decide whether your logo or trade name, caption, shape of packaging or other trade symbols connected with your product or services are eligible for registration.  To get the trademark registered the mark should be distinctive and distinguishable from other trademarks. For this you need to do a search in all the relevant trademark registry databases to identify other similar or deceptive trademarks. To get registration mark should be a unique trade symbol that connect you with your products  and services.  While registering a trademark you should also consider, whether you should apply for colour images or for the black and white images of your trademark. A trademark in colour gives protection to those specific colours, whereas a black and white application covers all colours.

If you are engaging an attorney to file the trademark for you, you need to provide power of attorney in a prescribed format. The trademark law has classified various goods and services in to 45 classes. This is based on the international treaty called NICE agreement. You need to identify the appropriate classes relevant to the products and services offered by you. In some countries use of the trademark in that country is a prerequisite for registration.  But in most of the countries intent to use is sufficient. Once all these aspects are addressed then log on to http://www.ipindia.nic.in  and select the sub section” comprehensive e Filing services”  and login using your ID. International application should be filed in a prescribe format (form MM2E). Once the application filled appropriately,  you need to file the application online.  The Indian trademarks registry will charge 2000/- as application fee. While making this international application you need to select the countries  where you wish to get the trademark registered. Once all formal requirements are met, Indian trademarks registry will forward the application to World Intellectual Property Organization (WIPO).  WIPO will issue a demand notice asking the applicant to pay the international filing fee. International filing fee is in Swiss frank (653/- where no reproduction of the mark is in color, Swiss franc 903/-where any reproduction of the mark is in color and  100/- as Complementary fee for the designation of each designated Contracting State). International bureau of WIPO thereafter forwards the international application to the concerned countries where you opted for registration. In addition to the international filing fee you need to pay the national trademark filing fee of each country where you want the registration. The current trademark fee  of each country is as below.

Country                                                                                Amount in Swiss francs

Armenia

221
22

for one class
for each additional class
Australia

407

for each class of goods or services
Bahrain

274
274

for one class
for each additional class
where the mark is a collective mark or a certification mark:

297
297

for one class
for each additional class
Belarus

600
50

for three classes
for each additional class
Benelux

211
21

for three classes
for each additional class
where the mark is a collective mark:

301
21

for three classes
for each additional class
Bonaire, Saint Eustatius and Saba

195
20

for three classes
for each additional class
where the mark is a collective mark:

279
20

for three classes
for each additional class
Bulgaria

376
25

for three classes
for each additional class
where the mark is a collective mark or a certification mark:

683
62

for three classes
for each additional class
China

249
125

for one class
for each additional class
where the mark is a collective mark:

747
374

for one class
for each additional class
Colombia

387
193

for one class
for each additional class
where the mark is a collective mark or a certification mark:

516
258

for one class
for each additional class
Cuba First Part:

274
91

for three classes
for each additional class
where the mark is a collective mark:

320
91

for three classes
for each additional class
Second Part:

82

independent of the number of classes
where the mark is a collective mark:

82

independent of the number of classes
Curaçao

272
28

for three classes
for each additional class
where the mark is a collective mark:

540
55

for three classes
for each additional class
Denmark

419
107

for three classes
for each additional class
Estonia

176
56

for one class
for each additional class
where the mark is a collective mark:

240
56

for one class
for each additional class
European Union

1111
192

for three classes
for each additional class
where the mark is a collective mark:

2070
383

for three classes
for each additional class
Finland

279
100

for three classes
for each additional class
where the mark is a collective mark:

378
100

for three classes
for each additional class
Georgia

314
115

for one class
for each additional class
Ghana First Part:

129
129

for one class
for each additional class
Second Part:

86
86

for one class
for each additional class
Greece

133
24

for one class
for each additional class until the tenth class
where the mark is a collective mark:

663
120

for one class
for each additional class until the tenth class
Iceland

180
41

for one class
for each additional class
where the mark is a collective mark:

180
41

for one class
for each additional class
India

61

for each class of goods or services
where the mark is a collective mark or a certification mark:

175

for each class of goods or services
Ireland

325
93

for one class
for each additional class
Israel

386
290

for one class
for each additional class
Italy

121
41

for one class
for each additional class
where the mark is a collective mark:

403

independent of the number of classes
Japan First Part:

114
87

for one class
for each additional class
Second Part:

380

for each class of goods or services
Kyrgyzstan

340
160

for one class
for each additional class
Mexico

193

for each class of goods or services
New Zealand

115

for each class of goods or services
Norway

345
107

for three classes
for each additional class
where the mark is a collective mark:

345
107

for three classes
for each additional class
Oman

484
484

for one class
for each additional class
where the mark is a collective mark or a certification mark:

1211
1211

for one class
for each additional class
Philippines

107

for each class of goods or services
Republic of Korea

233

for each class of goods or services
Republic of Moldova

307
64

for one class
for each additional class
where the mark is a collective mark:

370
64

for one class
for each additional class
San Marino

178
47

for three classes
for each additional class
where the mark is a collective mark:

320
83

for three classes
for each additional class
Singapore

272

for each class of goods or services
Sweden

322
126

for one class
for each additional class
Switzerland

350
50

for three classes
for each additional class
Syrian Arab Republic

116

for each class of goods or services
Tajikistan

420
16

for one class
for each additional class
Tunisia

155
20

for one class
for each additional class
Turkey

248
49

for one class
for each additional class
Turkmenistan

178
90

for one class
for each additional class
Ukraine

429
86

for three classes
for each additional class
United Kingdom

262
73

for one class
for each additional class
United States of America

301
301

for one class
for each additional class
Uzbekistan

1028
103

for one class
for each additional class
where the mark is a collective mark:

1543
154

for one class
for each additional class
Viet Nam

101
84

for one class
for each additional class

The new mechanism will provide substantial savings in terms of money and time. The management of your trademarks becomes easier as you can renew the trademark registration in all the countries  in a similar manner by filing a single request to WIPO.

By Rajesh Vellakkat