Trademarks for Services Finally Registrable in India

09/26/2003

Four years after India passed legislation to enable companies to protect service marks, on September 15, 2003, the new law finally went into effect.

India’s Trade Marks Act of 1999 was passed by its Parliament to fix a gap in India’s trademark law that only provided protection for marks used to sell goods, but not for services.  Businesses providing technology, outsourcing, consulting, and other services in India have been eagerly awaiting its enactment to prevent their company names from being infringed.  Until now, companies simply could not secure trademark protection for the services they were providing in India – rather, they were forced to seek trademark registrations for peripheral goods offered with their services, but which registrations offered only limited protection.

Although registration of a trademark has never been mandatory in India because it is a “first-to-use” jurisdiction (meaning that the first party to use a mark has senior rights, even if another party subsequently registers the mark), registration has always been advisable to stop infringers as it constitutes prima facie evidence of ownership and validity under India’s laws.  Registration of marks in India has become even more appealing because of other key changes mandated by the “new” Trade Marks Act:

  • The scope of a trademark has been expanded – in addition to words and graphical elements being capable of identifying the source of goods and/or services, the shape of goods, packaging, and the combination of colors can now all function as trademarks.

  • One single application can now cover goods and services that fall into several International Classes.

  • The term of registration has increased from 7 years to 10 years.

  • Statutory provisions have been added regarding the protection and enforcement of “well-known marks.”

  • The definition of infringement has been expanded to incorporate a “deceptively similar” standard, instead of one requiring the infringing mark to be “identical.”

    These amendments to India’s trademark laws demonstrate India’s goal of fulfilling its obligations set forth in the 1994 Trade-Related Intellectual Property Rights (TRIPs) agreement, and provides an effective way for enhancing your company’s trademark rights in India.

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