Monthly Archives: January 2013

Renewal Of An Expired Trademark In India And United States

Trademark law of India is passing through an interesting and developmental phase. Recently Samsung has raised the issue of international exhaustion of a trademark under Indian trademark law. Similarly, trademarks registrations in India have also increased as India is becoming a favourite destination for commercial activities world over.
Trademark registration in India is regulated by the Trademarks Act 1999 of India. A registered trademark is valid for a period of 10 years that can be renewed for another 10 years at a time. Further, international registration of trademarks under Madrid Agreement and Madrid Protocolcan also be explored by applicants. However, the Madrid Agreement and Madrid Protocol and its applicability and implementation in India are still in a flux.
There may be cases where a trademark holder fails to renew his/her/its trademark in time. Renewal of an expired trademark is the only option left in such cases. In India even if the mark has been expired, one can apply for its re-registration. If someone else applies for registration of expired trademark as per the prescribed procedure, owner of expired trademark can file objections at the registry, tribunal or appropriate forum.
In United States (US), to keep the registration alive or valid for all trademarks registrations, except for non Madrid Protocol based registrations, the registration owner must file specific documents and pay fees at regular intervals.  Failure to file these documents will result in the cancellation of his/her/its registration.

For Madrid Protocol Based Registration, after the protection is granted to the international registration and a U.S. registration issues, to keep protection in the U.S., the U.S. registration owner must file specific documents and pay fees at regular intervals. Failure to file these documents will result in the cancellation of his/her/its U.S. registration and the invalidation of protection of the international registration by the United States Patent and Trademark Office (USPTO).
Under Section 8 of the Trademark Act, 15 U.S.C. §1058, a §8 Declaration of Continued Use is required to be given by the trademark owner. The Declaration is a sworn statement, filed by the owner of a registration that the mark is in use in commerce. If the owner is claiming excusable nonuse of the mark, a §8 Declaration of Excusable Nonuse may be filed. The purpose of the §8 Declaration is to remove marks no longer in use from the register.
The USPTO will cancel any registration on either the Principal Register or the Supplemental Register if a timely §8 Declaration is not filed by the current owner of the registration during the prescribed time periods.  The USPTO has no authority to waive or extend the deadline for filing a proper §8 Declaration. Registrations finally cancelled after the expiry of permissible period due to the failure to file a §8 Declaration cannot be reinstated or revived.  A new application to pursue registration of the mark again must be filed.
Holders (owners) of registered extensions of protection to the U.S. (also called §66(a) registrations, registrations resulting from 79’ series applications, international registrations extended to the U.S.) who wish to maintain the protection granted their mark in the U.S. pursuant to the Madrid Protocol must file an affidavit or declaration of use in commerce or excusable nonuse to avoid cancellation of protection in U.S. Such affidavits are required pursuant to Section 71, 15 U.S.C. §1141k, of the Trademark Act.  The USPTO has no authority to waive or extend the deadline for filing a proper §71 Declaration.  Registrations finally cancelled after the expiry of permissible period due to the failure to file a §71 Declaration cannot be reinstated or revived.  A new application to pursue registration of the mark again must be filed.  
The holder of a registered extension of protection of an international registration to the U.S. must file an application for renewal of the international registration with the International Bureau (IB). Renewal of international registrations is governed by Article 7 of the Madrid Protocol and Rules 29 – 31 of the Common Regulations under the Madrid Agreement and Protocol.
A renewal can be filed during the six months before expiry of the period of protection or in the six months following the expiry of the current period of protection with the payment of a surcharge.
The term of an international registration is ten years, and it may be renewed for ten years upon payment of the renewal fee.
Perry4Lawhope this information would be useful to all concerned stakeholders.

USPTO Grants Apple Trademarks For Its Retail Outlets Designs And Layout

Apple has been vigorously protecting its brand and trademark around the world. In one such example, the US Patent and Trademark Office (USPTO) accepted Apple’s request last week for trademarks on the minimalist design and layout of its retail outlets.
With a booming e-commerce in India, Apple must be planning to protect its brand and trademark in India as well. Apple has already showed its displeasure for the Asian region, especially in China. In 2011, authorities in the Chinese city of Kunming stopped 22 fake Apple stores from illegally using the company’s trademarks after Apple lodged a complaint with authorities.
Since trademark is territorial in nature, Apple must also protect its interests in the Indian territory. Intellectual property rights (IPRs) in India are well known and India has a strong trademark law in the form of Trademarks Act, 1999.
Apple said in its application in May, 2010 that it was not claiming color as a feature of the mark. The mark consists of the distinctive design and layout of a retail store, it said.
Apple must be very careful while engaging in e-commerce activities in India. There are well recognised legal requirements to start an e-commerce website in India and the legal formalities required for starting e-commerce business in India. Similar regulatory requirements do exist in other countries as well.

For instance, Apple was recently fined in Beijing Court for unauthorised e-book sales. Similarly, there are many cyber laws due diligence requirements in India that companies like Apple must comply with in India in order to engage in legally sustainable e-commerce business activities.
There are many techno legal compliance requirements that e-commerce portals, including Apple, Amazon, E-Bay and others, must comply with. At Perry4Lawand Perry4Law’s Techno Legal Base (PTLB) we believe that cyber law due diligence, Internet intermediary liability and cyber due diligence for Indian companies must be kept in mind by various e-commerce websites and players.
At the end of the day managing techno legal IP a requirement is of great importance to all concerned who are eying upon India as a market.

Does Indian Trademark Law Recognise International Exhaustion Or National One?

The dispute titled Samsung Electronics Co. Ltd. & Anr. v. Kapil Wadhwa & Ors has finally reached the corridors of Indian Supreme Court. Unsatisfied with the decision of a Division Bench of Delhi High Court, Samsung has filed an appeal before the Supreme Court of India.
Briefly speaking, Samsung sued Kapil Wadhwa and others for unauthorised sale of Samsung printers imported from foreign markets into India. Furthermore, Samsung also accused Kapil Wadhwa and others for indulging in the behaviour of meta-tagging and deep hyperlinking with Samsungs website for the sale of alleged imported printers.
A single Judge of Delhi High Court held in favour of Samsung whereas a Division Bench of Delhi High Court partially overruled the decision of the single Judge. The Division Bench upheld the judgement of single Judge to the extent of injuncting Kapil Wadhwa and others from engaging in the act of meta tagging and hyperlinking.  Feeling aggrieved Samsung has now approached the Apex Court of India. The Supreme Court has issued notices to the concerned parties in this regard.
Samsung is insisting that the sales by present defendants/traders is an infringement of its Trademark, whereas local traders are claiming that they are well within their rights to sell goods legally bought abroad and imported into India. The question boils to the crucial point whether Indian Trademark law endorses international exhaustion principle or nation exhaustion criteria.
Now the Supreme Court of India would analyse this issue and the same would be settled for the larger benefits of various stakeholders. Perry4Lawwould update in this regard the moment Supreme Courts judgement would be pronounced.