Expansion of “Classification of Goods and Services” proposed

In a public notice dated August 16, 2012 the Registrar of Trade Marks has proposed to publish a detailed classification of goods and services for the purpose of registration of trade marks. The proposed publication is in accordance with Section 8 of the Indian Trade Marks Act which prescribes that the Registrar may publish in the prescribed manner, an alphabetical index of classification of goods and services.

At present, India follows the international classification of goods and services (NICE classification) for registration of trade mark. Section 7 (1) of the Indian Trade Marks Act 1999, provides that the classification of goods and services has to be, as far as may be, in accordance with the International Classification of goods and services. Further, in accordance with Section 7 (2), any question arising as to the class within which any goods or services falls shall be determined by the Registrar whose decision shall be final.

Through this public notice, the Registrar desires to include the goods and services of “Indian Origin” in the classification of goods and services. Therefore, the Registrar has requested advocates, attorneys and the general public to point out those goods and services of Indian origin which are not mentioned in the current edition of the international classification of goods and services. The Registrar has also requested to suggest to him the appropriate class of such goods and services of Indian origin.

The proposal by the Registrar to add goods and services of Indian origin to the international classification is a welcome step since such goods and services of Indian origin are not mentioned in the international (NICE) classification. Also, including those goods and services in the international classification shall eliminate any confusion in identifying the correct class of such goods and services while applying for and obtaining registration of trade marks.

Simplification of process of filing of PCT National Phase Applications in India

With effect from July 6, 2012 an applicant will not be required to file multiple copies of documents while filing a PCT National Phase application in India as the Indian Patent office will access such documents electronically from International Bureau (IB). This was notified by the Controller General in a public notice dated July 2, 2012. This has become possible since the Indian Patent office has in coordination with the IB of the World Intellectual Property Organization has acquired online access to the PCT International applications and related documents available with the IB. As a result of this development, the Indian Patent office will be able to utilize their valuable resources in a more efficient manner and minimize errors occurring due to manual data entry. However, this facility will be applicable only to those PCT National Phase applications entering India which do not claim priority of any other PCT National Phase application filed previously in India.

For clarifications, the Controller General has provided the following instructions:

(i)                 For filing a PCT National Phase application in India, which does not claim priority of any PCT National Phase application filed previously in India, the contents that shall be required in Form 2 are:

(a) Title of invention, (b) applicant’s name, nationality and address (c) Preamble to the description of the invention (columns 1, 2 and 3 respectively of Form 2), and (d) the last page of claims (first page, if the claims comprise of only one page) with date and signature.

(ii)              Other details, such as description of the invention, claims and abstract of invention are not required to be mentioned in Form 2. However, if such details are mentioned in the form, the Indian Patent office will ignore such details and instead consider the contents of details provided in the PCT International applications by accessing them from IB. Similarly, the columns 7 and 8 of Form 1 (i.e., Particulars for filing divisional application and particulars for filing Patent of Addition respectively) need not be provided for while filing a PCT application. It is also clarified that the Indian Patent office does not allow an applicant to amend the specification or the related documents before he actually enters National Phase in India.

(iii)            The documents to be filed by an applicant should exactly correspond with the updated information available on the records of IB on the date of filing of a PCT National Phase application in India. Such information must have been notified/published by the IB in accordance with the PCT and the regulations made thereunder. Any request pending before the IB shall be of no consequence and should not be reflected in the documents. If any such request is reflected in the documents, the information notified/published by IB shall prevail.

(iv)            The requirement of filing complete specification and abstract on Form 2 at the time of filing of a PCT National Phase application in India is being dispensed. However, where the international application was either not filed or has not been published in English language, the applicant shall be required to file a translation of such application in English language, duly verified by the applicant or the person duly authorized by him that the contents thereof are correct and complete.

(v)              The applicants will be required to comply with all other requirements in accordance with the provisions of the Indian Patents Act, 1970 and rules framed thereunder.

 

The trade mark “VISCOF DP” is held deceptively similar to “VISCO”

The Indian Intellectual Property Appellate Board (IPAB) in their order dated June 25, 2012 held that the mark VISCOF-DP is similar to the prior mark VISCO and accordingly dismissed the appeal.

In this case, the appellant (applicant) was M/s. Tauras Laboratories Pvt. Ltd, Ahmedabad, who appealed against the order of Deputy Registrar of Trade Marks allowing the opposition and refusing an application for the mark VISCOF-DP in Class 5. The respondent (opponent), M/s. Aristo Pharmaceuticals Ltd., Mumbai was the registered proprietor of the trade mark “VISCO” and claimed use of such mark since the year 1987. 

In their judgment, the IPAB observed that the goods in respect of the marks, VISCO and VISCOF DP being medicinal products, more care has to be taken to decide the case. The IPAB further observed that the appellant’s goods are for treatment of cough whereas the respondent’s goods are for treatment of gastric acidity. This means that the ailments to cure the disease for goods of the appellant and respondent are different.  If one is taken for the other it would definitely cause bad effects upon the user (patient). The IPAB also observes that it has been held by various courts that “if by wrong pronunciation one consumes a medicine for the other then the injury is serious which cannot be compensated in terms of money”. Moreover, in an application for registration the onus is on the applicant to prove that the mark deserves to be registered. In the present case, the appellant has failed to prove the same and therefore, the registration of the trade mark VISCOF DP has to be rejected under Section 11 of the Act (Indian Trade Marks Act, 1999). Accordingly, the Board (IPAB) dismissed the appeal.

NO AMENDMENT IN “USER DATE” OF A TRADE MARK APPLICATION

The Controller General of Patents, Designs and Trade Marks, (India) issued a circular dated June 8, 2012 by virtue of which no request for amendment of a trade mark application shall be allowed which seeks substantial alteration in an application for registration of trademark. Such alteration/amendment includes substantial amendment in the trade mark, proprietor details, specification of goods/services (except deletion of some of the existing items), statement as to the use of mark shall not be permitted. The circular also mentions that request for amendment in the proprietorship of a trade mark on the basis of valid assignment or transmission; amendment in address of an applicant or in the applicant's address for service; deletion or confinement of any item in the specification of goods/services, confinement/limitation in the area of sale of goods/rendering of services may be allowed.

In this regard, attention is drawn to the proviso of Rule 41 of the Indian Trade Marks Rules, 2002. Such proviso provides that “no such amendment shall be permitted which shall have the effect of substantially altering the trade mark applied for or substitute a new specification of goods or services not included in the application as filed”. It is clear that the proviso does not indicate any prohibition for amending the “user date” of a mark in a pending application.  Until the issue of the circular, it has been a common affair to allow amendment in the user date of an application by the Trade Marks Registrar. Such amendment includes amending the user date of an application from “proposed to be used” to a “particular user date” or vice versa. It was also common to amend the existing date of “use” of a mark in a pending application.

In view of the Controller General’s circular, an applicant has to be particularly careful with respect to the user date of a trade mark while filing an application, since no amendment with respect to the user date shall now be allowed.