• Confused about Trademark and Design Patent

Respected Lawyers,

My question is about registering Trademark & Design Patent in India and protecting it. 

Let's say there is a product named "Royal Chair" in USA which is Trademarked and Patented in USA but not in India. 

If I apply for Trademark and Patent in India with same name and design, I think I will be granted both because nobody is going to challenge in India. 

Later, after 6-12 month, original USA company starts their operation in India with a Indian firm and that Indian firm challenges me for Trademark and Design, what will happen? 

And what would be worst case scenario in that case. 

Thanks.
Asked 1 month ago in Intellectual Property from Ahmedabad, Gujarat
The patents are valid for all over the world but the trademark may not be.
So you can apply for patent for the same product which has already a patent on favour of one company or place.
The trademark is valid for in one country. So you can apply for it in India but you can sell the same in USA since there another product of same trade mark is already there.
So apply for trade mark or patent for fresh product.
Devajyoti Barman
Advocate, Kolkata
5248 Answers
54 Consultations
4.9 on 5.0
1)if you have infringed the US company  designs in these products. the Us company will seek an injunction   restraining you  from manufacturing and marketing these products as it amounts to : (a) design infringement under Section 20 of the Designs Act; (b) copyright infringement under Section 55 of the Copyright Act  c) as you are passing off their goods as that of the USA company  by copying trade address and trade name etc. which is confusing the similar to that of the USA company  goods. Therefore passing off action in injunction is also maintainable

2) US company may sue you for  damages 
Ajay Sethi
Advocate, Mumbai
23392 Answers
1229 Consultations
5.0 on 5.0
Hi 
1) Patents and Trademarks are territorial rights. 

2) In general, the exclusive rights are only applicable in the country or region in which a patent and trademark has been filed and granted, in accordance with the law of that country or region.

3) Please be aware that India recognises the concept of the "Well-known Trademark" and the "Principle of Trans Border Reputation" (Supreme court - N. R. Dongre v. Whirlpool (1996) 5SCC 714) 

4) If the USA Company has not registered its trademark or patents in India, then you might be granted a trademark and or Patent in India subject to the USA Company not opposing your application. 

5)However the USA Company can definitely challenge your trade mark and patent at a later date on the following grounds

5 a) Worst case scenario : The USA Company may claim for 
a) Interlocutory/ interim injunction restraining you from production and sale of chairs under Brand name "Royal Chair".  
b) Damages or account of profits: Claim substantial revenues(close to 100%) earned by you as account of profits and also additionally claim damages (100%) of your income
c) Permanent injunction: Cancellation of trademark and patent. 

6) You can counter any of the legal action that might be undertaken by the USA company  by incorporating the following suggestions: 
a) On the patent front in order to protect yourself from any future claims it is recommended that you should consider small/minor modifications  
- The design patterns of the chair OR 
-  The composition of materials used in the chair  OR 
-  Process of Manufacturing/Assembling of chairs etc OR 
- Ensure Localisation of components up to 90% of your raw materials
 
b) On the Trade mark front, it is suggested to use transliteration( English to Hindi, English to marathi, English to Gujarati etc ) as an effective tool in trademark registration and register your trademark in multiple  indian languages. 

c) Under first use policy, you are entitled to certain protections. So you need to ensure that all your Procurement of raw materials,  Production processes, Marketing, Sales and Distribution are adopted to ensure that your claim for first use in india are established and can never be subject to any Infringement OR Passing of claims at a later date. 
Hope this information is useful.
Rajgopalan Sripathi
Advocate, Hyderabad
873 Answers
43 Consultations
5.0 on 5.0
1. All countries have their own intellectual property laws which are treated as valid only in that specific country unless that registration is applied and made for international copyright/ trademark. So, copyright/ trademark certificate, unless that is registered as an international copyright/trademark would not be legally valid in India. Admission of the same through an oversight would be quite a different thing, but that would still remain subject to challenge in superior courts. 

2. The worst case scenario would be an injunction from the civil court against you, to preempt which you may file a caveat.
Ashish Davessar
Advocate, Jaipur
18264 Answers
450 Consultations
5.0 on 5.0
Intellectual property (or IP) refers to creative work which can be treated as an asset or physical property. Intellectual property rights fall principally into four main areas; copyright, trademarks, design rights and patents.

Copy rights;
Trademarks;
Design rights ;
patents.
A trademark can be a name, word, slogan, design, symbol or other unique device that identifies a product or organisation.
Trademarks are registered at a national or territory level with an appointed government body and may take anywhere between 6 and 18 months to be processed.
Registering in countries such as the US, the UK, Japan, etc will protect your mark in that country.

Patents apply to industrial processes and inventions, and protect against the unauthorised implementation of the invention.
Patents are grants made by national governments that give the creator of an invention an exclusive right to use, sell or manufacture the invention. Like trademarks, patents are registered at a national or territory level with an appointed government body. Patents typically take 2 to 3 years to be granted.

This being the position, one advantage of patent protection is that a patent can protect a product irrespective of the appearance of the product, thus giving broader protection than a design registration.
But, there are strict criteria which must be met before a patent is granted, including a search and examination process. Also, certain inventions are excluded from being patented. So, while a patent gives the broadest protection, getting a patent can be a relatively long, involved, uncertain and expensive process.

Therefore it is not as easy as what you have understood the underlying laws in this regard. 
T Kalaiselvan
Advocate, Vellore
14170 Answers
128 Consultations
5.0 on 5.0

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