Experts CornerROYZZ & CO.

Supreme Court: The Court has ruled that administrative circulars issued by the Securities and Exchange Board of India (SEBI) cannot be challenged before the Securities and Appellate Tribunal (SAT).

The Supreme Court passed this judgment when it was hearing an appeal filed by SEBI against a SAT order in a case relating to National Securities Depository Ltd. (NSDL).

Background

NDSL and SEBI were at odds over an administrative circular captioned ‘review of dematerialization charges’ issued in 2005, debarring the depository from levying fees/charges on rendering service to the investors who hold Demat accounts with the depository.  The grievance of the appellant (NDSL) was that it is a company and the law permits it to make profits and distribute the dividend to its shareholders. SEBI, without any justification, interfered with its functioning, NSDL had argued.

SAT in September 2006 had ruled that the term “order” in SEBI Act is extremely wide, and can be applied in all three types of orders— administrative orders, legislative orders, and quasi-judicial orders. Thus, it ruled in favour of NSDL.

Verdict

SEBI challenged SAT’s verdict in the Supreme Court and secured a reversal. The Supreme Court, in the order passed on March 7, said that only “quasi-judicial” orders and decisions are a “subject of SAT”.

“Administrative orders such as circulars issued under the SEBI Act are obviously outside the appellate jurisdiction of the tribunal,” said the SC order.

Conclusion

The clarification and restriction to the scope of SAT will clearly bring down the number of cases before the Tribunal. One cannot approach SAT cause the same will now have jurisdiction only over orders passed by SEBI in a quasi-judicial capacity. [National Securities Depository Ltd. v. SEBI, 2017 SCC OnLine SC 256, decided on 07.03.2017]

Experts CornerIntellectual PropertyROYZZ & CO.

TRADE MARK FILING READY RECKONER – 2017 RULES

Trademark Registration is a process that takes around 1-2 years to obtain registration in a case, without any objections or oppositions. However, the time period can be longer if an opposition has been filed by a third party.

SEARCH

  • Look for classification of goods and services at the WIPO website (NICE Classification). (Rule 20).
  • In order to avoid a third party opposition, it is pertinent to conduct a ‘public search’ in the online Trade Mark Registry at http://www.ipindia.nic.in/ by providing the trademark name and class to find out if similar marks have already been registered or filed.

WHAT CANNOT BE TRADEMARKED

  • Marks which do not have a distinctive character.
  • Marks which are descriptive. Meaning which describe the goods or service in terms of the quality, quantity, shape or geographic indication.
  • Marks that have become customary in the language or region.
  • Well Known marks. Well known marks are marks which a substantial portion of the population relates to particular goods or services and the use of the mark in relation to any other goods or services would cause confusion in the minds of the people. Ex. ‘BAJAJ’, ‘BATA’, ‘BENZ’, etc.
  • Marks which are deceptive, hurt religious sentiments, Gods/Godesses, surnames, obscene.

SELECTION OF TM OFFICE

  • There are five Trade Mark Offices (TMO) distributed in accordance with Geographical Zones in India viz. New Delhi (North), Mumbai (West), Chennai (South), Kolkata (East), Ahmedabad (States of Gujarat, Rajasthan, and Union Territory of Diu Daman, Dadra & Nagar Haveli).
  • Depending on the location of your office, if any, in India or your authorized agent’s office if there are no offices in India, please select the appropriate Trademark Registrar Office.

FORMS AND FEES

TM-A

  1. For application for registration of a Trade mark other than a collective or a certificate mark. Physical filing: 5,000 (Fees for Individuals, Small Enterprise, Startup) 10,000/- (In all Other Cases)
  • E-filing: 4,500 (Fees for Individuals, Small Enterprise, Startup) 9,000 (In all Other Cases).
  1. For application from any Convention Country other than a collective or a certification mark.
  • Physical filing:  5,000 (Fees for Individuals, Small Enterprise, Startup) 10,000 (In all Other Cases)
  • E-filing: 4,500 (Fees for Individuals, Small Enterprise, Startup) 9,000 (In all Other Cases)
  1. Application for registration of trademark as series for specification of goods or services included in one or more than one classes.
  • Physical filing:  5,000 (Fees for Individuals, Small Enterprise, Startup) 10,000 (In all Other Cases)
  • E-filing: 4,500 (Fees for Individuals, Small Enterprise, Startup) 9,000 (In all Other Cases)

TM-M

  1. On application for expedited process of an application for the registration of a trademark.
  • Physical filing:  Not allowed.
  • E-filing: 20,000 (Fees for Individuals, Small Enterprise, Startup) 40,000 (In all Other Cases)
  1. On application for: Extension of time, or certified copy, or Amendment of trademark application, or inspection of document.
  • Physical filing:  1,000. E-filing: 900.

TM-O

  • On a notice opposition or application for rectification of register.
  • Physical filing:  3,000/-. E-filing: 2,000/-

TM-R

  • Application of Renewal of a Trademarks.
  • Physical filing:  10,000.
  • E-filing: 9,000.

REQUISITES OF TRADEMARK FILING

A trademark registration application must contain the following information:

  • Logo or the Trademark (in colour if the logo has been designed in any specific colour);
  • Name and address of the applicant;
  • If the applicant is a partnership firm, the names of all the partners. Also mention whether any minor is a partner;
  • If the applicant is a company, the country or state of incorporation;
  • If the mark contains or consists of non-English words, a translation of those words into English is required;
  • Address for service of communication;
  • Select Classification or Category of goods or services;
  • Date from which Trademark is proposed to be used or has been in use;
  • Description of the goods or services for which registration is required;
  • Power of attorney in the format as prescribed in Form 48, simply signed by the applicant (no legalization or notarization is required). Indian applicants should execute the same in a Rs.100 stamp paper.

TRADEMARK REGISTRATION PROCESS

Upon filling the application, the TMO will issue an official receipt with the filing date along with a reference number to the application.

The application is then formally examined, that is whether it is inherent registrable and if any similarity, including phonetically and visually with existing marks. Accordingly, an official examination report is issued indicating either “acceptance” or “objection”, as the case maybe.

  1. In the event of objection on the examination report, it is necessary to file a response within a month of receipt of such objection the failure of which will result in instant abandonment but in most cases, a show cause hearing with the examiner is poste.
  2. Pursuant to a hearing if the argument is accepted, below step3 & 4 follows.
  3. In the event the mark is accepted as it, a letter of acceptance is issued, pursuant to which the mark is advertised in the Trade Marks Journal.
  4. If there are no third-party oppositions are received within 4 months from the date of advertisement in the Trade Marks Journal, then the trademark registration certificate is issued.
  5. Once the certificate is issued, the mark needs to be renewed every 10 years.
  6. In the event of any third-party opposition, after due hearing of the applicant and consequential refusal of application, then either a review or the remedy in step 9 is available to the applicant.
  7. Instead if the application is refused, or abandoned by the examiner with reasons, then a right to appeal to the Intellectual Property Appellate Board (IPAB) shall vest with the applicant.

 

Case BriefsHigh Courts

Bombay High Court:  Providing major relief to the defendants in the case of infringement of registered trade mark and/or copyright as also passing-off, the Court held that there no similarity found upon the rival logos and also the rival logos are found to be absolutely different and/or distinct and/or dissimilar. Therefore, Plaintiff not held entitled to claim any relief on this ground.

 In the present case, the Plaintiff claimed injunctive reliefs on the basis of infringement of the Plaintiff’s registered trade marks, infringement of copyright and passing off, on the ground that the logo of the Defendant is deceptively similar to the Plaintiff’s registered trade marks consisting of a distinctive logo.

The Plaintiffs who were represented by Dr. V.V. Tulzapurkar, Senior Advocate, contended that the Plaintiff ‘s logo is a well-known trade mark within the meaning of the Trade Marks Act, 1999 therefore, the Plaintiff is entitled to the reliefs of infringement not only in respect of goods falling in Classes in which the Plaintiff’s logo is registered, but also in respect of goods falling in other classes in respect of which the Defendant is using and/or is intending to use its impugned logo. On the other side, the Defendants who were represented by Mr. Rashmin Khandekar (Solomon & Roy) contended that for considering the question of infringement, it is necessary to consider whether the impugned logo of the Defendant is deceptively similar to the Plaintiff’s logo. The impugned logo of Defendant symbolizes water i.e. the industry in which the Defendant operates, the said being treatment of waste-water, and the same is completely different in comparison to the Plaintiff’s logo. The idea conveyed by the Defendant’s logo is the anti-thesis of the idea conveyed by the logo of the Plaintiff. In this case, even the idea conveyed by the rival logos is ex-facie entirely distinct and/or different. The Defendants further contended that Plaintiff is seeking a monopoly on a curve of virtually every shape and/or size and/or dimension and/or design and/or artistic work, which is clearly impermissible. The defendants while relying on Khoday Distilleries Ltd. vs. Scotch Whisky Association (2008) 10 SCC 723 said that it is trite law that to decide the question of deceptive similarity, the nature and kind of customer who is likely to buy, as also other surrounding circumstances, play an important factor.

After perusal of the arguments advanced by Plaintiff and Defendant, the Court in agreement with the Defendant’s submission said that such convoluted mode of comparison by the Plaintiff’s cannot be permitted. No average man with imperfect recollection is going to look at the ‘rotated’ mark of the Plaintiff and be led to believe that the inverted or reversed or mirror image of such ‘rotated’ logo is deceptively similar to the Defendant’s logo, so as to cause confusion. The Court further said that this is apparent from the naked eye itself that there is no question of any confusion and/or deception being caused on account of the use of the rival logos. In view thereof, the balance of convenience is in fact in favour of the Defendant and against the Plaintiff. [Reliance Industries Ltd v. Concord Enviro Systems Pvt. Ltd., 2016 SCC OnLine Bom 4557, decided on 30th June, 2016]