The 1999 law on trade marks in India was designed to be compatible with the country's obligations as a member of the World Trade Organisation. How is the new law settling in?

Although the new law was passed in 1999, it only came into force on 15 September 2003.

In general, the experience of registering trade marks and service marks in India since 2003 has been positive. As a firm, we have assisted Yahoo! in successfully obtaining registration of its ‘Yahoo yodel’ sound mark in India. We have also assisted in the successful registration of the Zippo cigarette lighter’s 3D “shape mark”. The Louis Vuitton “Epi leather” texture trade mark is also a good example of the positive highlights of the 1999 law. A registered “smell mark” may soon be the next step.

If an international company wishes to register its trade marks in India, what is best way to go about it?

Although there are five separate Trade Mark Offices in Mumbai, Delhi, Chennai, Kolkatta and Ahmedabad to facilitate trade mark filing, the country operates a single trade mark register for all trade marks. This makes it easy for companies to check for the existence of similar registered trade marks before making a new application. You can normally obtain a comprehensive report on whether a trade mark is available in a period of 5 to15 days.

Although there are always problems with use of unregistered trade marks and trade names, the existence of the central trade mark register means that 70–80 per cent of all trade mark conflicts can be identified quickly. As a rule, we advise companies that they only need to carry out further “market searches” into marks – registered or unregistered – if they are close to the proposed mark and mentioned in the search results of the trade mark register.

India is a multilingual country. Are there any language complications relating the use of trade marks in India?

No. All trade mark filings in India are in English, so companies do not have to carry out additional searches in any other language. In addition, around 80 per cent of all court proceedings relating to trade mark infringements begin at the High Court level, where proceedings are conducted in English.

Practically, how easy is it for a company to bring an action for trade mark enforcement in India?

Procedurally it is not difficult to bring an action for trade mark enforcement in India, once the court papers have been properly executed and relevant evidence provided. India has a good record of IP enforcement, especially since the 1999 Act came into force in 2003. Infringement proceedings can be brought not only for cases of straightforward copying, but also against use by another of a trade mark that takes unfair advantage of a well known brand. Thus it is possible to bring infringement proceedings against a manufacturer of goods that are unrelated to the goods for which the trade mark owner has a registration.

The new law is also more convenient for a plaintiff in terms of choice of venue for a trade mark infringement proceeding. In the case of passing off of an unregistered trade mark, a plaintiff must continue to file in the court within whose territorial jurisdiction the cause of action arises, or where the defendant resides. This may be inconvenient for the plaintiff, logistically. However, the new Act allows a registered trade mark owner to file an infringement action in the jurisdiction of the court where they – rather than where the defendant – do business. At the same time, many courts are willing to consider the principles of “forum non conveniens” [inappropriate forum], when deciding which jurisdiction the case should be heard in.

How quickly can trade mark rights can be enforced?

In a straightforward case of infringement, an injunction can be obtained within 24 hours, and settled quickly. As all practitioners will know, the ability to obtain an injunction will depend on whether the defendant challenges the plaintiff’s rights or the scope of its rights in a trade mark. Contested cases can take up to four years – or more – depending on the court where the action is filed.

Tactically, is it ever worth asking the Indian government authorities to get involved in trade mark enforcement?

Generally, we advise our clients to use the civil, rather than the criminal law, option of enforcement. In civil cases, court-appointed officers have adequate search and seizure powers, which are every bit as good as those which would be used in criminal proceedings. Civil law proceedings also give the plaintiff the right to claim damages, and obtain a permanent injunction.

By contrast, criminal proceedings may be effective for deterrence purposes, but the defendant has less opportunity to settle the matter voluntarily. This is because it is the State and not the individual parties to the dispute who decides how the matter is run and concluded.

The criminal option may also take longer than civil law proceedings, with a possibility that news of the investigation will leak out before all the evidence can be gathered. In a criminal case, the trade mark owner must refer the matter to the police – who must consult with the Trade Mark Registrar before they will agree to conduct a raid. It is normally much easier and quicker for the trade mark owner to obtain an injunction in a civil law suit.