It is advisable to conduct a Trade mark search prior to filing of an application for registration of a Trade mark.
Advantages of conducting a preliminary search:
- It will determine the existence of objectionable marks already on the register. Such objectionable marks are:
- Identical marks;
- Visually/phonetically/conceptually similar marks which are confusingly or deceptively similar to the proposed mark
- It may eliminate the possibility of following objections/actions against the mark in future:
- Objections from the Registry;
- Opposition proceedings
- Action for misuse by third party;
- It will determine the strength of the mark in the relevant market and hence enable the improvisation of the mark before filing the same.
- It enables strategizing the filing of a proposed Trade mark in order to increase the chances of successful use/registration.
Trade mark searches in India can be conducted for word mark, numerals, labels and device marks.
Trade mark Search can be classified into the following categories:
- Word Search: Word mark search is conducted to determine similar or deceptively similar prior marks. Word mark search can be conducted in respect of desired specification of goods and services falling under classes 1 to 45 as per the Nice Classification.
Eg. If an availability search for the Trade mark “JOJO Coffee” in respect of a coffee shop/café is to be conducted, it would be searched in the relevant classes and not just Class 32.
- Device Search: Device mark or a figurative Trade mark includes marks such as stylized letter, numeral, shapes, plants, celestial bodies, living creatures, etc. A device mark search can be conducted in respect of desired specification of goods or services with the help of Vienna Codes for different figures provided by the Vienna Codification.
Eg a device of a playing card may be codified with the following Vienna codes
Packs of cards, playing cards
Four suits together (heart, spade, diamond, club)
Letters or numerals forming geometrical figures, written or typographical matter in perspective
Numerals presenting a special form of writing
Indian Trade Marks Registry provides free online Trade mark search and the same can be conducted from the Registry's website on the link given below:-
Apart from a preliminary search, a detailed Trade mark search with opinion is always recommended as apart from reporting identical prior marks, it will also determine if the mark is registrable as per the law prevailing in India, if it has any negative connotation, opinion on overcoming objectionable marks and any other relevant advice pertaining to the mark.
International Non Proprietary Names (INN) Searches in India
The INN Program assigns nonproprietary names to pharmaceutical substances so that each substance is recognized by a unique name. The INN or generic names may be used for marketing purposes by any manufacturer of a particular medicine.
Need for INNs
The INNs are needed for:
- clear identification, safe prescription and dispensing of medicines,
- for communication and exchange of information among health professionals;
INNs can be used freely because they are in the public domain. To maintain the nonproprietary nature of INNs and to ensure the future development of related INNs it is imperative that it is not appropriated as Trade marks.
Can an INN be registered as a Trade mark in India?
- The Trade marks Act of India explicitly prohibits registration of INNs as Trade marks that are deceptively similar to INNs.
- The Act imposes a legal restraint (under Section 13 of the Trade Marks Act) on Trade mark registration of words which are declared by WHO and notified in the prescribed manner by the Registrar from time to time, as an INN or that is deceptively similar to such a name. It further states that any such registration shall be deemed (for the purpose of section 57 of the Act) to be an entry made in the register without sufficient cause or an entry wrongly remaining on the register, as the circumstances may require.
- It is pertinent to point out that even where the WHO recommends a name as an INN, it does not come within the ambit of protection offered by the Trade Marks Act unless it is notified as such by the Trade Marks Registrar.
- The list of INNs as declared by the Registry is expected to help the agents and applicants to assess their application prior to filing for Trade mark registration and to obviate expensive litigation dispute later on.
- On the other hand the INN-derived marks that are already registered are exposed to the threat of legal challenge by any public interest group or other interested person or the Registrar (as stated above).
It is therefore advisable to conduct a search amongst the list of pharmaceutical substances declared as INNs, before choosing the name for a drug / pharmaceutical as its Trade mark. Examples of few INNs are as follows:
- Folic Acid;
- Dimantine; etc
The Indian Trade Marks Registry provides a list of International Non Proprietary Names on its website. The link for the same is www.ipindia.nic.in/international-non-proprietary-names-inn.html